Provisional Patent Application: Basic Drafting Principles

The provisional patent is a very useful tool for inventors. It allows the inventor to create a placeholder with the United States Patent and Trademark Office (USPTO) concerning your invention. More specifically, it allows you to establish a date of filing for utility patent protection. As long as you amend the provisional patent or file a subsequent non-provisional patent covering the invention, then your filing date is considered to be the date of the provisional filing.

In this article, we discuss how the provisional patent works, the requirements for filing a provisional patent, and some principles to follow when drafting the patent.

What Are You Trying to Achieve with the Provisional Patent?

The following are the major attributes of the provisional patent.

• Public Disclosure - First of, patent protection is about disclosure. The USPTO grants patents to novel, non-obvious and useful inventions. To secure patent protection, you must fully disclose the nature of your invention to the public. This means that a Person Having Ordinary Skill in the Arts (the “arts” refers to the industry in which the invention will be employed) could readily recreate your invention with the information provided in the patent application.

• 12-Months of Protection - Once a disclosure happens, you have 12 months to file a provisional or non-provisional patent application. If you miss this deadline, you forfeit your ability protect the invention. If you file a provisional patent application, you have another 12 months to file the non-provisional patent. This time is very valuable for the inventor who is still finding product-market fit for the invention.

• Filing Date - Filing a non-provisional patent establishes a filing date. This is the date from which protections will extend if you are successful in ultimately prosecuting the patent application. Inventors need this 12 months of running room to continue to develop the product-market fit and otherwise commercialize the invention. Filing the provisional patent provides 12 months before the non-provisional patent begins examination. The examination process can last multiple years. Holding off competitors for this length of time is a major competitive advantage for the inventor.

What is Included in the Provisional Patent Application?

The first document in the application is the cover sheet. It will identify the following:

• Provisional Status - The application as a provisional application for patent;
• Inventors - the name(s) of all inventors;
• Residence - inventor residence(s);
• Title - title of the invention;
• Attorney/Agent - name and registration number of attorney or agent and docket number (if applicable);
• Address - correspondence address; and
• Government Interest - any U.S. Government agency that has a property interest in the application.

The cover page will generally be attached to the main document constituting the patent application. The application is broken down as follows:

• Title - Make the title descriptive in nature.

• Inventor(s) - List all inventors who had a hand in the design or creation of the invention.

• Field of Invention - This is the USPTO classification for the type of product or product category.

• Background - Here you explain what the invention is and what is the driving force behind creating it.

• Summary of Invention - This is a basic summary of what it is and what it does.

• Brief Description of Drawings - This is where you tell the various types of drawing (view and angles) that you included and what the intend to show.

• Detailed Description of the Invention - This is where you elaborate on the summary. It is commonly known as the “specification”. You explain what the invention is, how it is unique, and how it works. You will make detailed reference to the individual drawings that show the elements or physical characteristics of the invention. This should be adequate to demonstrate to the world exactly what you are protecting.

• Claims - The provisional patent is not required to have claims. Though, it is very common to include them. I will explain further below.

• Abstract - The abstract is used for publication purposes. This is the statement of the invention that is disclosed to the world. You should recall as you were doing your patent searches, you may have primarily searched within the titles and abstracts for your initial keyword searches.

• Figures - The figures are used to visually depict the invention. They can be rendered images or drawings. They must, however, provide all of the information necessary to demonstrate the invention.

Basic Drafting Principles to Follow for the Provisional Patent Application

• Specification - You are required to submit a specification that complies with 35 USC 112(a). The specification must enable understanding of how the invention works or functions. It will show its usefulness and novelty. It must also present the “best mode” of creating the invention. It is important to be as thorough as possible in this section. You want to provide a description that can support future claims of a very broad scope. At the same time, they should be narrow enough to avoid prior art and not hamper future design.
  
  • Claims - Recall, the filing does not include “claims” or the elements of the invention sought to be protected. These elements will be described in the non-provisional application. It is a good idea, however, to include claims the provisional patent. Including the claims cannot hurt you in the application process. It strengthens the disclosure. You are free to later change or add additional or dependent claims. So, you can be more general in including the claims than would be expected for a non-provisional patent. When you later file the non-provisional patent, you must meet the requirements of 35 USC 112(b) for definiteness.
  
  • Background - This can be a very useful section. Tell the story of how and why you invented the product. Think of this section as a persuasive message. You need to convince the patent examiner that there was a real need out there for your invention and your invention satisfies that need in a way that other invention could not. This is where you can talk about the prior art in the field. Explain how they were inadequate or different than your invention. Be a salesman. Explain how your invention is different.
  
  • Inventors - It is also important to note that all inventors materially contributing to the patent should be disclosed in the application. The provisional and non-provisional patent application must share at least one common inventor.
  
  • Summary of Invention - Make certain to tie this section to the background. This is your opportunity to say “ladies and gentlemen, here is my invention”. This continues the persuasive message and provides the examiner with a level of expectation of what they are going to see in the description. You will again broadly state the benefits. You should lay the groundwork for the independent claims that you have included or plan to include in the future.
  
  • Amendments - Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
  
  • Information Disclosure Statements - No information disclosure statement may be filed in a provisional application.
  
  • Examination - The provisional patent is not examined on its merits. Again, you can think of it as a placeholder. As such, make it the best placeholder possible. Throw in the kitchen sink in the description.
  
  • Be Honest - Remember, when drafting the application, you should not mislead, misrepresent, or omit important information. Under 37 CFR 1.56, there is a general duty of candor and good faith applicable to the patent application process. Any of these shortcoming violate that standard. It can result in the application being dismissed and barred.

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