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There is no standard form for a provisional application for patent. A good guide to use to help ensure you have an adequate description of your invention is to locate a patent on a similar invention. A good first stop is google patents.  It’s easy, it’s free, and you likely already know how to do ordinary searches with google.  Much like the regular google search engine, google patents lets you use keyword searches to locate documents in the patent database.

Let’s follow an example.  Suppose you have an invention relating to an improved collapsible chair similar to those commonly in use for camping.  Try a keyword search in google patents such as “collapsible camping chair” (don’t type the quotes into the google search box) and you’ll get something like this:

If you then click where I’ve indicated with the red highlight, you’ll get patents and published patent applications corresponding to your search with the most recently published documents appearing first.  I recommend you look at a few of the most recently issued patents, ignoring the published applications for the moment.  Published patent applications will be indicated with an [APPLICATION] at the beginning of the search result.

On the second page of results for this search, after re-ordering by date as indicated above, you’ll find the following:

The result I would focus on in this area is U.S. Patent No. 7648196.  It is a recently-issued patent in this field.  By being an issued patent, this tells you that the U.S. Patent and Trademark Office has determined that the written description and drawings are adequate to enable a person of ordinary skill in this field to make a chair as defined by the claims.

By studying one or more issued patents that claim an invention in the same general area as your invention, you can get a feel for the level of detail you will need to include in any provisional application, as well as the level of detail you’ll need to provide to a patent attorney who would help you prosecute a non-provisional patent application.

This week we discuss what goes in a provisional application.

As I explained last week, a provisional application is not examined and will never mature into a patent. So it should not be terribly surprising that there are no detailed requirements from the U.S. Patent and Trademark Office as to what must be in a provisional application. That does not mean that it does not matter what is in a provisional application. It matters a lot, and it’s one reason why you should at least retain an experienced patent practitioner to review your provisional application if you think you may pursue a non-provisional application.

To prepare a thorough and complete provisional application, you need to ensure you include a complete description of the invention, including every aspect that you may wish to include in any claims in a future non-provisional application. You will be able to revise a later non-provisional application, but for it to receive the priority of your provisional application’s filing date, its claims must be completely described and enabled by the provisional application.

Think of it in terms of teaching a reasonably skilled and equipped person in your field of technology. For example, if you have designed a novel new vacuum cleaner for swimming pools, the person you’re writing for is someone reasonably knowledgeable about how existing pool cleaning systems work. You don’t have to include so much as to teach the well-known fundamentals of the technology, but you do have to write your application so that someone who knows the basics about the field could make and use your invention. Be sure to include drawings or sketches of your invention, with emphasis on any components or aspects that distinguish it from other products in that field. If in doubt, include more. You can remove material in a later filed non-provisional application but you cannot add material and still keep the earlier filing date.

We are available to assist you with your questions relating to protecting your invention. Many of the clients we assist never come to our office for an in-person meeting — we are able to effectively discuss the details of your invention with you via email and telephone. Email us to set up a time to talk on the phone. If your questions relate to the process of commercializing your invention, we recommend you contact our friends at Karla and Jack, who are experts at developing and marketing and have helped many independent inventors go from idea to reality.

This post is the first in a series of informational articles about provisional patent applications: what they are; what advantages they have compared to non-provisional applications; what they cost; what risks and hazards they pose to the unwary.

We start at the beginning.

What is a provisional application for a patent?
First, let’s clarify a potentially confusing bit of terminology that we often hear when people talk about provisional applications. There is no such thing as a “provisional patent.” You cannot apply for a provisional patent. You can file a provisional application for a patent.
A provisional application is a place holder application. It is not examined by anyone at the US Patent and Trademark Office (USPTO), and it can not, by itself, lead to the grant of a patent. Provided it is complete, as described below, it secures the inventor a filing date for the invention when filed at the USPTO.

Why is a filing date important?
A filing date is important because it is evidence that you were in possession of the invention at least as early as the date the application was filed. As of this writing the United States is not a strict first-to-file jurisdiction as are most other countries. What this means is that as between two competing inventors who conceived of the same or substantially similar invention, the first one to file an application for a patent has an advantage in establishing the right to a patent on the invention. Either inventor may still provide other evidence to establish a date of invention before the filing date, but the earlier the filing date, the better for the inventor.

To have a complete application and obtain a filing date, your provisional application must include a full description of your invention and any drawings necessary to understand your invention. You are not required to include any “claims” but it is a good idea to include one broad claim describing the elements of the invention.

What other information is included with a provisional application?
In addition to the written description and drawings, your provisional application will include the provisional application for patent cover sheet form provided by the USPTO. With this form, you identify your application as provisional as opposed to non-provisional and provide the USPTO with the following information: a name or title for your invention; the name and residence address of all inventors; an address for correspondence relating to the application; and payment of the required filing fee.

Once your provisional application is filed, you have “patent pending” status and can indicate that on your product or marketing material. As of the filing date, you have twelve months to file a complete non-provisional patent application.

In our next installment, we’ll begin discuss in detail how to prepare a provisional application.