Provisional Patent Applications the Right Way, the Wal-Mart Way

Patent pendingLast week a U.S. patent application covering a self driving shopping cart was published on an invention owned by Wal-Mart Stores, Inc. The patent application covers an innovative system that will utilize a series of docking stations, sensors, motors and cameras to offer consumers the ability to “hail” a shopping cart using an app on their smartphones, much like they would a taxi or Uber and that upon completion of use, the system will somehow be able to recognize abandoned carts within the store or in the parking lot and will be able to manually return itself to a docking station for use by another consumer. See Autonomous Vehicles to Includes Self-Driving Shopping Carts.

This patent application was filed by Wal-Mart on March 4, 2016, and published 6 months later. At first that seems rather quick for a patent application to publish because patent applications publish 18 months after they have been filed. However, the publication rules says that patent applications publish 18 months after the earliest priority date, which is not always 18 months from the filing of the nonprovisional patent application. In this case, Wal-Mart filed a provisional patent application on March 6, 2015, which meant that in order to claim priority from that provisional filing they had to file a nonprovisional patent application on or before March 6, 2016, which they did.

The first section of the specification (i.e., the written part of a patent application that is not the patent claims section) is almost universally discussion of related patent applications, if any. This is the section of the specification where earlier filed patent applications that provide priority for the present application are listed. If you look at this particular Wal-Mart patent application you will notice an exceptionally long list of prior filed applications that will each be used to provide priority. All of the previously filed patent applications in this chain are earlier filed provisional patent applications.


Indeed, Wal-Mart claimed priority to each of the following provisional patent applications:

  1. U.S. Provisional Application No. 62/129,726, filed Mar. 6, 2015;
  2. U.S. Provisional Application No. 62/129,727, filed Mar. 6, 2015;
  3. U.S. Provisional Application No. 62/138,877, filed Mar. 26, 2015;
  4. U.S. Provisional Application No. 62/138,885, filed Mar. 26, 2015;
  5. U.S. Provisional Application No. 62/152,421, filed Apr. 24, 2015;
  6. U.S. Provisional Application No. 62/152,465, filed Apr. 24, 2015;
  7. U.S. Provisional Application No. 62/152,440, filed Apr. 24, 2015;
  8. U.S. Provisional Application No. 62/152,630, filed Apr. 24, 2015;
  9. U.S. Provisional Application No. 62/152,711, filed Apr. 24, 2015;
  10. U.S. Provisional Application No. 62/152,610, filed Apr. 24, 2015;
  11. U.S. Provisional Application No. 62/152,667, filed Apr. 24, 2015;
  12. U.S. Provisional Application No. 62/157,388, filed May 5, 2015;
  13. U.S. Provisional Application No. 62/165,579, filed May 22, 2015;
  14. U.S. Provisional Application No. 62/165,416, filed May 22, 2015;
  15. U.S. Provisional Application No. 62/165,586, filed May 22, 2015;
  16. U.S. Provisional Application No. 62/171,822, filed Jun. 5, 2015;
  17. U.S. Provisional Application No. 62/175,182, filed Jun. 12, 2015;
  18. U.S. Provisional Application No. 62/182,339, filed Jun. 19, 2015;
  19. U.S. Provisional Application No. 62/185,478, filed Jun. 26, 2015;
  20. U.S. Provisional Application No. 62/194,131, filed Jul. 17, 2015;
  21. U.S. Provisional Application No. 62/194,119, filed Jul. 17, 2015;
  22. U.S. Provisional Application No. 62/194,121, filed Jul. 17, 2015;
  23. U.S. Provisional Application No. 62/194,127, filed Jul. 17, 2015;
  24. U.S. Provisional Application No. 62/202,744, filed Aug. 7, 2015;
  25. U.S. Provisional Application No. 62/202,747, filed Aug. 7, 2015;
  26. U.S. Provisional Application No. 62/205,548, filed Aug. 14, 2015;
  27. U.S. Provisional Application No. 62/205,569, filed Aug. 14, 2015;
  28. U.S. Provisional Application No. 62/205,555, filed Aug. 14, 2015;
  29. U.S. Provisional Application No. 62/205,539, filed Aug. 14, 2015;
  30. U.S. Provisional Application No. 62/207,858, filed Aug. 20, 2015;
  31. U.S. Provisional Application No. 62/214,826, filed Sep. 4, 2015;
  32. U.S. Provisional Application No. 62/214,824, filed Sep. 4, 2015;
  33. U.S. Provisional Application No. 62/292,084, filed Feb. 5, 2016;
  34. U.S. Provisional Application No. 62/302,547, filed Mar. 2, 2016;
  35. U.S. Provisional Application No. 62/302,567, filed Mar. 2, 2016;
  36. U.S. Provisional Application No. 62/302,713, filed Mar. 2, 2016; and
  37. U.S. Provisional Application No. 62/303,021, filed Mar. 3, 2016.

I have been suggesting this serial provisional patent application strategy to for many years. Now that the United States has become a first to file country, filing serial provisional patent applications is absolutely essential. Indeed, first to file must be interpreted as meaning file first! Of course, most will never file this number of provisional patent applications. Seeing this does, however, give an idea about just how important Wal-Mart sees this invention as being.

With any invention there will always be a stream of conceptions and reductions to practice. The best practice is to file as soon as you have an invention that is susceptible to adequate description through words and drawings. File first. File often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together. You can always claim priority going back to more than one provisional patent application as long as they were filed within 12 months of the filing of the non-provisional patent application, just as Wal-Mart did here.

Recently, however, Kate Gaudry and Tom Franklin, both attorneys at Kilpatrick Townsend, explained that the U.S. adopting first to file rules should have lead to more provisional patent applications being filed. The analysis by Gaudry and Franklin show that more provisional patent applications are not being filed, which is shocking. It is worth noting that Kilpatrick Townsend is venerable, large, big law firm that for the most part caters to large clients or well funded start-ups. Gaudry and Franklin explain that they recommend and use serial provisionals with their clients, which is good, smart legal advice.

Some patent attorneys absolutely hate provisional patent applications and tell clients that they should never use them. These patent attorneys incorrectly say that if you can file a provisional patent application you can and should just file a nonprovisional patent application. If you hear that advice you should really ask yourself this: If serial provisional patent applications seems like a good strategy for Wal-Mart, which is one of the largest corporations in the world, and if serial provisional patent applications is recommended by the likes of Gaudry and Franklin at a well respect law firm like Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for inventors, small businesses and start-ups working with a shoestring budget?

Indeed, the best use of a provisional patent application is to establish priority rights as soon as you have an invention that can be patented. In a first to file world you want to have a filing date as soon after your conception of the invention as possible. But in many, if not most circumstances, inventors will continue to work with the invention, improve what they’ve invented or work on additional versions of the invention. If you are going to continue working on the invention a provisional patent application is a great idea. File the provisional as reasonably soon as you can making sure to describe what you have presently with as much detail as possible. Then as you continue working on the invention as you make more advances you may want to file another provisional patent application and so-on. By using serial provisional patent applications, like Wal-mart did with its self-driving shopping cart innovation, this you get priority for your invention as close in time to conception of various aspects of your invention as possible, which is extremely important.

I always preach to inventors to learn lessons from those who have succeeded. Whether you like Wal-Mart or not, whether you think they are a good corporate citizen, or whether you want them in your neighborhood, it is impossible to argue with the extraordinary success Wal-Mart enjoys. If serial provisional patent applications seem like a good idea for them then they should seem like a good idea to  you, it is that simple.

Of course, the key with any provisional patent application is completely and appropriately describing your invention, including all aspects, variations and versions. Discussion of how to describe an invention and what constitutes an appropriate provisional patent application goes beyond the scope of this article. We have dozens of articles addressing that in great detail here on

For more information on appropriately describing your invention in a patent application please see:


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

4 comments so far.

  • [Avatar for Eric Berend]
    Eric Berend
    September 23, 2016 07:26 am

    Gene, I appreciate the veracity of your well-considered advice; please consider that even for a small entity, 37 x $125 = $4615 in filing fees alone. If employing the support and assistance of a patent attorney in preparation; which is widely recommended; it is eminently possible, if not likely, that the expenses reach some $40,000 or so.

    Are you so sure that an independent, small entity type inventor has $40,000 to commit, before even just one dollar is spent on the utility application? While I appreciate the cogency of your analyses the associated accuracy of your assertions, this does seem to place a proper approach out of reach for all but already well-off inventors.

    If true, this would seem to confirm one of the many complaints regarding the AIA by legitimate, independent inventors of excessive costs being created and forced into the process, by legislators acting at the behest of the infringers cabal.

  • [Avatar for Dr. Paresh dave]
    Dr. Paresh dave
    September 19, 2016 10:45 pm

    I believe Walmart may be going to file more non-provisional patent application from these many provisional patent applications.

    As they have spent 9600 USD (37*260) for filing provisional applications.

    It is interesting to know as mentioned in earlier comment why did they file provisional just 2-3 days before also.

    On lighter side, i can say they have only one idea/innovation and many IP staff and patent attorneys.

  • [Avatar for Patrick]
    September 19, 2016 09:38 am

    I agree with the concept in general, but in this example, the last four provisionals were filed one or two days before the non-provisional. That seems a little extreme, no?

  • [Avatar for Curious]
    September 17, 2016 07:49 pm

    If serial provisional patent applications seems like a good strategy for Wal-Mart, which is one of the largest corporations in the world, and if serial provisional patent applications is recommended by the likes of Gaudry and Franklin at a well respect law firm like Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for inventors, small businesses and start-ups working with a shoestring budget?
    This statement is commonly referred to as an “appeal to authority” and is a type of logical fallacy.

    Wal-mart, for its retail size, is a relative patent neophyte with 226 issued patents to its name. They did well in 2015 with 74 issued patents to their name, but that only gets them a tie for 455th place for organizations obtaining US patents. By comparison, 1st place (IBM) received nearly 100x (7309) that number of issued patents in 2015. Regardless, Wal-mart can hardly be held out as a sophisticated patent entity. As for Gaudry and Franklin, they unlikely represent Kilpatrick Townsend, as a firm. In a large firm such as Kilpatrick Townsend, there is considerable autonomy amongst the partners to do what he/she thinks is best. As such, the fact that a couple of attorneys may have a preferred approach does not necessarily mean that the firm, as a whole, also endorses that approach.

    Now that we’ve gotten that out of the way, let’s talk about provisional applications. You say “These patent attorneys incorrectly say that if you can file a provisional patent application you can and should just file a non-provisional patent application.” This is the advice I’ve heard, and it is advice I agree with. For a provisional application to provide support for subsequent claims, it needs to provide support sufficient to meet the enablement and written description requirements of 35 USC 112. If you’ve got that, why not write at least a single independent claim and file it as a non-provisional?

    The reason why many attorneys don’t like provisionals is that there is this impression that an adequate provisional can be done quickly and cheaply (e.g., get the 2 page invention disclosure write-up, slap a cover sheet on it, and file it as a provisional). What is concerning about that approach is that it gives the client (and perhaps the attorney) a (potentially) false sense of security that their invention has been adequately protected. Perhaps the 2 page write-up (or whatever size) will be enough to satisfy 35 USC 112. However, what if it isn’t? It may be that the 112 deficiencies aren’t cured until the subsequently filing of the non-provisional — which could be up to 12 months later. In the mean time, what happens if a competitor has stepped in and filed a fully-enabled non-provisional application?

    It is not that provisional applications have no place as part of a well-rounded, patent acquisition strategy. However, IMHO, they should be treated as a rarely-used stop-gap measure.