1. How can ProvisionalBuilder™ help with this process?

1.5 “Drawing & Description” page

The heart of this PPA process is on the “Drawing & Description” page. This page is the most important section of your PPA.

But before we dive in, let’s examine the rules governing the sufficiency of a PPA.  In summary, the written description for a patent application requires:

• A description of the best mode of carrying out the invention, which is contemplated at the time of filing;
• Sufficient information to enable one skilled in the art to carry out the invention; and
• Any drawings necessary to understand the invention.

Note that:

• A PPA must include the names of all inventors;
• At can be filed up to 12 months following the date of the first sale, offer for sale, public use or publication of the invention. Note that these pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries; and
• A filing date will be accorded to a PPA only when it contains:
• A written description of the invention, complying with all requirements of 35 U.S.C. §112 1st paragraph; and
• Any drawings necessary to understand the invention, complying with 35 U.S.C. §113.

35 U.S.C. § 112 Specification: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

35 U.S.C. § 113 Drawings: The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission with a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

37 CFR 1.71 Detailed description and specification of the invention

(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.

(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.

Now, jumping into the process for filling out this “Drawing & Description” page:

1.5.1   Drawings

The best way to explain how your invention works is through drawings.  Thus, if you have the design or prototype done already, do a visual walkthrough of the design and show every important features, and make sure you document features that you don’t want people to copy.

Drawings may include illustrations which facilitate an understanding of the invention (for example, flow sheets in cases of processes, and diagrammatic views).

In general, it is easier to draft the description text for your invention if you already have drawings on hand. The drawings should show every feature of your system that you want to be protected.  Consequently, first, you should prepare a series of drawings that illustrate the operation of exact embodiments or implementations of your invention. You will also want to generate drawings for alternative ways to implement the invention to prevent others from designing around your particular implementation of it.

The drawings can be done by hand and digitized using a scanner or a camera. Alternatively, you can generate these diagrams using tools such as PowerPoint and Visio, and export them as images such as a JPEG or PNG file. If your invention cannot be illustrated, but you can describe it using photographs, you can take pictures of your invention and include them in the application. You can capture images with a tablet, phone or mobile device as well.

After the images are generated, our easy-to-use tools help you import or capture drawings and describe these drawings in detail. You can annotate these drawings with numbers upfront, or you can use ProvisionalBuilder™ to place reference numerals for elements. We provide tools to help you easily and quickly indicate element names and check the consistency of usage from your text entry.

ProvisionalBuilder™ has a built-in graphics editor that allows you to add and move reference numbers and associated pointers, so you can create annotated drawings quickly and easily. Alternatively, you can add reference numbers using your favorite software such as PowerPoint and Visio, and import the annotated drawings into ProvisionalBuilder™.

To start this important section, click on the “Drawings and Description” tab.  You will see that a figure is already in the application, even though you have not added any drawings yet. This figure is part of the software template that we had selected earlier as an example. When you click on the image thumbnail, an enlarged figure is shown on the bottom left.  Text associated with the figure is shown on the right column. You should review the figure and revise the text for the template figure if needed.

1.5.2   Adding a new figure

Next, we will add the first figure. When you click on the “Add Figure” button, a file selection box is displayed and you can navigate to the location of the drawings or figures.  Then, select a figure to insert into the application.

When you open a figure, the system will add a thumbnail and will show the figure in the left column. You can describe the figure in the text column on the right side.

You should write a sentence in the “Brief Description of the Figure” text box. In the above example, because a figure is the first figure, the text in “Brief Description of the Figure” has already been pre-set for you as “FIG. 1 shows an exemplary.” You have the option of either finishing this sentence or entering a completely different text.  To enter new text, you can delete this auto-generated text and enter your own text in the box.

Next, you need to add element numbers.  These designate specific parts of the drawing that will be discussed in the text. To do this, click on the appropriate area in the drawing. A number will then automatically be added. If the number is correct, you can press the enter button on the keyboard to accept the number. If the number is not what you want, type a new number in.  Now, after you press the enter button, you can enter the descriptive phrase. You can also enter a descriptive phrase or element name corresponding to the number by entering a “:” after the number.  You can then type the descriptive phrase or element name.

For ease of describing the figure, we recommend a logical numbering sequence that flows in a particular direction, such as from left to right of the figure or from top to bottom.  For example, a flow chart is usually read from top to bottom.  So, for ease of reading and matching the numbers to the text in the description section, we recommend that you start with the top box in the flow chart and incrementally add numbers to the subsequent boxes. For mechanical drawings, one approach is to start with the major or key component in the figure.  Then, add numbers in a logical sequence around the major/key component so that you can sequentially tick off the numbers in the text as you describe the surrounding components or elements. That way, the description text will logically flow with the numbers.

In contrast, if you choose element numbers haphazardly, the numbers referenced in the detailed description of the figures may jump around in a seemingly random sequence.  That may make the document difficult to understand. Our objective is to make the document flow well so that it is easy to read.  Numbering the elements in a logical manner will help the PPA’s readability.

[insert image] Using the figure on the right side as an example, we will annotate four buttons in the figure with numbers so that we can refer to the buttons with reference numbers in the text. This is done by clicking the mouse pointer near the desired area (in this case, the “Open Patent” button). A box with a red dot then appears. The red dot is the tip of a pointer arrow. You can drag the red dot to point it to the correct spot in the figure where you want the text to be associated. You can also select the number and move the number to the desired position.

The box has an automatically generated number that you can change. Further, you can add descriptive text after the number to provide more information. If you enter text after the number, a colon will be shown to separate the text from the number. If you print the figure, the descriptive text after the number will be suppressed, or it will not print.

1.5.3   Drafting the Detailed Description from the Drawings

Your PPA must meet the statutory requirements for the description section. Again, the relevant portions of 35 U.S.C. § 112 read as follows:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

In other words, you must disclose the workings of your invention in enough detail to allow the average person in your field to reproduce your invention. To do this, your description section must include three elements–enablement, written description, and best mode. Each of these elements is elaborated in turn below. For further clarification, you may wish to refer to other patents or applications in your field as examples.

1.5.3.1    Enablement

Think of your description section as a gourmet cooking recipe that provides experienced cooks with detailed instructions to produce a particular dish without unnecessary experimentation. For example, in your recipe, you may provide precise temperature settings for the oven.  On the other hand, you wouldn’t provide detailed information about what “sauté” means because an experienced cook would already know this.

Similarly, your PPA description section provides instructions to allow a skilled person in your field to reproduce your invention without unnecessary experimentation. Terms, considered common knowledge if your field, don’t need to be broken down because the reader will already know what they mean. However, if you have any doubts about what is common knowledge, it is safer to err on the side of caution by providing details.

1.5.3.2    Written description

To meet the written description requirement, you must show that you have clear possession of the invention.  You show this by describing your invention’s significant features and embodiments. It is beneficial to describe as many features and embodiments as possible in your PPA.

1.5.3.3    Best mode

Unless you have no preferred way of building or using your invention, you must disclose your preferred embodiment or other preferences that materially affect your invention’s construction or use.  Best mode includes disclosure of any specific tricks needed to make your invention work. And again, your disclosure must be detailed enough to allow a skilled person in your field to build or use your invention.

If you don’t disclose the best mode of practicing your invention, that may come back to haunt you when you are trying to enforce your patents.  If your PPA fails to explain how to make and use your invention, you can’t count on the protections offered by it. Plus, leaving out an element of your invention or failing to explain all of the operating elements could deny you the early priority date afforded by a PPA. Other inaccuracies, besides failure to disclose, include using faulty supporting data or drawings that don’t match the written description.

For example, in New Railhead Manufacturing, L.L.C. v Vermeer Manufacturing Company, 298 F.3d 1290, the court found that claims covered under the utility patent were invalid due to an insufficient written description in the PPA. The court decided that “the utility application was not entitled to the priority date of the provisional because the disclosure in the provisional specification failed to adequately describe the invention claimed in the 283 patent as required by 35 U.S.C. §119 (e)”.  Hence, details about the invention described in the PPA are critical. You should discuss each and every known aspect of the invention.

1.5.4   Suggestions for Drafting the Detailed Description of the Drawing

Aim to write a complete and thorough description because you cannot add any new information to your PPA after it is filed. If you are required by the patent examiner to make any changes, you can only make changes to the subject matter of your invention that could be reasonably inferred from the original drawings and description.

To start off, in general, the description should begin with general background information and progress to more detailed information about your invention and its components. By starting with an overview and continuing with increasing levels of detail, you provide the reader with a top-down description of your invention. That way, the reader can delve into details if he/she desires or stay at the high-level description if that is sufficiently clear.

When describing elements in each figure, you can write a brief explanation of what the element or component is, what it does, how is it related to a neighboring element or component, where is it relative to its neighbors, and when it is used. By answering these who/what/when/where questions, you discuss the structural as well as the function aspects of each components or element. You should repeat this process with each element that you add to the figure and with each figure.

Where appropriate, include chemical and mathematical formulas in the description. You can insert the chemical/math formulas as an image into ProvisionalBuilder™, or you can export the final document to Word and use the Word equation editor to enter the formula.

As discussed earlier, be careful of liberally sprinkling the term “the invention” in the application, because terms used with “the invention” in the same sentence may become a required part of the invention even though you did not intend for this to occur. Again, it is safer to say, “In one implementation, the embodiment is a…” rather than “The invention is a ….”

1.5.5   PPA Cover Sheet page

The PPA Cover Sheet (Form SB/16) is a USPTO-supplied form.  Most fields are self-explanatory.  Also, the form comes with some guidance–moving the cursor over a text box will provide an explanation of what should be entered into that text box.

When using ProvisionalBuilder™, the software captures information required for the Cover Sheet and automatically generates it for you.

To give you an idea, the cover sheet asks for the following:

1. Name(s) of the inventor(s), and city and state of residence. You should enter the name/city/state/country for at least one inventor. Additional inventors can be added/removed by clicking on the corresponding button on the form;
2. Title of the invention;
3. Name and registration number of attorney or agent, and a docket or reference number, if applicable. The docket number is a number you create to identify your case. For example, if your name is BROWN and this is your second provisional application, the docket number can be BROWN-002P;
4. Mailing address for correspondences;
5. Name of any U.S. government agency with a property interest in the PPA;
6. Whether you qualify for small entity status. Being a small entity entitles you to a 50 percent discount on filing fees. In general, unless you are part of a large company (more than 500 employees) or if you have assigned or licensed to a large entity, you can select the small entity check box.  The criteria is discussed in more detail later; and
7. Applicant’s signature. For signature, you can just type in your name as your “digital signature.”

1.5.6   Generate application page

This page allows you to check your work, and if all is in order, you can generate a ready-to-file PDF PPA.

You can also export the text as a Word document for subsequent editing if you want.  If you save the file as a Word document or a Rich Text Format (RTF) document, the paragraphs will be auto-numbered for you.  Any edits in the saved Word document will not be visible to ProvisionalBuilder™.  So, once you make changes to the Word document, there is no going back to ProvisionalBuilder™ unless you cut and paste your changes from the edited Word version back to the original text in ProvisionalBuilder™.

1.5.6.1    Diagnosis

The software runs a check to make sure that you have used element numbers in a consistent manner.  Ideally, the numbers used in your application should be unique so that one number is used per drawing item.  For example, if your drawing refers to a CPU 10, no other part should refer to part 10 except the CPU 10.  To aid in this task, a part list with the part name and the corresponding element number is generated as part of the Diagnostic.  You should review and change the element numbers to avoid inconsistencies.

1.5.6.2    Preview PDF, or save as Word or RTF document

At this point, you can preview the application as a PDF, and save it as a PDF, Word or RTF document.  If you choose to save it as a PDF, ProvisionalBuilder™ generates a complete PDF PPA that can be electronically filed with the USPTO. Alternatively, you can print the completed PPA and Express Mail it to the USPTO.