Provisional Patent Applications – Everything You Need to Know
What is a Provisional Patent Application?
Since June 8, 1995, the U.S. Patent and Trademark Office has provided inventors with an affordable first patent filing option – called a provisional application. It can also be referred to as a preliminary patent filing.
This simplified filing is intended to require lower initial investments and give inventors 12 months to assess their invention’s viability and to improve its commercial potential. Provisional patents grants inventors the right to establish a priority date for their invention.
In the United States, patent applications are determined by “first-to-file,” meaning that whoever files a patent application first has priority over anyone else who comes up with similar ideas in the future. As such, many inventors begin by filing for a provisional utility patent as their initial step toward securing a patent for their invention.
During the one year that a provisional utility patent application is pending, inventors can conduct research into their invention or potential market, refine and improve products or processes, or assess if further development is warranted. This helps determine if an invention warrants further development and postpones costs associated with preparing non-provisional patent applications until after one year has elapsed and they decide it’s time for full utility application filing.
It is wise to file for a provisional patent as soon as you have an invention that can be protected. The earlier you file, the greater the likelihood that you will receive priority date for your invention.
Preparing a Provisional Patent Application
When preparing to file a preliminary patent application, it is essential to conduct extensive prior art research. This involves studying existing patents, published materials or sales of similar inventions. While these search tools can be helpful in assessing the patentability of an idea, they can be costly and time-consuming exercises.
Prior art refers to all information that predates your patent application, which could influence an invention, such as patents, publications, scientific theses and industrial know-how. This could include foreign and domestic patent documents, non-patent literature and public disclosures.
In the United States, prior art plays a crucial role in determining whether an invention possesses novelty and non-obviousness. This determination involves reviewing the subject matter of an invention based on existing knowledge in its field at the time it was invented.
For example, a prehistoric cave painting could be considered prior art as it illustrates how an idea worked thousands of years ago. Additionally, technological innovations that were centuries old could qualify as prior art if they had been described or demonstrated previously but weren’t.
Before filing a patent application, many patent applicants conduct a prior art search. This can be an extensive and time-consuming task that necessitates searching through relevant prior art documents.
However, conducting patent search doesn’t necessarily need to break the bank. There are plenty of free websites and databases you can use for free, such as the United States Patent and Trademark Office (USPTO), which offers both full-text and image search capabilities. This makes USPTO searches particularly convenient.
Utilizing multiple websites can be an effective way to enhance your results and make the search more comprehensive. You may want to take advantage of some of the useful tools on USPTO’s website, such as CPC Classification Definition or International Patent Classification Catchword Index.
Begin your patent search by brainstorming terms that describe your invention, then entering them into the search bar of a chosen patent search engine. You may also use synonyms and advanced search functions to further refine results.
You can also utilize a database designed specifically to search published patent applications. This will give you an accurate indication of what the USPTO considers prior art and help identify any potential problems with your invention.
Once you understand what the USPTO considers to be prior art, you can use this knowledge to decide if your invention qualifies for a patent. If so, then you should begin the patent application process by filing a provisional patent application.
Writing the Description of the Invention
The initial step in preparing for filing a provisional patent application is to create an extensive description of your invention. This description will help the patent examiner decide whether it qualifies for protection and help you decide what claims to include in your application. A well-written description can help you make a strong case for your claims. It should make it simpler for a court to comprehend your invention and determine if you are eligible for patent protection.
The description as the initial section of your patent, should outline the problem you are solving and how your invention is new and improved. It should also provide a general technical background, drawing upon previous patent applications or publications related to the subject matter of your invention.
Your description should provide enough detail for someone knowledgeable in your field to replicate and utilize it. For instance, if creating a chemical compound, make sure they can reproduce it and manufacture it for themselves.
When describing your invention, use plain language and avoid terms that could be interpreted incorrectly. Doing so could result in patent infringement if those ambiguous words or phrases are included. Otherwise, the patent application could be denied and you won’t have protection for your creation.
Ordinarily, the description includes both drawings and text, so the patent examiners can get as much information about it as possible
Patent drawings are essential components of a patent application. They help your examiner visualize your invention in an understandable and visual way. Drawings should include schematic drawings that illustrate components and how the device functions, as well as any other necessary drawings for comprehending the invention. Be sure the drawing is accurate and clearly displays the structure, how it operates, and how modifications can be made.
You can save time by tracing photographs of your invention onto paper to highlight its features. However, bear in mind that photographs do not provide as much detail as drawings do, so they cannot substitute for them.
Standard views that can be used to demonstrate your invention include front, back, left, right and top views. You may also include perspective views. Each view should be on one page with the same orientation (landscape, portrait or angled).
The views must be numbered and drawn logically in sequence. For instance, the first view should represent your invention’s main structure, and subsequent drawings should detail specific functions and uses for each element or feature from that first view.
Your patent drawings should also include flowcharts and other diagrams to illustrate your invention’s processes or software. Doing so gives an examiner a more complete overview of the entire procedure.
It is essential that drawings be numbered and labeled accurately according to their specifications. For instance, if the specification refers to Figure 1, then all drawings must include that figure as well. Your drawings must clearly label each part of your invention so that the examiner can quickly recognize it. For instance, if you’re showing a keyboard for computer or mobile device, make sure each key appears with its corresponding number on it in your images.
These details are essential, as they demonstrate that you have invested the necessary time and money into developing your invention. They also demonstrate that you have done research and are actively trying to enhance how people engage with technology. Furthermore, providing this information may persuade potential investors that your idea has merit.
Given that the USPTO operates on a first come, first serve basis, submitting high quality patent drawings is essential. Doing so will guarantee you get your filing date and enable you to secure your patent sooner than otherwise.
As for text, the written description must be thorough and precise, without any gaps or omissions that could constitute invention disclosure. This is especially important if you have created a new process or product that could be utilized by competitors to infringe upon your patent claims.
Typically, your written description should be between 10 and 15 pages in length depending on the complexity of your invention. It is highly recommended to utilize an outline when creating your document. Doing so will keep your content organized and guarantee all information is accurate.
As with any patent application, a provisional utility patent application must clearly and comprehensively disclose the invention to someone of ordinary skill in the art. Furthermore, it should satisfy “best mode” and “enablement” requirements set out in 35 U.S.C. SS 112(b) and 35 U.S.C. 112(a). If an inventor fails to supply all required details, their patent application will likely be rejected.
Additionally, a provisional application must be accompanied by an oath or declaration stating that the inventor has invented the subject matter claimed in their invention. This helps ensure no infringement on another’s rights and protects confidential information – which can be beneficial if your idea could potentially be copied by others.
Once your draft is complete, edit it carefully to guarantee all pertinent information has been included. Check for spelling mistakes, grammatical issues and any other issues that need fixing.
Additionally, you should review any notes or outlines you’ve created for your invention. Doing this ensures all essential details are included in your patent application.
Once you have written a thorough description, it is time to craft your claims. Claims are the most crucial component of a patent application. A claim is an official legal clause that conveys to the reader (and patent examiner) what an inventor claims ownership of. Claims form the foundation of successful patent applications, so make sure you devote sufficient effort into them.
The more accurate and detailed your claims are, the higher your chances are of being awarded a patent. It’s essential to emphasize your product’s advantages and why you designed it this way. For instance, if describing a hammer, you could say “this smaller hammer will help people remove bent or twisted nails from wood more easily.”
It is wise to include at least one claim in your provisional application; however, many attorneys suggest adding multiples so as to guarantee an early priority date for any subsequent nonprovisional applications filed.
How do I file my Provisional Patent Application?
The next step in the preparation of a provisional patent application is filing your application with the United States Patent and Trademark Office (USPTO). In so doing, there are two options: electronic filing through the USPTO Patent Center or filing by mail.
If you choose to file electronically, you can do so using the Patent Center, which allows for secure submission of patent applications, including provisional applications, over the Internet. You can create your provisional application in PDF format, attach the necessary documents, verify compatibility with USPTO systems, and pay fees in real time. Additionally, EFS-Web forms automatically enter data into USPTO information systems.
Alternatively, you can file your provisional application and fee by mailing them to the Commissioner for Patents at the following address:
P.O. Box 1450, Alexandria, VA 22313-1450.
What should I avoid in my provisional patent application?
One of the biggest mistakes you can make when filing for a provisional patent is not fully disclosing your invention. Many inventors attempt to keep certain details about their creation secret by leaving out essential points in their application, but this isn’t allowed under patent law.
Due to this requirement, a full patent application must adequately disclose your invention so that “one of ordinary skill in the art” can make and use it. This means describing your invention thoroughly, including all technical teachings related to how it may be employed.
Another mistake many inventors make in their provisional applications is disclosing their inventions too narrowly. This can lead them to miss out on the full value of their invention since they only utilize a portion of what is available in wider applications for it.
To overcome this obstacle, hire a reliable patent attorney to draft your provisional application. A knowledgeable patent attorney can identify and convey all pertinent aspects of your invention in the PPA so that it is fully disclosed in the provisional patent application and later on expanded upon in a full patent application.
Costs and Filing Fees Involved in getting a Provisional Patent
Provisional applications differ from other patents in that they do not go through an extensive review process at the United States Patent and Trademark Office (USPTO) nor do they attract an issue fee. As such, filing a provisional application only involves drafting fees and filing fees.
For undiscounted applicants, the fee is currently $280; small entities pay $140 and micro entities $70 respectively. If an applicant files a provisional application on a date later than their application filing date, they will be notified and must submit all filing, search and examination fees plus any late surcharge within the time period specified in their notification.
Patent Agent/Attorney Fees
You may hire a patent agent or attorney to file your application on your behalf. These professionals are knowledgeable about the intricacies of the patent system and can help you avoid mistakes. They typically charge hourly rates, making them an efficient resource during the prosecution of your patent. The fee charged depends on both the type of patent and complexity of your invention.
A patent attorney can assist you with preparing and filing your patent application. They ensure that all aspects of your application are taken care of, preventing you from making costly errors.
Your patent attorney will also coordinate with the Patent Office to assess whether your invention merits patent protection. This process could involve multiple communications back and forth with an examiner, which could take considerable time.
Once your patent application is complete, it must be filed within one year. Doing this will grant exclusivity to your invention and prevent others from duplicating it.
It is essential to consider that the quality of your patent application can significantly impact the cost. High-quality applications require more work than low-quality ones, thus increasing the final expense.
Once you file a provisional patent online, it’s necessary to validate your account in order to guarantee its functioning properly. The USPTO provides an email that outlines how to activate your account by selecting “Two-Step Authentication” when logging into MyUSPTO. If you experience any difficulty logging in, please reach out to the Electronic Business Center for assistance.
Confirmation of your filing is a critical milestone in the patent process, as it allows you to monitor its progress throughout the system and guarantee that it will be examined by USPTO patent examiners as soon as possible.
Each new provisional patent is assigned a four-digit confirmation number which appears on the cover sheet accompanying Office actions and on your filing receipt. Additionally, this number can be found on your application’s PAIR page (Patent Application Information Retrieval), which will serve as your permanent record.
Examination by the USPTO
At the USPTO, examiners review claims and arguments in a non-provisional application to determine whether a patent is valid or should be rejected. This process can take two years or longer depending on the patent office and number of claims involved.
This period provides inventors with time to perfect their invention and craft a comprehensive description in order to gain priority for priority consideration. Unfortunately, it also delays patent issuance.
In certain instances, delaying issuance for one year can provide an advantage by adding another year to the patent’s life. For instance, if the invention is likely to be highly valued in twenty years such as a pharmaceutical drug, then delaying may be worth paying the cost of securing a one-year term extension at the end of its original 20 year patent period.
Benefits of filing a Provisional Patent Application
Once an inventor files a utility patent application, they are granted “patent pending” status. This can be highly advantageous to an inventor as it makes their invention more desirable to potential investors, partners and distributors. Furthermore, they have the chance to explore commercial opportunities or continue R&D efforts, or secure funding for their project.
Additionally, patent pending status can help inventors attract investment capital and secure funding for their invention. This is essential as it enables them to start selling their product sooner rather than later.
Another advantage of a provisional patent application is that it permits inventors to maintain their filing date, which is essential since the United States operates under a first-to-file system. In other words, the inventor who files the first patent application for their invention will have priority over all subsequent inventors.
The inventor who files the first patent application for their invention will own exclusive rights to it and can control who manufactures, sells or imports it in America. That is why so many inventors rush to file a patent application: to secure exclusivity over their creation.
Many inventors opt to file a provisional patent application before filing for a utility patent, in order to save both costs and time associated with preparing the more costly utility patent application.
Provisional patent applications can be prepared more quickly than utility patent applications, making them a popular option for inventors with limited time or financial resources. It’s essential to remember, though, that a provisional application will not be granted as a patent and it may be difficult or even impossible to obtain a utility patent from one.
In addition to these advantages, filing a provisional patent application gives an inventor the advantage of setting a US filing date for their invention. This filing date can then be used in a later non-provisional patent application in order to gain priority and greater legal protection.
A provisional application’s primary drawback is that it delays examination by the patent office for up to one year. While this can be beneficial if an inventor desires to delay examination and any potential negative office actions as long as possible, this approach may not always be feasible
Filing a Non-Provisional Patent Application
A non-provisional patent application, also referred to as a utility patent application, is the next step after filing for a provisional patent. A non-provisional application can be filed at any time and typically matures into an issued patent one year after filing.
Non-provisional patent applications consist of a specification and drawings (drawings are optional but necessary for understanding the invention), but do not require formal patent claims. The USPTO filing fee for a provisional application is much lower than for standard non-provisional patent applications.
Filing a provisional application before filing for full patent protection offers the advantage of delaying examination by the United States Patent and Trademark Office (USPTO), giving an inventor more time to assess their invention and decide whether they wish to invest in a full patent application. During this one-year period, inventors can further test their invention, refine it according to market requirements, and assess whether pursuing utility patent protection is worthwhile.
Responding to a USPTO notice
The USPTO issues various notices to applicants during the patent application process. These may include office actions, petitions, notices of allowance and other requests that must be addressed by the applicant.
If you receive a USPTO notice, it is essential that you promptly address the matter raised in the notice. This must be done within thirty days of its issuance date or before the end of your statutory filing period; otherwise, your application may be abandoned.
You may opt to pay an extension of time fee if you wish to extend your response period beyond six months. However, this fee usually only becomes necessary if you fail to submit your reply by the deadline.
When sending documents to the USPTO by mail or hand delivery, it is essential to include a self-addressed postcard with an itemized list. Doing this will guarantee all items are properly received by the USPTO.
The person responsible for reviewing documents in the Office of Patent Application Processing should stamp and initial the postcard before returning it to its addressee. The return addressee should inspect the postcard to confirm all items were received by the USPTO.
Once you receive a response to an office action or request for information, it is your obligation to respond in writing. When submitting your response, make sure you pay all applicable fees.
Some fees are included in your basic patent application fee, while others must be paid separately. You can view all additional fees that may apply on USPTO’s current fee page for clarity.
The USPTO’s fees are governed by Title 37 of the Code of Federal Regulations and may change at any time. Recently, for instance, most small and micro entity fees were decreased as part of a wider initiative to reduce appeals backlog.
Selling a Provisional Patent
Finding a buyer for your idea can be done in several ways. You can take your sales document directly to potential buyers, or search online inventor marketplaces.
First and foremost, conduct market research to determine how much products are selling for in your target area. This will give you a good indication of how much your invention is worth.
Next, craft your sales document with all relevant data. Doing this will convince the buyer that your product is valuable and suitable for their market.
If you don’t have the time or resources to conduct market research yourself, an alternative option is to hire an expert to do it for you. This is a great option if you don’t have access to necessary tools or techniques.
Additionally, you may wish to consult a patent attorney for assistance in creating your sales document. Doing so will guarantee that all documents are accurate and legally compliant.
Once you have all this information, contact the companies on your list to inquire if they are interested in purchasing your patent. If so, direct your sales document to the person responsible for making that decision.
If they are, try reaching out to other employees within the company who handle patent purchases. Unfortunately, these individuals often don’t have time or desire to take calls from inventors; therefore, direct your prospectus towards them via email or postal mail instead.
Another way to find a buyer for your invention is by reaching out to other companies that manufacture similar items. If your invention solves an issue other products do not, there’s likely that these businesses would be interested in purchasing the patent from you.
This will enable them to legally manufacture and market your product, while collecting royalties on your behalf. Furthermore, it protects you from copycats who might steal your idea and launch a counterfeit version of it.
You could also approach companies under a non-disclosure agreement, which will keep them from divulging details of your invention. However, this isn’t recommended as an effective means for finding a buyer for your invention.