Provisional Patent Application
A simple method for drafting and filing a US provisional patent application
This guide is intended to help the independent inventor draft his or her own US provisional patent application. It is one patent strategy of many, but one that has been found to work well by other inventors and even large corporations. This does not replace legal advice. You should consult a registered patent attorney or patent agent in your country for legal advice specific to your situation.
1. Idea becomes invention
Great ideas are just that: ideas. An invention requires a little more umph, otherwise known as reduction to practice. Reduction to practice means you've thought through all the steps necessary to make and use your invention. And you've answered some key questions. What shape will it have? How will the parts fit together? Which features must it have and which are optional? How will someone operate it? When you've answered these questions in writing and with sketches or diagrams, you've reduced to practice the best mode of your invention.
But before that, brainstorm. Make sure your invention solves the problem in the best way you can imagine. Think laterally. If you think of more than one component for a certain feature, don't judge which is best. Keep your options open. And keep notes.
Now what you're going to make is a bit like an instruction manual. Look at any instruction manual you have lying around. Anyone who reads it can easily understand what the product does and how to use it. Yours will be a little different, in that you'll be describing how the invention is made as well as options or alternative designs.
If you're a visual person, the best way to begin is to sketch your idea. Google Sketchup is a free modeling tool and is very easy to use. If you feel more at home with the written word, then begin by writing about your invention. The old hip-bone-is-connected-to-the-leg-bone approach is tried and true, but any method will work. At this stage, don't get caught up in formal patent jargon or drawing conventions. Just make it easy to understand.
A good test to see if your invention is reduced to practice is to hand your instruction manual to a trusted friend or family member (or someone who can understand the technical side) and listen to what they have to say. Do they have any questions about making and using your invention? If so, update your invention's instruction manual to answer them. If not, you're done!
2. Draft your own US provisional patent application
Although it sounds complicated, once you've completed step 1 you've nearly got a US provisional patent application already. Hang on second, what is a US provisional patent application anyway?
The United States Patent and Trademark Office (USPTO) allows inventors to file provisional patent applications. These are special patent applications that do not need to meet the formal requirements of regular (non-provisional) patent applications and do not mature into patents. And you don't have to live in the United States or be a US citizen to get one. The advantage is that you can prepare a provisional patent application quickly and inexpensively. The disadvantage is that in order to get a patent you must file a formal non-provisional patent application within one year of filing your non-provisional patent application. Don't let anyone fool you into believing that a provisional is good enough – you must always follow up with a non-provisional patent application in order to get a patent.
At this stage you might be thinking "I want a patent, so why should I bother with a provisional patent application?" The answer is risk management. A professionally drafted non-provisional patent application can cost $5,000 to $10,000 or even more, depending on the nature of the invention. Even if you wish to save money by drafting one yourself, it takes a lot of research and time to avoid the legal pitfalls. There is no reason to spend so much money at this stage. In step 4 we'll shed some more light on this.
The first step in turning your reduced-to-practice idea into a provisional patent application is to redraw your sketches as clearly as you can in a dark line. Use a CAD program if you can. Otherwise sketch first in pencil and then trace in black pen.
Label each of your sketches as Figure 1, 2, etc in an order that makes sense. Figure 1 is best a basic overview of the invention, showing it just out of the package.
Label each and every component in your sketches with names or numbers. If you use names, be consistent. "Push button A" should be "Push button A" in every figure in which it appears. If you use numbers, begin at 10 and count by twos, e.g., 10, 12, 14. This allows you to come back and insert a 13 later, if need be. Again, be consistent. "10" should point to the same component in each figure.
Next, write the second draft of your "instruction manual." At this stage, you might have to reorder things a bit. Begin by talking about Figure 1. Use your reference numbers or names to talk about all components. Don't be afraid to repeat yourself. Remember the old adage about giving presentations: "Tell then what you're going to say, say it, then tell them what you've said." Use synonyms liberally. If "Push button A" turns on a motor, it also starts and activates the motor. Being as verbose as possible while staying understandable to the lay-person will ensure a strong patent down the road.
Take a break, let things percolate, then come back and revise and write some more. Patents are never weak because the inventor talked too much about his or her invention. When you're done, take what you've got and put the heading "Detailed Description" at the top.
Now, above your just completed "Detailed Description," under the heading "Summary of the Invention," summarize your invention in one sentence. Use broad language and keep it as short as possible. Imagine you're marketing your invention to someone who only has 10 seconds to listen. (In this approach, the summary acts as a basis for your broad claim in a later non-provisional patent application. If you want to include a claim in your provisional application, try drafting a claim. Claims are optional in provisional applications.)
Above your summary add a section heading "Background." Write a few paragraphs describing the problems your invention solves. But don't talk about your invention: this is a big mistake. Imagine you invented the first camera. Now talk about all the disadvantages of paintings, engravings, and charcoal sketches. The less said here the better, but you still want lead people to arrive at their own idea of why your invention is useful.
Last step. Above the "Background" section write a title. Short and sweet is the rule here. Don't get fancy and don't put on your marketing hat. If you invented a new kind of remote control for a DVD player, the perfect title would be "Remote Control."
Shuffle everything into the following order and you should have: Title, Background, Summary of the Invention, Detailed Description, and Figures. You're done.
You should now have everything needed to accord you provisional application with a filing date, namely: a written description of the invention, complying with all requirements of 35 U.S.C. §112 1st paragraph–
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
and any drawings necessary to understand the invention, complying with 35 U.S.C. §113–
The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented...
(Refer to the patent statute for the unabbreviated text.)
3. File your provisional patent application
So far the only resource you've expended is your time. Now you'll have to spend some money to file your provisional patent application with the USPTO. But it's not a lot of money ($110 at time of writing), which is one reason you're filing a provisional application in the first place.
Take your text document and print it to PDF. (If you can't print to PDF, you can download a free PDF printer from the web.) If you wrote by hand, then you should type it up now. Don't scan handwritten pages, as this may be difficult to read.
Do the same with your drawings. If you made these by hand you can scan them, but make sure they are readable.
You should now have two PDF files: One called Description and one called Drawings. You need to make one more PDF file and you're ready to go.
Go to the USPTO forms page and download a form called PTO/SB/16. There are two versions. Plain and EFS-WEB. Use the EFS-WEB version since you're going to file online. Fill out this form completely (instructions) and save it. You now have your Cover Sheet and the last PDF file you need.
Now you're almost ready to file your patent application. But before we get to that, take the time to carefully read about US provisional patent applications to ensure that no stone is left unturned. If you've followed the Patent Simple approach, everything should be in order.
When you're ready, proceed to the Electronic Patent Filing for UNREGISTERED eFILERS area. Follow the steps, upload your three PDF files (Description, Drawings, and Cover Sheet), and pay by credit card. Then, save and print your e-filing receipt, which you will get immediately. Make special note of your application number and filing date. In a month or so, you will get a confirmation of filing in the mail from the USPTO.
Congratulations! You've just drafted and filed your own US provisional patent application. You've locked in your rights to your invention. You now have one year in which to file a non-provisional patent application to obtain a patent, if and when it makes financial sense.
4. Conduct a patentability search for your invention
So you've filed a provisional patent application. If you've been following the Patent Simple method, the cost so far has been miniscule aside from your time. Now you're going to invest some more time to see if it's worth spending the big bucks on your invention to get a patent.
Well before the one-year anniversary of the filing your provisional patent application (the sooner, the better), you should conduct a patentability search. You'll be searching for prior art, which is patent jargon for what's been done before. You should search to see whether your invention is already known and whether its worth spending the money to obtain a patent.
So now you might be asking yourself "Why did we wait until after filing the provisional patent application before searching? That seems backwards!" Not really. The process of preparing your own provisional patent application crystallized your great idea into a real and tangible invention. Searching beforehand is discouraging and detrimental to this creative process. Filing the provisional application was cheap and locked in an early filing date. It's guaranteed that there is something new about your idea because you thought of it, nurtured it, and described it so well. Now all we have to do is measure how big the new part is.
The best place to start a patentability search is The European Patent Office (EPO) search portal, a.k.a. espacenet. Now you might be thinking "I filed a US application, so why should use the European search tool?" Well, prior art does not respect international borders or even languages. If it's been done before, it's been done before. Espacenet has documents (patents and published applications) from around the world, including the US.
First, use espacenet to search for keywords relating to your invention. Use and many keywords as you can to narrow your results. We're just looking for one document that shows a similar invention. If your invention is a new kind of frame for eyeglasses, then you're looking for any document that shows a pair of eyeglasses in a frame.
Once you've found a couple of documents, note the associated European Classification (ECLA) symbols. For example, the symbol G02C5 pertains to construction of non-optical parts of spectacles. Now enter your symbol on the ECLA Classification Search page to view the classification hierarchy. In our example, we find the symbol G02C5/00B pertaining to collapsible frames. Great. We can now use this symbol to search. Instead of millions of hits from keywords alone, we now get merely hundreds or thousands, which can be further reduced by adding keywords to the search. Once you narrow the field down to 10-50 documents that seem related to your invention, you've successfully completed a classification-keyword patentability search.
Because many documents don't have ECLA symbols, you should try some International Patent Classification (IPC) symbols as well. The process is the same. You should also use Google to search keywords, as the prior art is not confined to publications – products are prior art too.
Now take your short list of documents and review them to see if anyone beat you to the punch. You will find inventions that are similar to yours and you should earmark these. Anything unrelated can be discarded. Any document having a filing date later than yours is not prior art, so you can ignore those ones as well. Look at any related document closely. Read them. Many documents have a list of cited documents (e.g., on the front page of US patents). Find those documents as well and look at any that seem related. You can keep iterating like this through cited documents and cited documents of cited documents until you've seen enough. You should now have a good picture of the prior art related to your invention, spanning several decades or more.
5. Decide whether to file a non-provisional patent application
Look at the closet prior art documents and imagine the products they describe. Is your invention different enough to outsell these products? How big is the new part of your invention? If you went to the store and saw the prior art imaginary product on the shelf next to your product, which one would you buy? Perform a market feasibility study. Remember that patents protect the commercialization of technology and it has to make financial sense to spend money on getting a patent. You've done a lot of work yourself, but your patent will still cost thousands of dollars. Given what's been done before, is it worth it?
The road ahead...
If you've decided to not pursue a patent, you can still market your product. You'll want to make sure that you won't be infringing anyone else's patent rights. A registered patent agent or attorney can help you.
On the other hand, if you've decided to file a non-provisional patent application in the US, Canada, or any other country, now's the time to contact a registered patent agent or attorney in your home country. As an inventor it is your right to prepare and prosecute your own patent applications, but there are many legal pitfalls along the way. Following the Patent Simple method, you've already done a lot of the work yourself, including preparing your own provisional patent application – a task that usually makes up the bulk of attorney or agent fees. You've saved a lot of money and become very familiar with the process. But to maximize the strength of your patent, it doesn't hurt to have a professional or your side.
