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.
