Tips and Tactics for Better Provisional Patent Applications and Trademark Filings for Startups and Emerging Growth Companies
Tips For Drafting Provisional Patent Applications
Provisional patent applications (PPA) oftentimes require less drafting and formality than a standard utility patent applications and are thus less expensive. The PPA establishes a filing date and places the invention in a “patent pending” state. The PPA can thus serve as a pre-disclosure patent application filing to preserve the inventor’s right to file patent applications in foreign countries. Lastly, PPAs are considered to increase the value of a venture and can help in fundraising.
After a PPA is filed, the inventor must file a complete application within a year in order to claim priority to the filing date of the PPA. However, an inadequately drafted PPA can result in a rude awakening for the over-confident inventor. One problem lies with the drafting of the invention description in the PPA. In a regular utility patent application, the “description” together with the “claims” are referred to as the “specification.” A PPA does not require claims but only a description of the invention. However, it is always advisable to include at least one claim in the PPA so that the inventor can have a level of confidence that there is enough detail in the description to support the claims.
The description includes various sections, and the proper format should be followed in a PPA. 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 PPA once it is filed with the United States Patent and Trademark Office (USPTO.) It is possible, however, to file a series of PPAs, each referring to a previously filed PPA, with each successive PPA 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 PPAs 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.
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 PPA.
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 PPA. However, if you prefer to let a patent attorney write the claims, then you need not prepare any claims.
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.
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.”
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.
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.
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….”
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.
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.
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.
Review and edit the draft PPA 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.
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.
Poorly done provisional patent applications are almost certainly useless for their intended purpose, but can be used against the inventor later as a weapon to demonstrate there was no invention, or at least that the invention had not ripened past the idea stage at the critical moment the invention was memorialized at the time of filing the provisional patent application. Therefore, it is critically important to understand what is required in a provisional patent application and not to fall prey to those who knowingly or unknowingly prey on unsophisticated inventors.
Listening to one who is not a patent attorney or patent agent about what needs to go into a patent application is a little like needing brain surgery and instead of seeking a brain surgeon asking a psychiatrist to perform the surgery since they are familiar (at least to some extent) with how the brain behaves. The first rule of brain surgery is that you need a brain surgeon! Similarly, the first rule of drafting a patent application is that you need the help of a patent professional, which means a patent attorney or a patent agent.
Drawings in a Provisional Patent Application: There is a popular misconception about drawings in a provisional patent application. Many believe that that drawings are not necessary in a provisional patent application, and some non-attorney services and courses suggest that drawings are not required. Apparently the belief is that the requirements for provisional patent applications are different than for non-provisional patent applications. This is simply not the case. Yes, provisional patent applications require fewer formalities and the focus can be on the disclosure rather than the form of disclosure, but the disclosure must be as complete as a non-provisional patent application in order to provide a useful priority date. Thus, if drawings are necessary to understand the invention they are absolutely necessary in a provisional patent application.
For those not thoroughly marinated in patent law the best rule of thumb is that drawings are ALWAYS required. This is an overstatement, but not by much. Yes, there are exceptions, but 35 U.S.C. 113 says drawings are required if necessary to understand the invention. In my experience the only inventions that are not better understood with drawings are chemical compounds, because the formula tells the whole story.
The USPTO patent examination and prosecution rules say that for the purpose of awarding a filing date, a patent application that claims a method does not need a drawing. Notwithstanding, I would greatly prefer that newbies read that as the United States Patent and Trademark Office being extremely lenient in their interpretation of 35 U.S.C. 113. The reality is that even a method can be depicted in patent illustrations, and really should be. A picture really is worth at least a thousand words in a patent application and is a great way to expand upon a written disclosure to provide additional information about the invention.
A Complete Description
Drafting a patent application is not an easy task (see Patents: A Most Difficult Legal Instrument to Draft) and those that take advice on patent law or drafting patent applications from those who are not patent attorneys or patent agents typically get bad advice. Non-attorneys and non-agents just don’t understand the law. Whether they are being malicious or are just not well enough versed to know that what they are saying is nonsense is really of no importance as far as you the inventor is concerned. The damage that will be done is the same regardless of benevolence or lack thereof. Follow bad advice and you suffer the consequences just the same whether bad advice was handed out maliciously, intentionally or as the result of a lack of understanding.
Now don’t get me wrong, provisional patent applications ought not to be feared as they are in some circles. Having said this, however, you absolutely need to know that the description of the invention needs to satisfy the disclosure requirements of 35 U.S.C. 112 first paragraph as of the date it is filed. In fact, in order for any patent application to be a useful priority document it must satisfy the requirements of 112 first paragraph, and pursuant to 35 U.S.C. 111 (see above) you need a drawing if required to understand the invention.
The historical trouble with provisional patent applications deals with the fact that the Patent Office does not examine provisional patent applications and all that is required is something attached to a provisional patent coversheet. In other words, if you attach a provisional patent application coversheet to one or more pages and submit the appropriate fee you now have a patent pending and you will receive an official filing receipt from the Patent Office. This means that provisional patent application quality varies widely from good to bad to outright ugly applications that do real damage. The fact that provisional patent applications are not reviewed by the Patent Office means there are seemingly no consequences for a deficient provisional patent application.
Whether that provisional patent application can ever be useful moving forward is unknown and unknowable at the time it is filed, which allows for those who knowingly or unknowingly peddle bad services or bad advice to largely hide behind the unknown. In fact, you won’t know whether the provisional patent application was worthwhile in terms of disclosure until you later need to rely on the disclosure to establish your priority filing date. If your disclosure was not complete you have nothing useful, and potentially may have compromised all right to obtain a patent. You may not realize that the provisional patent application you filed was defective until after you file the non-provisional patent application and you are now in prosecution working with the patent examiner who won’t give you the priority benefit of the earlier filed provisional because it discloses little or nothing. Filing a defective provisional patent application can be catastrophic.
This strategy can be useful regardless of the type of invention, and works just fine with inventions commonly made in your garage as well as software or even sophisticated basic science. Universities employ this strategy with highly sophisticated inventions all the time in fact. Indeed, this use of provisional patent applications to protect innovation at its earliest point should be employed by everyone who is proceeding to create an invention, particularly now that the U.S. is first to file and there is strong reason to get a quality disclosure on file as soon as possible. So lock in your priority date as early as possible relative to whatever you can describe.