We often get calls regarding provisional patent applications (“PVAs"). These “quick and dirty” patent applications require less drafting and formality than a standard utility patent applications and are thus less expensive. The PVA establishes a filing date and places the invention in a “patent pending” state. The PVA can thus serve as a pre-disclosure patent application filing to preserve the inventor’s right to file patent applications in foreign countries. Lastly, PVAs are considered to increase the value of a venture and can help in fundraising.
After a PVA is filed, the inventor must file a complete application within a year in order to claim priority to the filing date of the PVA. However, an inadequately drafted PVA can result in a rude awakening for the over-confident inventor. One problem lies with the drafting of the invention description in the PVA. In a regular utility patent application, the “description” together with the “claims” are referred to as the “specification.” A PVA does not require claims but only a description of the invention. However, it is always advisable to include at least one claim in the PVA so that the inventor can have a level of confidence that there is enough detail in the description to support the claims.
Thus, do not let the relative informality of the PVA lull you in to a false sense of confidence. Being in Pasadena, we often encounter sophisticated inventors from around Southern California who know their technology but know nothing about the arcane rules of patent drafting. But the saying “garbage in garbage out” applies as equally to PVAs as anywhere else. An inadequate description of your invention and alternatives can result in a narrow application that leaves the field open for your competitors.
The description includes various sections, and the proper format should be followed in a PVA. It begins with general background information and then moves to sections with more detailed information about the invention.
The description must be a complete and thorough description of the invention, as you cannot add any new substantive information to the PVA once it is filed with the United States Patent and Trademark Office (USPTO.) It is possible, however, to file a series of PVAs, each referring to a previously filed PVA, with each successive PVA including the new material. Also, the description must not include any misleading information or omit relevant facts.
Although drawings are not technically part of the description (drawings are on separate pages), the drawings typically include references numerals, which reference numerals are included in description of the drawings. For mechanical devices, reference numerals are included on the drawings. Also, where appropriate, the drafter can include chemical and mathematical formulae in the description. If there are flowcharts, photographs, and the like, these should be referred to in the description.
Generally, regular utility patent applications are not allowed to include photographs. However, it is acceptable to use photographs in PVAs and we frequently include marked up drawings as a stand in for formally prepared patent drawings. However, when the provisional patent application is converted to a regular utility patent application, formal drawings must be submitted.
Tips on Preparing Provisional Patents
1. Review other Patents to Help You with Your PVA
One great way to prepare a provisional patent application is to find one or more issued patents in the same field and follow the same general format. Visit the USPTO online and do a search for patents issued for similar inventions to yours. Although the USPTO search engine is a basic Boolean system, given appropriate search words and adequate time and attention, you should be able to locate patents and published applications that will provide good guidance to you in preparing your PVA.
In general, applications begin with background information. The next section is a summary of the invention which provides a general description of the invention. Following this is a listing of the figures (Brief Description of the Drawings) and last is a Detailed Description of the Invention, which described each element and feature of the invention.
2. How to Write the Description
Below are some how-to instructions and tips to help get you started writing the description of your invention. When you are satisfied with the description you can take a stab at writing some claims for your PVA. However, if you prefer to let a patent attorney write the claims, then you need not prepare any claims.
When writing the description, use the following order, unless you can describe your invention better or more efficiently in another way. The order is:
- Technical Field
- Background Information and prior art
- Description of how your invention addresses a technical problem
- List of figures
- Detailed description of your invention
- One example of intended use
To begin, you might find it helpful to first jot down brief notes and points to cover each of the above headings. As you refine your description into its final form, you can use the outline suggested below.
1. Create the title of your invention. Make it short, precise and specific. It should be no more than 15 words. For example, if your invention is new wrench design using a novel soft grip that is oversized for better gripping, you might title it “Wrench with Enlarged Soft Grip”. Avoid naming the invention after yourself or anyone else (e.g., the “Obama-Romney Wrench”), using a registered trademark (e.g., the “SoftTouch® Wrench”), or using the words “new” or “improved”. The title will preferably be one that is easily searchable by third parties during patent searching.
2. Next, write a broad statement that gives the technical field related to your invention. For example: “The invention relates to wrenches, and more particularly to wrenches designed to be used by people with reduced grip strength.”
3. Continue by offering background information that people will need to understand, search for, or examine your invention. Continuing with the example above: “People with disabilities and weakness in their hands, such as people with arthritis, often have great difficulty in using tools that require grip strength, such as hammers, wrenches, screwdrivers, and the like…” and so on.
4. Discuss the problems that others have faced in this area and how they have attempted to solve them. This is often termed as describing the “prior art.” Prior art is the published body of knowledge that relates to your invention. It can include other published patent applications, patents, technical literatures, advertisements, and can even include the lectures presented at scientific conferences. It is at this point that applicants frequently refer to other patents. For example, if you have done some prior art research, and find that there is a patent on a wrench with a rubberized handle, but is otherwise like old-fashioned wrenches with a small circumference, you might describe it and distinguish over it.
For example: “U.S. Patent No. 7,654,321 to Dunderhead describes a wrench with a rubberized handle to improve slip resistance. However, the handle is of convention size, shape, and circumferences and provides no added benefit to people with compromised grip strength….”
5. Next, state in general terms how your invention solves one or more of the identified problems. This is a recitation of how your invention is new and different. For example “The wrench with enlarged soft grip of the invention solves problems of prior wrenches by providing a wrench with a larger circumference that has a soft surface that is contoured to ideally fit a wide variety of human hands, and has a thumb rest and wider base for the fingers to better grip the handle, to apply pressure more evenly over the entire hand….”
6. List the drawings giving the figure number (e.g., FIG. 1) and a brief description of what the drawings illustrate. Remember to refer to drawings throughout the detailed description and to use the same reference numbers and consistent terminology for each element.
For example:“FIG. 1 is a perspective view showing an embodiment of the wrench with enlarged soft grip of the invention, with its jaws in the fully opened position. FIG. 2 is a perspective view showing an embodiment of the wrench with enlarged soft grip of the invention, with its jaws in the fully closed position. FIG. 3 is a detail showing the ratcheting mechanism for the jaw. FIG. 4 is a cross-sectional view showing the unique shape of the handle.”
7. Describe your invention in as much detail as you can. It is better to be too wordy than to leave out important details. For an apparatus or product, describe each part, and how they fit and work together. For a process, describe each step, what you start with, what you need to do to make the change, and the end result. For a compound include the chemical formula, the structure and the process which could be used to make the compound. You should try to make the description fit all the possible alternatives that relate to your invention. If a part can be made out of several different materials, say so. You should strive to describe each part in sufficient detail so that someone could reproduce at least one version of your invention. If you have one best mode or what you think is a best embodiment, you should describe that. However, since there is generally more than one way to make or do something, we recommend that you describe other options and embodiments since you do not want others to copy your idea and just use a modified way of accomplishing the same thing, even if you think your way is the best way.
8. Give an example of an intended use for your invention. For example, in the above description of a wrench with soft grip, point out that it is intended for people who have decreased grip strength.
9. Review and edit the draft PVA and quality check for consistency of terminology, reference numerals, typos, and grammar. Some people like prepare a separate part list that includes the reference number and name of the part or feature.
Lastly, regarding the drafting of claims, it is probably best to leave this portion of the PVA to a patent attorney.
If you can do the foregoing, you will give your patent attorney a great head start on preparing a strong provisional patent application- one that will truly support a regularly utility patent application, and not just give you a false, but dangerous, level of security.