How to Write a Provisional Application Example
When filing a provisional patent application, there are some essential details to be aware of. These details will assist in deciding if this route is the best course for your invention.
Provisional patent applications are patent applications that are not examined by the USPTO. This means they don’t need to meet as many requirements as regular utility patents; however, they still must contain sufficient details so someone else could make your invention without guessing or experimenting.
Description of the Invention
Your provisional patent application’s description of the invention is at its core. Make sure it includes a comprehensive explanation of what your invention does and how it does it, along with all steps involved in making it – this will be what the examiner pays attention to when reviewing your application.
When crafting your product description, the initial step should be gathering all relevant information on your invention. This includes notes, sketches or outlines you have created about it. Furthermore, include all product specifications like dimensions of the device in its entirety.
Include all pertinent details about your invention when filing with the patent office. It’s wise to have someone else review your description prior to submission, in order to guarantee its clarity and accuracy.
When writing your description, it is important to consider the legal requirements established by US patent law. These requirements, known as “written description” and “enablement,” apply both to provisional applications and nonprovisional ones alike.
For example, if you plan to design a dog toy with various hole and slit patterns, each pattern must be described separately in your provisional application. Failure to include each design will prevent priority for the invention when filing for patent protection.
It is important to be aware that a provisional application cannot be amended once filed, as it must comply with all relevant laws and regulations for patent applications.
Another advantage of filing a provisional application is that it offers inventors an opportunity to assess the commercial potential of their invention before investing time and resources into filing non-provisional patent applications. Doing this gives them insight into whether their invention merits further investigation, helping them decide whether they should continue with pursuit or not.
The inclusion of claims in a provisional application has become an issue of debate within the patent community. While including claims in such applications helps ensure that patents are written with enough detail to back up any subsequent non-provisional applications, it could potentially create issues for later patents that claim priority to the provisional application due to “prosecution history estoppel” arguments.
Provisional patent applications are more informal in nature and lack many of the requirements of non-provisional applications, such as an oath or declaration. Furthermore, they do not need to be examined by USPTO examiners and are never published.
However, it does offer the advantage of securing filings at various stages (e.g., within one year) before filing for non-provisional patent protection. Furthermore, the content of a non-provisional application that claims priority to a provisional application can be amended at any time to incorporate additional details about the invention and/or additional claims.
This ability to secure additional filings is especially advantageous when the invention is still under development and/or its scope is uncertain. As progress is made on the invention, additional provisional patent applications that supplement the initial disclosure (e.g., by adding more detailed drawings or outlining a different approach) can be filed to claim priority over the initial disclosure.
Claims can range in form and length, but generally outline the elements of an invention, such as Process Claims; Method Claims; Use Claims; Swiss-type or Recited-Claims. A non-provisional patent application that claims benefit from a provisional application must specifically refer to that application in its claims.
The Federal Circuit has applied this requirement strictly, holding in Dynamic Drinkware LLC v. National Graphics Inc. (800 F.3d 1375 (2015) that an earlier-filed provisional application must provide Section 112 support for any claimed prior art reference in order for it to take precedence as of its filing date.
Additionally, the Federal Circuit has held that a published application with new claims can only benefit from an earlier-filed provisional application’s priority date if that provisional supports those claims under Section 112. As this ruling in Dynamic Drinkware suggests, this could have significant repercussions for both patent owners and challengers in future when pending patent applications publish with newly disclosed claims supported by earlier provisional applications.
Drawings are an essential element of any patent application, especially when filing a provisional one. They make your patent application look illustrative and complete while explaining your invention fully and providing an example of its operation.
The most critical element of a patent drawing is the description you give for the object or invention itself. This should include each numbering part and how it fits together with other parts, as well as outlining any processes utilized in creation.
Your description should include the following elements: a front, rear, right and left view of the subject matter in the patent application; top and bottom views; as well as a perspective view. Furthermore, include a sectional view to demonstrate how different parts of an object are connected to one another.
Referring to elements in your drawings with reference numbers makes it simpler for the examiner to read your patent application and identify each element. Furthermore, make sure all of these numbers are consistent throughout the description in order to guarantee consistency.
If your patent application includes multiple sheets of drawings, each should be numbered with two consecutive Arabic numerals placed on an oblique line that runs from the top of the page to the bottom. These numbers should not be inserted in the margin and should be larger and clear than any reference numbers used in the description.
In addition to the sheets of drawings, you should also include an abstract and specification in your patent application. These documents are essential for fully describing your invention and can help you obtain a filing date for your provisional application.
However, if your invention doesn’t necessitate a drawing, you may opt not to include one in your application. For instance, if it is simply a chemical compound or method, chances are good that no drawing will be needed.
Table of Contents
As you may have guessed from the name, this patent application is more comprehensive than your typical two page submission. As such, it requires more than just a quick flip of a pen to complete. That is why I am offering it up as blog posts to help navigate this maze better – an absolute must read for any inventor seeking their own patent genie! Additionally, it’s an opportunity to showcase creativity and ingenuity while learning from some of the top patent lawyers in the business. For further hands on training on this topic, feel free to check out my course on Patent Applications as well.