FILE A PROVISIONAL PATENT YOURSELFBritten Sessions and John Chandler contributed to this article
What is a Patent?
A. Promoting The Sciences and Useful Arts
Before we jump into the nuts and bolts of a patent application and the process of sending one to the U.S. Patent Office, it is best to appreciate why we have patents in the first place.
1. The Constitution
The Constitution of the United States is the source of patents. Article I, section 8, reads in part, “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Accordingly, the Constitution gives Congress the power to enact laws relating to patents to, hopefully, promote scientific “progress” in the world. Note that the word “patent” was not used in the Constitution.
Under such constitutional power, Congress has enacted laws relating to patents to encourage innovation for all to enjoy, and to reward and protect inventors. A patent conveys the right, for a limited time, to prevent others from making, using, or selling the invention. The first patent law was enacted in 1790, and more recently, sweeping patent changes happened in 2013 associated with the America Invents Act (AIA). All of the various patent laws have been designed for the stated purpose, namely to “promote the progress of science and useful arts.”
B. Government Monopoly
Congress has given the United States Patent and Trademark Office (USPTO) the authority to administer patents. The USPTO is an agency of the U.S. Department of Commerce, a branch of the federal government. The USPTO is the exclusive authority on issuing patents. Additionally, all patent rights are handled under federal law.
The Constitution says that an “exclusive right” may be given to inventors. A patent is a document memorializing the exclusive right given by the government. A patent is a government-sanctioned monopoly or right given to inventors to exclude from making, using, selling and offering for sale their invention. In addition, others are preventing from importing the invention into the United States. This monopoly is owned by the applicant and is geographically limited to the U.S. borders.
Patent applicants can either be a company, or, in many cases, one or more inventors. Patent applications can be submitted by inventors. If a patent is granted, each inventor has equal exclusive rights (e.g. if two inventors were associated with a patent, they each would have 50% interest in the patent, etc.). While enforcing a patent is an expensive undertaking, the mere threat of a patent lawsuit can be enough for others to respect an inventor’s rights.
As shown above, the Constitution indicates “for limited times.” Consistent with the Constitution, therefore, the life of a patent is currently 20 years from the date of filing. A provisional patent application is basically a placeholder and does not count toward the 20-year life of the eventual patent.
A provisional patent filing is never examined. That means you do not have any true patent rights upon filing a provisional, but filing a provisional does give you the right to pursue patent protection later. The “non-provisional” application must be filed within one year of the date of filing of the provisional.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO — that is, by filing a federal lawsuit.
There are three types of patents:
1) Utility patents — granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement on such things;
2) Design patents — granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents — granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
Provisional patent applications are generally not used or allowed for design patents or plant patents. For those two kinds, you either have your application ready, or you don’t. The government policy is that we try to give a break to the more mechanically inclined inventors.
1. The Process – Issuance
Before you are granted a government-sponsored monopoly, you must convince a patent examiner at the U.S. Patent Office to issue your patent. The examiner reads the application and evaluates the claims at the end of the application. The claims are numbered and provide the language of what the inventor considers to be novel and non-obvious. You can think of the claims as fences around your invention which define the extent of your property.
The examiner reviews the application in view of publicly available references including existing patent applications, publications, books, advertisements, items for sale, and so forth.
The examiners are not perfect, but they do their best with the information at hand. They see many applications and stay within one technology unit during their tenure at the Patent Office. Examiners have a good understanding of what is new in their particular technology unit.
According to the numbers, the USPTO rejects about one-half of all patent applications. It is helpful to have someone experienced on your side when negotiating with the examiner about what language is in your proposed patent claims. Amendments to the claims are allowed, and are often required by the examiner before the examiner issues your patent. Generally, you can worry about the claims after you have filed your provisional application.
Provisional applications are not substantively examined, but are merely a placeholder or priority document that a non-provisional patent application refers to. Accordingly, the provisional application is not required to have any claim. Therefore, a provisional application can be considered mostly a technical document that describes your invention. Since you are the inventor, you are best situated to describe your invention. You can submit a very good provisional patent application as long as it thoroughly describes how to make and use your invention. Don’t hold details back.
The provisional application should contain about the same amount of technical information as included in a non-provisional patent application. Be ready to spend hours to ensure that you have all of the details in your provisional application so that there is no question that you were in possession of all aspects of the invention at the time that you submitted your provisional application.
2. The Process – Enforcement
In order to exercise the rights of a patent, they must be enforced. There are generally two places that enforce patents: (1) federal courts, and (2) the U.S. Border Protection Agency. The specifics of enforcement are not needed here because this guide is focused on provisional patent applications, not actual patents. There are lots of other resources on the topic of enforcement.
Although a provisional patent application does not confer rights (to enforce), it still plays a part in enforcement. For example, a granted patent may claim priority to a provisional application. In such a case, the provisional application might be analyzed by judges and juries, border control agents and related personnel, attorneys, investors, and potentially even representatives of the USPTO. Many will read the provisional to determine whether sufficient information was disclosed. Some may read it to determine if the disclosure supports a potential infringement read on products or services. As you can see, care should be taken even at the stage of submitting a provisional patent application, as it may be greatly scrutinized later on.
3. The Process – Maintenance
While utility patents have a 20-year life, the government demands that you pay maintenance fees to keep your patent active. That way, we, as a country, allow the subject matter of unused and presumably non-money-making patents to fall into the public domain. Currently, after 3.5, 7.5 and 11.5 years subsequent to the issue date of your patent, you must pay a maintenance fee to renew your patent rights. The maintenance fees gradually get bigger over the life of the patent to encourage continued and expanded use of the patent rights. Often, the most valuable patent rights are toward the end of the life of a patent. Thus, care should be taken in writing even a provisional application so as to protect the invention, as its most valuable years may not be for another 10-15 years after it issues.
C. Practical Considerations
While you may have already made up your mind about moving forward with filing a provisional patent application, you should consider the following brief considerations.
1. What A Patent Is Not
• A protection over an idea or concept.
• A ticket to success. Less than 3% of all patented products or services make it to market. Often, the only evidence of a product is in the records of the patent office.
• A quick path to protection. Patenting is generally a 2-5 year process.
• The first step for developing a product or service. Patenting is only one step in commercializing. First, consider (1) conducting a patent search; (2) making the final prototype; and (3) conducting sufficient market research to ensure financial viability of your product or service.
• Always the best use of your money. Commercial success may hinge more on luck, R&D, marketing, market timing and current events than on securing a patent.
• A license required before you sell your product or service. Less than 10% of all products currently in the market are protected by an existing and maintained patent.
• A simple registration process. A patent is the result of a complex adversarial process between the inventor and the Patent Office.
• A ticket to a quick courtroom victory. Patent litigation is very expensive and risky. Patents taken to trial can cost millions of dollars. Sometimes going to court is the only way to enforce a patent. Patents can be challenged before trial at the Patent Office.
2. What A Patent Is
• A separate source of revenue. A patent may generate a royalty from a license agreement or may be sold outright to a buyer.
• A separate source of valuation. After a product or service gains significant market attention, a patent can often enhance the value of your business to investors.
• A marketing advantage. A product may be advertised as “patent pending” after an application is on file (including even for a provisional), and as “patented” after the is patent issued.
• A sign of an innovator and savvy business owner. A patent shows investors, the public and your customers that you evaluated all options and took the time and expense to invest in the long-term future of your product or service.
• A government-granted monopoly. The monopoly is limited in time and to the exact language found in eventual patent claims. It is the right to exclude others from “making, using, offering for sale, or selling” the invention in the U.S. and the right to prevent importing the invention into the U.S.
Why bother discussing non-provisional applications? The answer is that you must have enough context of the end goal to appreciate what should go into your provisional application. Each provisional application serves as the basis of a non-provisional application. If desired, you can convert your provisional application into a non-provisional application. If insufficient information is included in the provisional application, however, the non-provisional application may not properly claim priority to the provisional application. Put another way, the closer the non-provisional is to the provisional, the greater the benefit that can be derived from the provisional.
Insufficient information in the provisional application can be problematic for two reasons. First, a reference teaching about the same thing, and dated after your provisional application and before the non-provisional application may be used to deny you a patent later on. Second, an intervening event may occur, such as a public disclosure or offer for sale that is more than twelve months before the filing of the non-provisional application. Such actions may preclude you from being able to get a patent if your provisional lacks sufficient details indicating that you were “in possession of the invention” as claimed at the time of filing of your provisional application. Thus, patience and substantial effort should be taken in writing and filing a provisional application.
A. Parts of A Non-Provisional Application
A non-provisional application has many parts. Since a provisional application is merely a placeholder for a non-provisional application, it is wise to review the parts of a non-provisional application. You can then match up the content of your provisional with a non-provisional application so as to provide a solid foundation for a strong non-provisional application.
A title is required. Generally, the title is only entered in the electronic filing system of the U.S. Patent Office, but can appear at the top of the text of the application, and it will also appear on an application data sheet (ADS) form. While an ADS is not required, it is recommended when filing every patent application because it includes valuable information from the inventor about the application and invention.
A background section is optional in a patent application. The background section is not your ordinary “background” of how you discovered or developed your invention. The background section to the Patent Office is a section where you effectively admit what is prior art. Care should be taken when identifying something as “background,” as there are known court cases where a background section has been used to invalidate a patent.
Figures, drawings, tables, charts and so forth are technically not required for a non-provisional application. At least they can be filed subsequent to filing of the application as of December 18, 2013. However, figures probably will be required by the Patent Examiner who reviews your application. Officially, an applicant must “furnish a drawing where necessary for the understanding of the subject matter to be patented . . . the Commissioner may require its submission.” The language, “where necessary” is open for debate. However, there are not a lot of options if you want to fight with the Patent Office about whether you must include a figure in your application. Based on this reality, it is best to include drawings of some kind in your provisional application. If figures are included in a non-provisional application, the application must have a brief description introducing the contents of each figure.
A “specification” is collectively the text-based part of your patent application. It is the description of your invention. This part is required in every (utility and plant) patent application. The specification can give meaning to the words used in the claims. The specification should be as “specific” as possible. Curiously, nowhere does the word specification appear in a typical patent application. The specification can be broken down into sections such as background, detailed description, claims and summary. A summary is not required, but can be a good section to add for the sake of busy readers like investors and executives.
An abstract is required. It is limited to 150 words long. The abstract is typically one paragraph and is printed on the front of each issued patent.
Claims are the legally enforceable part of a patent and at least one claim must be submitted in every non-provisional application. Officially, the “specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.” Provisional applications are not required to have a claim. It is best to leave claim writing to after filing of the provisional application. However, sometimes a claim is included in a provisional application if there is a desire to eventually file internationally (to conform with international requirements).
Every patent application, including a provisional application, requires a fee. Non-provisional applications involve lots of fees including a search fee, an examination fee, a continued examination fee, an issue fee, maintenance fees, and so on . Thankfully, just a single filing fee is typically needed to get your provisional application submitted to the Patent Office. It buys you 12 months of “patent pending.”
While non-provisional applications don’t require it, a provisional application requires a cover sheet. The cover sheet can be an official application data sheet (ADS) which is available on the website of the U.S. Patent Office. Lots of other forms are available there, too, to accommodate working with the Patent Office.
An inventor oath is required for non-provisional applications but not for a provisional application. Accordingly, a signature from the inventor is not required to submit a provisional application.
A. Essential Parts of the Provisional Application
There are basically only three parts of a provisional patent application:
(1) a cover sheet,
(2) a specification, and
(3) a fee.
Of course if you are going to file your application electronically, you must have a few other parts or bits of information, such as a title. Most applications are filed electronically, but you are not required to do so. And, in order to avoid learning and fighting with the electronic submission system of the Patent Office, it is often easier to just submit your provisional application in paper form via mail — even if you have to pay the penalty fee for using paper at the Patent Office. Such will be discussed in a subsequent chapter.
In contrast to a non-provisional application, there is no set format for a provisional application. That is, your provisional application can be a separate stack of pictures followed by pages of text. Alternatively, your provisional application can be more of a magazine format or scientific paper format where pictures, illustrations and charts are mixed in with passages of text. At a later time, you can re-format your provisional application to the formulaic requirements of the non-provisional.
Each of the parts of a provisional application are treated separately below.
1. Cover Sheet
The Patent Office requires various information about you, as inventor, and your invention. For example, the Patent Office requires the name of at least one of the inventors. The Patent Office meets this requirement by demanding submission of a “cover sheet.” The Patent Office provides a simple cover sheet or a more advanced form called an application data sheet (ADS).
A couple points to remember. A cover sheet requires the name of at least one inventor, but does not require a mailing address or signature by each named inventor. To be safe, it is a good idea to list all of the inventors if that is easy to determine. Otherwise, list at least one of the people who are likely to be named an inventor in the final non-provisional application. Although a cover sheet does not require a mailing address of each named inventor, it is often a good idea to include the name and contact information for each inventor. In contrast to a cover sheet, an ADS requires a mailing address and country of residence of each listed inventor. At least one of these inventors must reside in the U.S.
A “specification” is the text-based description of your provisional application. This part is required.
You might ask yourself, “Must I write an entire book about my invention!?” Yes, mostly. In order to do a good job with your provisional application, you should write, and write a lot. You can start by writing a list of bullet points. You could submit this list of bullet points as your provisional. But the first draft does not likely contain enough detail. If you have time — and you probably should take the extra time — you can convert this list of bullet points into prose.
When describing your invention, work through each aspect. Describe what is needed and what is not. Describe what can be varied and what cannot. Focus on the parts that you think are novel over existing devices or methods. Many of the best applications include details that a typical person might skip over. Why is the button round? Why did you wait 30 seconds before adding the powder? Write down why you took each step in making the invention.
Your provisional application can be hand-written. However, be sure to write legibly. Leave a generous margin on each page so that the application can be scanned or photocopied easily. It is recommended, however, that you type your provisional application. It will make it easier to eventually convert it to a non-provisional, and will more easily allow you – and others – to read it in the future.
A quick way to generate text is to record yourself, as the inventor, and then to transcribe the audio or video recording. In the case of a video recording, a series of screen captures can become the figures (discussed above). If you use a mobile phone, there are free options for generating text from your voice. Thus, a lengthy written document easily can be produced even if you don’t type well.
Of course you can just type up a description or specification, too. But don’t let the requirement for a specification set you back. If typing a description is too daunting, have a friend do it, or better, just write up some detailed notes by hand.
Some inventors keep an inventor’s notebook in which they date their pages and scribble their ideas. You can submit a copy of these pages as part of the specification of your provisional application.
A title is not technically required. However, the electronic filing system of the U.S. Patent Office requires it. The title can appear at the top your provisional application. A few suggestions are in order. Try to be accurate yet broad in the naming. Keep the title under 200 characters. Don’t use profanity or trademarks in the title.
While you may be in the habit of writing scientific papers with a “background” section, do not be tempted to use the word background as a label in your provisional patent application. A background section is optional in any patent application and is certainly not required in a provisional application. The background section is not your ordinary “background” of how you discovered or developed your invention. The background section to the Patent Office is a section where you effectively admit what is prior art. You certainly should write and submit a description of what others have already done. But, it is best to avoid using labels on any part of your provisional application. You can sort labels out later in the non-provisional application. Hopefully, you will have the benefit of a patent professional who can help apply the labels appropriately, move sections around, draft claims and so forth. That way, you won’t be limited by admitting to anything. Remember, a provisional application will eventually become public record if you submit a non-provisional application that matures into a patent.
Is there a fee? Yes. Don’t worry about the fee until you are ready to submit your application. The fee is discussed in the chapter on submitting your provisional patent application. Typically, the fee is about $125 U.S. Dollars.
While figures and drawings, tables, charts and so forth are technically not required for a patent application, it is best to use them whenever possible — even in a provisional application. A lot of time can be spent on the figures. For a provisional application, a nice shortcut is to take pictures of your invention. Submit lots of pictures! Pictures can be taken of almost any invention including software interfaces, methods of making something and the parts of a machine. You have a 100 page limit (before additional page fees are imposed), so consider using most of that.
A series of photographs tells the story of how to make and use your invention. Instead of waiting to come up with official engineering drawings, a series of photographs can be submitted, one for each figure that may appear in the subsequent non-provisional application. While color drawings and color photographs are frowned upon in non-provisional applications, provisional applications are never examined substantively, so no prohibition against photographs and use of color exists. The one warning here is that you will either need to print out your photographs when submitting your provisional on paper. For electronic submission, you will need to convert your pictures into a PDF document prior to uploading your application via the Patent Office submission website.
Hand-drawn sketches can serve as figures in your provisional application. You can submit sketches in addition to the pictures. For best results, be sure to leave margins on the edges. Use a heavy, dark line so that any sketch is susceptible to photocopying and is legible in all parts of the sketches. You can generate a bunch of sketches in just a few minutes. Then, you can write about each sketch to see if you tell the entire story of your invention. In the figures, focus on the parts of your invention that you believe are novel. After all, you are telling your story to the Patent Office and are trying to convince the Examiner that your technical break-through deserves a patent.
Write Your Provisional
Let’s turn to actually writing your provisional patent application. Use the following prompts as guides as you write. These prompts are designed to help you add sufficient information that is important for patenting. If you answer all of the prompts below, you are likely to include enough information to support a thoroughly drafted non-provisional patent application. No examples to the prompts are provided to keep the prompts as short as possible. Some of these prompts may not make sense for your invention. As such, skip over any prompt that doesn’t work for you.
Remember, there is no set format for a provisional application. The non-provisional application is very formulaic, but a provisional application can be free form or structured — as long as the provisional includes all of the information needed to support the more formal non-provisional patent application.
Provide a short, descriptive title for the invention.
Every invention needs a good title. Remember to keep the title to under 200 characters, and to not use any terms that are purely trademarks. It should be pretty clear after reading the title what you are trying to patent (e.g., an apparatus, method, or composition of matter). Be specific and direct.
Describe the invention in general terms. What problem does your innovation solve?
Start from a high level of generality and then drill down into more specific details. Describe who would be interested in the problem. Describe why the problem is so important. Describe why society might be interested in solving this problem. Talk about the various parts that make up the whole. If you have previously created a technical document like a research paper, user manual or other writing, append the original technical document to the back of your provisional application but also answer this prompt because sometimes it strengthens your application to include details for a non-technical audience.
In which country was the invention created? What is the place of residence of the inventors?
These questions are helpful to make sure that it is proper to file an application in the U.S. Patent Office. If all inventors are foreigners, the U.S. Patent Office will not accept the non-provisional application. In other words, at least one of the inventors should be a U.S. citizen. Although this is not a concern for provisional applications, it is helpful to identify the inventors for the provisional so at least one of the inventors named on the provisional appears on the list of the inventors for the non-provisional application.
Describe when you conceived the invention.
Write down to the best of your recollection the date that you first started thinking of your invention. Write down a timetable of when the invention was formed. If possible, write down the dates that you developed certain features of your invention.
Now, set this information aside, and do NOT include it in your provisional patent application. It can be useful later, if needed (and it may behoove you to officially document such dates in some manner). These dates may be important when you speak with a patent professional for help in writing your non-provisional. As a bit of background, to make things simpler, the U.S. recently joined the rest of the world in switching the Patent Office to a first-to-file system. While you don’t need to know the details now, generally, the first person to submit a patent application to the Patent Office ends up with the patent — if there is a fight about who was first to create the invention. This is a very rare occurrence. For now, keep in mind that the filing date of your provisional application is presumptively and effectively the date of your invention.
Describe how you conceived the invention. Did you produce a working prototype of the invention? How did you do it?
Anyone who learns of your invention for the first time will need some context. Describe how you came upon the problem to be solved. Describe your eureka moment. Describe how you thought of alternatives and selected the best materials, shapes and designs to solve the problem. Describe what problems you encountered in generating the prototypes. Describe why these prototypes failed, and how you made them better, made them last longer, made them smaller to be more consumer friendly. These are the kind of details that strengthen your patent application.
Who are the inventors?
This should be pretty self-explanatory, but you would be amazed at the fights that can happen over inventorship. Inventors have rights. Anyone listed as an inventor can file a non-provisional application based on your provisional application.
Be sure to only list the names of those persons who are responsible for serious contributions to the invention. Don’t count the people that helped show you materials for components if you were still in the experimenting and prototyping phase of solving your problem. If you are unsure as to who the inventors are, you can list one inventor name in your provisional application. It could be your name or the name of an inventor who will definitely appear in the list of inventors for the non-provisional application.
How does your invention solve the problem? How do the different parts work together?
Describe how the various parts of your invention work with each other. Describe how your invention interfaces and interacts with other parts. Identify parts that are off-the-shelf, and which ones had to be customized before they would work as you intended.
Describe in detail how your invention works differently than products or services already available.
How did others do it before? How did you do solve the problem before? Was it a pain? What are the features that make your invention better than what has gone before?
An important point is made here. Your invention may not be patentable due to a variety of reasons. Someone may have already tried to patent your invention, such as in a journal, news article, blog post, sci-fi movie or another place. The world may simply already know about your invention. Accordingly, before spending a sum of money on a non-provisional patent application, it might be worth a patent search to give you some idea of your chances of successfully patenting your invention. But, filing a provisional patent application is likely cheaper than paying for a professional patentability search. At a minimum, it is recommended to conduct a number of internet searches (e.g. for your invention, for patents in the similar technology type, etc.) to determine the novelty of what you have invented.
How does each new feature of your invention provide advantages over existing features?
Is your invention just a small part of an existing product? Are there several features that were improved? Did you come up with something completely different? How many parts of the whole did you improve? Describe each feature that you improved. Does it take a lot of effort to get your invention to work with other things? Describe how your invention would require changes to other things that interact with your invention.
What does your invention look like?
Provide some drawings, photographs, charts, test results and so forth. If you take photographs, spend a bit of time preparing the lighting and background so that your invention is easily seen in each photograph. Describe how you captured your test results. Describe how you determined that your invention was a success. Describe the assumptions you made when collecting numerical results. Were the results reproducible? Just include the facts; don’t record any wild speculations. But list possible variations that could be used with your invention and are likely to succeed if used.
What materials have been used to make your invention?
Write down to the best of your ability the materials that are used and list materials that could be used. If you are describing a new method, what is required to perform or use your invention? What conditions would be limiting to your invention?
Is the any additional testing that would need to be done before you are sure that the invention would work properly?
Sometimes you are almost certain that your invention would work, but you haven’t tested out your hypothesis or created a prototype. In this case, you still could and should file a provisional patent application. You should write down your assumptions, and why building a prototype would be a mere formality.
What is the best version or variation of your invention?
Is there just one way to solve the problem you identified? How about your invention? Is there more than one version or option available for each part of your invention? Why is each part the best part for the job? Would a metal part work as well as a plastic part? Are there any materials that you did not test that could work in your invention? Are there variations or improvements of your invention that others could come up with? How could someone improve upon your invention? Write that down! Include that in your provisional application. What are the presently contemplated modifications, alterations, improvements, extensions of the invention?
What industries could take advantage of your invention?
Did you create something for one industry, but other uses abound? List as many industries as possible that could use your invention.
How many hours of research were required to prove to yourself that your invention would work properly?
How do you know that your invention is working and is better than others? Will it take months to test its long life? Describe the research that you did for your invention and on your invention. What materials did you test? Explain how you conducted your research.
Have you searched for similar items at the patent office or on the Internet?
If you know of competing products and services, list them. Include a list of known solutions to the problem your invention solves. The references can be pulled out from your provisional application and submitted as known references when you submit your non-provisional application.
Which companies or users would be interested in using or buying your invention?
How do you know you can make money with your invention? How does it save people time, effort, energy? Does someone have an interest in your invention? Will you need to include or install your invention on someone else’s device? Is your invention just an ingredient in a larger recipe?
Will others be using the innovation in 3-15 years?
Indulge your imagination and see how and where someone might use your invention in the future. Perhaps it solves a problem that is a small problem now, but will be a big problem later. Elaborate on this. Explain why others will be using invention in the future.
Now more than ever, it is important to get your provisional patent application on file with the Patent Office as soon as possible. There are two principal reasons for this.
First, the U.S. recently joined the rest of the world’s countries in presuming that the first inventor to file their patent application is the first inventor to be entitled to a patent. Of course your invention must still meet all of the other requirements for a patent, such as novelty and non-obviousness. For now, keep in mind that the filing date of your provisional application is presumptively and effectively the date of your invention.
Second, if you are considering patent rights in other countries, you need your patent application on file before certain patent-preventing events. For example, your provisional filing should come before you disclose your invention publicly. You should not publish an article about your invention or offer it for sale. Typically, if you have done one of these things, then in the U.S., you are given 12 months to submit your patent application, but you likely will miss out on patent rights in some other countries. This first 12-month from public disclosure is the first patent clock deadline that you should be aware of.
B. Twelve Month Anniversary
There is a second 12-month patent clock — the non-provisional clock. That is, even though you get your provisional application on file, the proverbial tennis ball is still in your court. The right to file a provisional application is found in 35 United States Code 111(b). This section states in part, “[s]ubject to section 119(e)(3), if no such request [to convert to your non-provisional patent application] is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.”
The important part to remember is “abandoned” and “12 months.” Provisional applications expire on their 12-month anniversary. Accordingly, you must file your non-provisional application WITHIN or BEFORE your 12 month anniversary of your provisional filing. This deadline is extremely firm and strictly observed. Make sure that if you desire to file a non-provisional it is filed before that one year deadline.
Note that a non-provisional filing can make a claim for priority to multiple provisional applications.
For patents whose value comes at the end of the 20-year life, it is beneficial for you to wait until the last available day before filing your non-provisional application. For example, these types of patents occur in the pharmaceutical industry where each month the patent is in force, thousands or millions of dollars are at stake. However, in many cases, there is no advantage to waiting until the deadline before taking further action. Consider getting your non-provisional application on file soon after your provisional filing. The specifics will depend on your situation. In any event, it is nice to have almost a year to consider whether you want to move forward to the expense and effort of filing a non-provisional application.
Now that you have your materials for your provisional, it is time to submit them to the U.S. Patent Office.
A. Why Electronic Submission?
There are several obvious reasons why you could consider electronic submission. First, you probably wrote and prepared your application on a computer. Second, it should remove the chance for a human to interfere with application, and thereby potentially introduce errors into your application. Third, it should be faster and more convenient. All of these reasons are possibly true except that electronic submission requires advanced planning and lost time. It also requires some expertise that you don’t need to have. For electronic submission, you first must invest time in getting approved as an official user of the computer system operated by the U.S. Patent Office. Then, you have to navigate a complex computer system at the Patent Office.
The online system of the U.S. Patent Office is called EFS-Web. The EFS stands for electronic filing system. Getting approved for this system is easy but involves 2-3 weeks of waiting including receiving a paper letter with computer codes. You begin the process by filling out a form called a Certificate Action Form. This form must be notarized and submitted by regular mail. Approval gets you an electronic key or “digital certificate” that you can then use to access the EFS system. The USPTO website (www.USPTO.gov) is a good source of information on this topic and process. Electronic submission is not recommended for those who are new to the patenting process and for those who are only going to submit 1-2 provisional patent applications in their life.
B. Why Not Electronic Submission?
Why skip using your computer to submit or file your provisional patent application? There are lots reasons to just mail your application.
First, it should be simple and relatively fast to print and mail your provisional application. You can either fight your printer or fight with the Patent Office computer website (introduced in the previous section). Many people opt for the printer, especially when it takes 2-3 weeks to get your “key” or “digital certificate” just to access the electronic system.
Second, you don’t have to worry about making a mistake with the Patent Office computer website. There can be a great deal of confusion about which labels to apply to certain documents and which selections to pick in the pulldown menus. Let the U.S. Patent Office scan and process your paper-based provisional application. Simple.
There are basically only 3 parts of a provisional application as explained in a previous chapter. Why waste lots of time and frustration with the electronic system if you only need to use it one time? Better, the USPTO does not apply the “non-electronic filing fee” to provisional applications. Accordingly, it is simple to drop your provisional application in the mail.
C. Submission Procedure
Electronic submission is not described here or in this guide. The USPTO already has provided substantial information on this topic on its website — if you do it yourself. In the alternative, you may shop around and find a patent agent, patent attorney or law firm who is willing to electronically file it for you for a small fee or for free.
A paper-based submission procedure is described here.
First, you should carefully proofread your application. Then, print it. Check over all of the text, the figures, charts, tables and so forth. Make sure that you have all pages of your application, and that the printer did not skip anything. It is best to print your application on one side of the paper.
Make sure that you have the three essential parts of your provisional patent application:
(1) a cover sheet,
(2) a specification, and
(3) a fee.
Figures were treated separately in a previous chapter. Here it is assumed that your figures are placed with your specification.
The U.S. Patent Office has a simple cover sheet available for download. It is known as form SB/16 or “sb0016.pdf.” You can print this blank cover sheet and fill it out by hand.
All pages of the specification should be printed and the pages placed in some kind of order. The entire application should be printed on 8.5 x 11 inch paper. While there is no requirement for a provisional application, it is best for the text to be in a 12-point font. Page numbers are helpful but optional.
While you can submit the application with some color photographs and color drawings, it is recommended that everything be in either a black and white format or at least in a grayscale format. The USPTO will take the stack of papers that make up your application and will electronically scan it in the order that you submit it. The scan will be turned into a PDF document in their system for their records.
It is very helpful — for future reference — for you to scan and save an electronic copy of your complete file for your records. So, be sure to scan your application before you drop it in the mail. Getting an electronic copy of the provisional application from the U.S. Patent Office is not an easy process and involves a fee. Further, having your own electronic copy will make it easy for you to share your provisional application with the person who will help you prepare your non-provisional application.
As for the fee, the U.S. Patent Office conveniently provides a form for making payment by credit card. This form is called the “Credit Card Payment Form” or PTO-2038.pdf and is also located on the forms page at http://www.uspto.gov/patent/patents-forms.
This form is not scanned and is not made of public record. You can rest assured that the Patent Office is careful with this form. The amount to pay on the form is blank. You will need to enter the amount. At the time of writing, the fee is $65.00 if you are a “micro entity” or $130.00 if you are a “small entity.” Check at this Web address for the current amount of the fee on the date that you mail your application http://www.uspto.gov/curr_fees.
What is the difference between a micro entity and a small entity? Well, that is not a simple question. See the next section for details.
Now, it is time to get the application in the mail. Some people opt for postal tracking. It is recommended. That way, you know whether the post office is the source of your lost application, if that happens. After hours of hard work, a little extra cost in the postage is in order. The mailing address for your provisional patent application is the following:
Commissioner for Patents
P O Box 1450
Alexandria VA 22313-1450
All done! Now, you should receive by regular U.S. mail an official filing receipt that indicates if the USPTO accepted your provisional application.
On the filing receipt, you should receive a serial number assigned to your application. It is this provisional serial number that must be referenced in your non-provisional application. Remember to share your provisional serial number and entire application with the person who helps you prepare your non-provisional application.
D. Micro Entity Versus Small Entity
An applicant — you, the inventor — qualifies as a micro entity, if each of the following four qualifications are met. For more than one inventor, each inventor must be under the income limit.
Small Entity Requirement
The applicant qualifies as a small entity as defined in 37 CFR 1.27, which refers to the business size standards set forth in 13 CFR 121.801 through 121.805 – which is defined as a business “whose number of employees, including affiliates, does not exceed 500 persons.”
Application Filing Limit
Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed U.S. patent applications, excluding provisional applications and international applications under the Patent Cooperation Treaty (PCT) for which the basic national fee under 37 CFR 1.492(a) was not paid, and also excluding patent applications for which the applicant has assigned all ownership rights or is obligated to assign all ownership rights as a result of the applicant’s previous employment.See 37 CFR 1.29(2)
Gross Income Limit on Applicants and Inventors
Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)) … which is equal to three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.See 37 CFR 1.29(3)
Gross Income Limit on Parties with an “Ownership Interest”
Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income . . . which is equal to three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census. See 37 CFR 1.29(4)