Provisional Patent Requirements: Everything You Need to Know
Provisional patent requirements through the USPTO require the description to completely describe the invention. 6 min read
Updated November 27, 2020:
What are Provisional Patent Requirements?
Provisional patent requirements through the USPTO require the description to completely describe the invention. A description must be complete, clear, and written concisely.
The description section should also normally include illustrations and must state the "best mode" for carrying out the invention. A person skilled in the same field as the inventor should be able to make use of the invention based solely on the description (this is called the “enablement” requirement.)
Drawing(s) of the Invention
Drawings are required to help others understand the invention and to satisfy the “enablement” requirement. For chemical formulas or certain method patents, drawings may not be necessary. But generally, the USPTO strongly recommends the inclusion of including drawings to add clarity.
Examining Attorneys compare Provisional Applications with Non-Provisional Applications to ensure that they are the same invention. Drawings can make this process more clear.
Truth About Provisional Patent Applications
A provisional patent application that is not properly done will fail its intended purpose of providing “Patent Pending” protection and of establishing an effective filing date. It is therefore crucially important to have them done right.
Drawings in a Provisional Patent Application
Inventors too often think that drawings are unnecessary in their description. This is usually a mistake. Although there are fewer formal requirements with provisional patent applications, they still must provide a complete description. Because drawings are usually necessary for others to understand the invention, they are usually a necessary part of the description. See 35 U.S.C. 113.
The saying “a picture really is worth a thousand words” applies here. Including drawings in a patent application is typically essential, and failing to do so puts your provisional patent at risk of being inadequate.
A Complete Description
It isn’t easy to draft a patent application. If you are doing so on your own, get advice from qualified professional sources. Non-attorneys and non-agents are more likely to give bad advice or misinformation.
Whether bad sources of information are intentionally misleading or just making innocent mistakes is of no consequence to the inventor. In either case, the provisional patent may fail to be effective and the inventor will suffer harm. So be careful when getting legal advice and assistance with patent drafting to make sure that your provisional patent application fully satisfies the requirements of 35 U.S.C.
Another issue that inventors need to be aware of when it comes to provisional patents is that the Patent Office does not examine provisional patent applications for compliance with 35 U.S.C. Instead, as long as a provisional patent cover sheet is properly filled out, the office will accept it.
This means that problems with a provisional patent will not be apparent until much later when a patent holder attempts to enforce an effective filing date. Only then will errors in the provisional patent application be uncovered.
Don’t Be Afraid of Provisional Patent Applications
Most patent attorneys encourage their clients to always use provisional patent applications. As soon as you can describe your invention, you should file for a provisional patent. You can continue working on improving and modifying the invention later.
Provisional patents can be re-filed and updated as new developments with the invention occur. Therefore, even before an invention is complete, provisional patents can be used to protect the progress that has been made. All types of inventions can benefit from a provisional patent, from hi-tech patents to garage-inventions.
The sooner you file for a provisional patent, the earlier the effective filing date you can establish for your invention. Because the United States is a “first to file” jurisdiction, this can be hugely significant. It is best to hire a patent attorney or agent to get started on the process as soon as possible.
Provisional Patent Application
Provisional patents have been used by many inventors to begin the patent process without the cost of hiring a patent attorney.
Unfortunately, while provisional applications are easier to file than regular patent applications, inventors often forget that there are requirements that must be met for a provisional application to be effective.
Since 1995, the Unites States has issued provisional patents. They are “provisional” because they are temporary. Provisional patents have important functions, but they do not mature into full patents. A provisional patent provides an effective filing date for the full patent after the full non-provisional patent is filed for. A non-provisional patent application must be filed within 12 months of the provisional application; otherwise, the provisional patent will expire.
When a non-provisional application is filed within one year of the filing of the provisional application, the filing date of the provisional patent application will be effective as to the non-provisional patent.
Provisional patent applications can usually be properly done in less than ten pages, and unless an invention requires technical terms to be described, plain language is sufficient.
A provisional patent application requires the names of all inventors, a cover sheet that identifies the invention, and the filing fee.
Provisional patent application descriptions must meet the “enablement” requirement, meaning that the description must be sufficient to enable a person to actually create and use the invention. If nobody has attempted to use the invention, it can be difficult to prove that the invention is actually enabled by the description.
How to Prevent a Manufacturer From "Stealing" Your Invention
When sending your invention information to a manufacturer, trust alone is not sufficient protection for your intellectual property. Unscrupulous manufacturers may attempt to claim your invention as their own, or profit from your invention without your permission. If possible, get your manufacturer to sign a binding non-disclosure agreement.
If you have a provisional patent, you can use the term “Patent Pending.” If a manufacturer knows that you have a full patent coming in the future, they will not likely attempt to infringe on your idea.
Traditional Approaches to Protecting Inventions
Traditionally, inventors would document their invention in their own records, and be able to use that documentation to show when their patent rights should date back to. But the United States adopted the “first to file” rule on March 16, 2013. Under this new system, the first inventor to file an application, rather than the first to actually invent, gets the patent. This is why documenting an invention without filing for a provisional patent no longer offers the same legal protections.
How a PPA Differs From a Regular Patent Application
Provisional patent applications only cost $65 for a “micro-entity,” $130 for a “small entity,” and $260 for a large company. They are thus significantly cheaper than full non-provisional patent applications.
They are also less complicated than non-provisional applications. Patent Application Declarations and Information Disclosure Statements are not necessary for provisional patent applications.
Filling Application Online Patent
Here are the steps for filing a provisional patent according to the USPTO website:
- Go to uspto.gov.
- Click on the "patents file online" link.
- Click on the "unregistered filer” link.
- Fill in your name and your email address. NOTE: If you are not the main inventor, you will put your name here and then need to give the main inventor’s name on the next page.
- On the next page, fill in your application data, including the name of your invention, the first-named inventor, and your mailing address.
- Next, you should attach the three pdf files that you have saved and choose the proper dropdown for the Document Description section. Click the "Upload & Validate" button when you are done.
- After you press the "Upload & Validate" button, you should see the next screen showing that all your files have "No Errors" which is shown as a blue diamond symbol. Correct any errors you have and then press the "Continue" button.
- On the next screen, you will calculate your payment to the USPTO. Click the "small entity" link if you are an individual inventor, a small company of less than 500 employees, or a non-profit. Check the "Provisional" box and fill out the information requested. Press “Continue.”
- On the next page, make sure all your information is correct and hit “Submit.
- Pay the filing fee. Print out and keep copies of your receipt. You will also get an official filing receipt from the Patent Office in the mail in 3-5 weeks. You can use the term "patent pending" as soon as you get your official receipt in the mail.
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