9 Important Elements of A Provisional Patents
The title is a short description of your invention. It should be less than 500 characters.
The abstract enables readers to determine quickly the nature of the technical disclosures of the invention. It is generally limited to a single paragraph and should not be longer than 150 words.
Drawings should be done prior to drafting the detailed description because they will help you draft those texts in a logical order.
According to the USPTO, you should provide drawings where necessary for the understanding of the invention. The drawings must be filed with the application. They can include flow sheets in cases of processes, and diagrammatic views for mechanical or electrical inventions.
For a PPA, you may submit informal drawings or photographs. However, for a utility patent application, the USPTO has established certain requirements for drawings.
While the PPA is not checked for sufficiency of disclosure or enablement, you should provide a thorough, thoughtful disclosure that includes how to implement–construct and use–your invention. The disclosure should be more than just formulating a desire to accomplish something–that is called wishing, not inventing.
It should be sufficient to allow one of ordinary skill in the art to construct a product or perform a process with unduly extensive research or experimentation. You should teach specific, concrete ways of achieving a desired result. Writing details will show the USPTO that you have a definite idea of the complete and operative invention.
If there is more than one way to operate or build your invention, you should write down the best mode for constructing your invention and detail the best way to use it. If you do not do this and later file for a utility patent, your application may fail. Any additional functions should also be noted, but they should be described succinctly.
To satisfy the novelty element of the patent application process, you should note any discoveries of relevant prior art and how your invention differs. It’s helpful to also describe what advantages your invention has in relation to any prior art.
It can be tricky to determine the inventorship of a provisional application. Again, U.S. law generally regards any individual who contributed to the conception of an invention as recited in one or more claims of a patent application as an inventor. However, there is no requirement for claims in a PPA. If your PPA does not have claims, determining the inventor can be hard.
It might be helpful to know that some lawyers determine inventorship based on the invention as described in the PPA’s specification. Using the specification, they’ve concluded that anyone who contributed to the PPA’s description and drawings may be listed as an inventor. On the other hand, anyone who contributes only lab or assembly labor, supervision of routine techniques, or other non-mental contributions, should not be considered an inventor.
Although the need for determining the date of invention will be eliminated when AIA becomes effective, it is still an interesting exercise. The invention date is usually the conception date, when the inventor first conceives of the invention. That’s especially supported as the invention date if you diligently work on the invention, otherwise known as reducing it to practice. You can reduce your invention to practice by building a prototype or filing a patent application.
Again, AIA renders this process moot as the invention date is simply the filing date. Thus, inventors who quickly file a quality patent application will benefit from AIA’s change.
You can include multiple invention disclosures in one PPA. The USPTO charges extra fees if you exceed a certain number of pages in your applications, however.
You should pay the filing fees when you submit your PPA. If you don’t, the USPTO will send you a notice with a deadline to respond. You have up to six month from the mailing date to respond with late fees. If you miss the deadline and file for a utility patent later, then you cannot claim the benefit of the earlier PPA filing date. Consequently, you lose valuable patent rights.
For example, if your invention is “in use” or “on sale” in the United States after you’ve filed a PPA but you fails to timely convert the PPA into a utility application within the twelve month period, you may lose the right to ever patent the invention. That’s because your inability to claim priority to the PPA would leave the use/sale of the invention as prior art against your own subsequent utility patent application.