How to Properly Prepare a Provisional Patent Application
Provisional patent applications offer inventors a convenient way to save time and money while they complete the patent process. Unfortunately, an improperly prepared provisional patent application could result in losing one’s filing date or prevent any patent from ever issuing for their invention.
A properly prepared provisional patent application must provide comprehensive responses to the USPTO’s “written description” and “enablement” requirements in order to maintain an inventor’s priority date.
1. The Abstract
Abstracts are concise summaries of your invention, usually no more than one paragraph in length. They appear at the start of a patent application and should be written so that readers can quickly grasp the essentials of what you’ve created.
Abstracting can also assist in determining if your invention is unique enough for a patent. Before creating the abstract, be sure that your invention has not already been patented and there are no prior patents on its design. To check for existing patents, perform an online patent search.
Once you have established that your invention is unique, you can begin creating your provisional patent application design. This process will include:
Eligibility – Your invention must meet the eligibility requirements for patent protection as defined in 35 U.S.C. 171 and 37 CFR SS 1.3, as well as being novel and non-obvious.
Patent Search – To guarantee that your invention has not already been patented, conduct an exhaustive patent search on the USPTO website. This will let you determine if there are any existing patents on your design and, if there are, it can help determine whether or not to proceed with filing for patent protection.
Drawings – Your patent application design must include drawings that illustrate the entire object of your invention. Each drawing should be labeled and include a brief description to help the reviewer comprehend what is being illustrated.
Drawings can be either two-dimensional or three-dimensional, and should provide enough detail to accurately represent contours, spaces, and other design elements. They should also be numbered with the same number as the view they represent if applicable.
Figure descriptions are mandatory and should cover each view the drawings depict. Each description should also include any other pertinent information about the design, such as its dimensions or special features or functions.
Your design patent application must also include a product description. This part of your document will explain the function of your invention, so be sure to provide a comprehensive outline. For extra credit, you may even include a picture of your item as evidence for this step.
2. The Claims
As an inventor, you likely want to safeguard your creation. Patents are an invaluable tool in combatting illegal replication, sale or usage by another individual.
Provisional patent application designs can be an effective short-term solution to safeguarding your invention. However, you should be aware of both their benefits and drawbacks before you decide whether or not to file one.
First, a provisional application gives you an advantage to obtain a priority date for your invention. This date can be useful when working towards making incremental improvements to your product and are not yet ready to file a non-provisional application.
Provisional patent application claims define the precise elements of your invention that are protected by the patent. They should provide enough detail so that a person skilled in the art can create and utilize your invention with ease.
Provisional patent applications must also include a written description of your invention and any references to prior art that support its claims. These requirements guarantee that the United States Patent and Trademark Office (USPTO) will receive an accurate account of what you’ve created.
Though this requirement may seem tedious, it will ultimately save you valuable time and money in the patent process. The USPTO can examine your application more quickly, decreasing the amount of times they have to search for prior art that supports your claims.
Additionally, a provisional patent application design can enable you to test your market research and ensure there is sufficient demand for your invention before investing additional money on non-provisional patent applications. Sometimes, market research reveals there is not enough demand for your product to justify an extra step in the application process.
No matter why you decide to submit a provisional patent application design, it is wise to enlist the help of an experienced patent attorney when crafting its claims. Doing this can guarantee that your money isn’t wasted on something which may never become a utility patent.
3. The Drawings
Provisional patent applications that do not include professionally drawn drawings may be rejected by the patent examiner. Inventors who feel confident in their own drawing skills often neglect this step, unaware of the regulations and guidelines related to drawing compliance that could prevent a patent from being granted.
Provisional patent applications should be written in plain, straightforward language with as many drawings as necessary to fully describe the invention. Doing this ensures that examiners comprehend the disclosure accurately, avoiding misinterpretation which could result in rejection of the application or a delay in obtaining a patent.
Drawings do not need to be submitted at the time of filing, but must be provided within one year after submitting your provisional patent application. Any additional matters added after that date must comply with the formalities outlined in the drawing requirements.
Design patent drawings must include a sufficient number of views to provide a full representation of the design’s appearance. This means showing different perspectives, exploded views and detailed views of individual components.
Design drawings allow various types of shading to depict the contour and character of most surfaces. Straight-line surface shading and stippling are particularly effective, as they can be used to emphasize both the distinct qualities of surfaces as well as their contrast with one another.
Shading in views is encouraged if it helps clarify the invention and does not reduce legibility or obtrude onto other elements of the drawing. Solid black surface shading, however, is prohibited except when necessary to demonstrate color contrast or other information not visible from a full-color representation of the object.
Broken lines may be used to indicate environmental structure that is not part of the claimed design but essential for depicting its context, such as that surrounding an object shown on a drawing. Furthermore, alternate positions of one design component illustrated with full and broken lines in one view are prohibited.
4. The Product Description
A well-written product description is an essential element of any provisional patent application. Not only will it showcase your invention to the world, but it can also give you confidence when starting to make money off it.
Typically, a product description is an extensive yet concise overview of your invention’s key elements. It should also include certain specifications and measurements for reference. As this part of the application can take the most effort to complete, it’s essential that you plan ahead.
One of the most crucial elements for a good product description is using appropriate font size and wording. Doing this helps you avoid any potential mistakes during filing; an unprofessional product description could result in your application being rejected.
The product description may be the most impressive part of your application. Here you get to highlight all of your invention’s most noteworthy attributes. If you’re unsure what should go in it, consulting a lawyer for assistance is always beneficial.
Though finding a trustworthy firm that can do all the above may be challenging, there’s likely nothing stopping you from obtaining an impressive design patent. With UpCounsel legal counsel by your side, your application will surely stand out and impress its peers; hopefully this marks the start of an enjoyable and fruitful collaboration.