Writing a Provisional Patent Application

If you have an invention and are thinking about applying for a patent, writing a provisional application is an economical first step. It establishes a priority date and gives you 12 months to continue working on or refining your invention before market testing.

Generally, it’s possible to draft your own provisional patent application; however, it would be beneficial if an experienced attorney or agent worked alongside you. The process can be quite intricate and should be left to the professionals for best results.

The Written Description

The written description of a provisional patent application is one of the most essential components for any patent, so make sure it’s top notch. To do this effectively, make sure to explain every aspect of your invention thoroughly and clearly.

Additionally, you should describe all materials utilized, including fasteners and adhesives if they are structural or functional. Furthermore, ensure to fully describe every feature of drawings, pictures, and diagrams submitted with your application.

It is essential that you include all of these details, or else the USPTO will reject your application as valid and won’t grant a filing date or grant you patent rights.

By taking the time to clearly and comprehensively describe your invention, you can secure a favorable filing date and guarantee your patent has broad protection in the future. This is especially important if you later file non-provisional applications or create child patents known as continuations.

A written description is vital for another reason: it serves as the basis for claiming priority date on your invention in the US patent system. Under “first to file” principles, disclosure in a provisional application can serve as evidence that you have obtained the earliest priority date for the claim.

Your invention can only be granted a priority date if it is sufficiently described for someone of ordinary skill in the art to make and use it without undue experimentation. To accomplish this goal, be sure to thoroughly describe your invention in your provisional application, outlining all its functions, features, and workings.

If you don’t feel confident writing your own application, a patent attorney can do it for you. They know how to craft an effective application that will be accepted by the USPTO and have enough expertise to guide you through every step of the filing process.

The Claims

Writing a provisional patent application requires including claims. Claims give inventors exclusive rights to their inventions and safeguard them in case competitors pursue prosecution for infringement.

Provisional patent claims must be carefully drafted with due attention to detail, taking into account all relevant provisions and requirements of patent law. It’s best to hire a patent attorney for this task; however, you are also capable of drafting it yourself if you possess sufficient technical know-how.

When crafting the claims of a provisional patent application, it is essential to take into account the scope of the invention early in the process. Doing this helps shape the legal definition of the invention and decide whether regular patent protection should be pursued.

Another purpose of including claims in a provisional patent application is to identify the inventors and ownership of the invention. Furthermore, this information can be useful when determining the appropriate priority date for nonprovisional applications filed later on.

Under United States patent law, an inventor is defined as someone who “contributed to the conception” of a new product or invention. This can be either an individual or corporation; typically, anyone making mental or emotional contributions is considered an inventor, while corporations typically act as legal entities.

In the United States, most inventors are required to assign their patent rights to their employer through employment agreements or institutional intellectual property policies. Likewise, an inventor working with a contractor or collaborator may also have to assign his or her patent rights to that individual.

Include claims in a provisional patent application as an effective way to ensure both inventors and their employers are represented, helping to avoid any potential disputes or litigation that may arise in the future.

Finally, it is essential to remember that an earlier filing date of a provisional application does not guarantee validity or enforcement in the United States. Furthermore, the Federal Circuit recently held that published patent applications cannot benefit from earlier filing dates of provisionals unless they satisfy Section 112 of the Patent Act regarding written description and enablement requirements related to asserted references. This ruling has intriguing ramifications for both patent challengers and owners when analyzing validity or invalidity issues involving prior art challenges.

The Enablement Requirements

The US patent statute places certain legal obligations upon provisional applications. These requirements include a written description and enablement requirement (35 U.S.C. 112).

This requirement refers to the amount of guidance or direction necessary in a specification as filed to enable someone skilled in the art to make and use the invention claimed without undue experimentation. It is inversely proportional to prior art knowledge, predictability, and working examples disclosed.

Therefore, an examiner must thoroughly consider all evidence and decide if the claimed invention meets a preponderance of the evidence standard. This determination should never be based solely on personal opinion.

Furthermore, the applicant should submit a declaration after filing that their invention works. An examination should then compare the steps, materials, and conditions used in experiments described in this declaration with those disclosed in the application to ensure they are comparable in scope; that is, that they utilize guidance provided in both documents at filing as well as what was widely known at that time.

However, if the applicant fails to provide this evidence, an examiner may be able to establish that the specification as originally filed does not enable the claimed invention based on an analysis of each factor listed above. If a specification fails to grant patent eligibility, it must be rejected out-of-hand.

Computer systems, programming languages and biotechnical methods for detection and analysis of biological molecules often face this difficulty. In the biotechnical realm, it becomes particularly challenging when a specific microorganism or strain of microorganism is required in order to make the claimed invention successful.

To avoid this issue, the inventors should document their efforts on the invention through theses, manuscripts, “Supplementary Materials” sections of journal papers, laboratory notebooks, email communications and invention disclosure forms. This documentation will demonstrate that they actually invented the claimed invention as well as providing information regarding who the inventors are including who owns intellectual property rights. Doing this helps patent examiners evaluate inventorship and ownership more quickly.

The Drawings

Drawings are an integral component of any patent application, particularly the provisional patent one. Drawings make your invention more understandable to potential licensees or manufacturers and demonstrate how it functions. In some cases, drawings may even influence whether or not your patent is granted.

In general, it’s wise to include multiple drawings with your provisional patent application, especially if there are multiple claims or variations on the same invention. Doing this increases the likelihood that your patent will be approved and you’ll get a filing date – essential if you want full patent protection for your invention.

Patent drawings are typically created with a black pen and India ink (a dark type of ink that contains carbon particles). While these drawings can be difficult to create and error-prone, they’re inexpensive and an excellent way to capture the idea behind your invention on paper.

You may choose to employ more sophisticated technologies like 3-D printing and virtual prototypes in order to demonstrate your invention. This approach is particularly advantageous if your creation requires complex or costly machinery.

Another reason to include drawings with your patent application is that it can be difficult to accurately describe your invention without a clear illustration. The USPTO operates on a first come, first serve basis and thus it’s essential to fully describe your invention prior to applying for a patent.

For instance, if your invention involves a container, include several different containers and variations on holes or slits in your drawings. Doing this ensures that every aspect of your invention is addressed, increasing the likelihood that you will receive a filing date for your provisional patent application.

If your invention involves a chemical compound, be sure to include its composition and process description. Doing this will enable the USPTO to properly assess your invention and give it an extensive examination.