Drafting the Provisional Patent Application: Describing Your Invention

In recent years the US moved away from the traditional “first to invent” patent system and moved instead to the “first to file” system. Do to this change, inventors and attorneys have determined that it is more important to establish an earlier filing date than to have an invention completely finished before attempting to patent. The fastest way to establish your filing date is to file a provisional patent application.

 

While the provisional patent application can be completed online, this does not mean you should rush through it. The area that most often trips up applicants is the detailed description section. Keep in mind, if the description section of your provisional patent application does not accurately describe the invention, than you will lose out on that early filing date. Here we will discuss the entire provisional patent application with a focus on getting the description section done right, the first time.

 

What is a provisional patent application?

A provisional application is a form of product patent application that can be used before the filing of a full utility application. A utility or product patent is a patent that covers the creation of a new or improved—and useful—product, process, or machine. The provisional application acts as a placeholder with the US Patent and Trademark Office – USPTO. This placeholder establishes the filing date of your invention.

 

A provisional patent application is not checked or verified by the USPTO. Instead, it states that on a given date an inventor has demonstrated the intention of placing a product patent on said invention. This is beneficial to show that you are the first person to attempt to patent this idea if another similar patent is filed before you are ready to file your official non-provisional product patent application. In the US this is vital because we follow the first to file philosophy. So, even if you’ve been working for years, you are out of luck if you were not the first one to file a product patent on this particular invention – and the provisional patent application helps here. The earliest of filing dates prevents your competition from beating you to the punch.

 

It must be remembered that a provisional patent application is not to be confused for an actual non-provisional patent. It will ultimately offer no protection unless a utility patent application is filed and granted by the USPTO. Plus, if a full patent application, the non-provisional patent application, isn’t filed within 12 months of the initial filing, the provisional patent application will lapse and the inventor loses all claims to that filing date.

 

During the 12 months that the provisional patent application is in effect and, so long as you filed your non-provisional patent application within those 12 months, the time it takes the USPTO to examine your non-provisional application, an applicant may also use the term “patent pending” on the invention and in marketing materials.

 

The Steps Required for Filing Your Provisional Patent Application

Your application should include:

  • A cover sheet which must include information such as the name(s) of all inventors, addresses, title of the invention, and any applicable attorney information
  • A detailed description of how to build and use your product
  • Drawings of your invention
  • The required fees.

 

The USPTO allows provisional patent applications to be filed by mail or online. The online application system can be found here.

 

Why Does The Description Matter?

The emphasis on provisional patents typically comes from the early filing date and getting “patent pending” status. However, rushing through the application simply to establish those items may really hurt you in the long run.

 

Why?

  1. If challenged, the earlier filing date will only count if your provisional patent application truly describes and matches the same invention in the non-provisional patent application.
  2. Your patent will only cover the ways and different manners of use that you describe in your provisional patent application. What that means is if another company or person comes up with a new way to use your invention – and it is a use that you did not discuss – they will be safe to profit off of your invention.
  3. An applicant may file for more than one provisional patent application if it’s not perfect or does not accurately describe your invention, however you will be responsible for paying the filing fees each time and only the earliest application with the proper description’s filing date will count.

 

How to Write a Detailed Description

Many applicants want to err on the side of caution and include few details with their provisional patent applications. It may be natural to want to protect your invention. What if you can’t meet the deadline? Or, what if another inventor copies me? Remember that provisional patent applications are private. Except under very rare circumstances, they are never made public – even after a patent is granted.

Since you no longer fear copycats, it is in an applicant’s best interest to be as detailed as possible with the description on your provisional patent application. If it is a machine, describe all the parts. If it is a process, share every step. Be as specific as possible. You will also refer to your drawings in this section.

The more information you share, the easier it will be to complete a non-provisional patent application. This is also the section to include other ways your idea could possibly be used.

 

Additional Items to Consider

To ensure the description on your provisional patent application is complete, make sure you have answered each of the following questions:

  • What are the parts or components of your invention?
  • How do the components connect?
  • How does the invention operate?
  • Are there other ways to construct your invention?
  • Can your invention be used in more than one way?
  • Have you fully described each and every drawing included?

 

This level of analysis is clearly warranted for ideas that have broad multi-industry potential. For simple consumer product ideas, less may be demanded.

It is in the applicant’s best interest to hire a seasoned patent attorney to assist with the non-provisional patent application process. If establishing the earliest possible filing date is your concern, it’s vital to get it done right the first time. Also, no one wants to pay unnecessary filing fees.

 

LawTrades knows Patents

If you need assistance completing your provisional patent application or you just need some solid legal advice on your invention, reach out to LawTrades. We can help keep your costs down while ensuring you and your invention make it through the whole of the patent process in one piece.