The Inventor’s Guide to Writing Provisional Patent Applications
Stephen W. Aycock II, Esq.
Intellectual Property Attorney
Patent ~ Trademark ~ Copyright
Copyright 2011 Stephen Aycock
Smashwords Edition
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Table of Contents
I wrote The Inventor’s Guide to Writing Provisional Patent Applications to help you write your own provisional patent application. It’s not an exhaustive guide to all of the legal aspects of provisional patent applications, but rather a “nuts-and-bolts” guide to techniques and tips for thinking about your invention in a way that makes writing a provisional patent application easier.
If you need to write a quick and cheap provisional application, you have come to the right place. In this guide, you’ll learn how to shift from “inventor”-style thinking to “patent attorney”-style thinking. I’ve also included my favorite tips and tricks gathered over years of practice. My goal with this guide is to help you write a better provisional patent application in less time.
Even if you plan on working with a patent attorney (which is my recommendation), The Inventor’s Guide to Writing Provisional Patent Applications will help you focus your thoughts and present your invention in a way that will help your patent attorney or agent more easily understand your invention and focus on its essential elements.
I’ve kept this guide short on purpose. When you need to file a provisional quickly, you don’t need a law school textbook. You need an easy-to-use guide with techniques for writing provisional applications that can be applied immediately.
If you have any questions, comments or suggestions, I’d love to hear from you. You can reach me via email at:
Steve@ProvisionalPatentGuide.com
or via phone:
(863)514-8077
Best of luck with your invention,
Steve
First, A Few Basics
What is a Provisional Patent Application?
A provisional patent application is a placeholder application that is not examined by the Patent Office and will never issue as a patent. This means that a patent examiner will not read your provisional patent application and compare it to the prior art (or earlier patents and publications). It also means that you do not have a patent yet.
A provisional patent application is often less costly than a non-provisional application in part because provisional applications are not required to meet some of the formalities that are required of non-provisional patent applications. Also, the official filing fee for provisionals is lower than the fee for non-provisionals.
A Little Terminology: Application vs. Patent
Provisional patent applications are always called applications because a provisional never issues as a patent. There is no “provisional patent,” only a provisional patent application, or simply provisional application.
By knowing the proper terminology, you’ll be ready to discuss your provisional application with confidence when the time comes to get help with a non-provisional application.
Chapter 2 Two Required Parts of a Provisional Application
There are only two parts that U.S. Patent and Trademark Office (the “Patent Office” or simply the “PTO”) requires in order to grant a filing date to a provisional application:
1) A written description (or specification); and
2) Drawings, if necessary to understand the invention.*
*Important Note: I think drawings are almost always necessary in electrical, mechanical, software and business method patent applications – these are the areas of technology that I work in most often. I’ve never written a patent application that had no drawings. I consider them essential to the types of applications I write. However, I do not write applications involving chemical, plant, biological or pharmaceutical inventions, so I can’t say whether drawings are standard practice in those applications, but I’d suspect that they are. If your invention is in a chemical or biological area of technology, then see my Tips and Tricks section below to learn how to find provisional applications in your area of technology that have been filed with the Patent Office. Check those that have been recently filed by attorneys and you’ll get an idea about the standards for drawings.
Beyond the minimum requirements needed to be granted a filing date, provisional patent applications also need a cover sheet and a filing fee to be considered complete applications by the Patent Office.
Claims in a Provisional?
Claims are the numbered paragraphs at the end of a patent that define the metes and bounds of the invention. Provisional applications are not required to have claims. Whether to include claims in a provisional or not is the subject of some debate among patent attorneys. Some patent attorneys include claims in provisional applications, some do not.
A nice middle-ground position I’ve seen is to include claim-like language in the provisional application, but not to explicitly identify this language as a claim. This way, you may be able later to argue it was a claim, just not explicitly labeled as a claim at the time.