What is the purpose of a provisional patent application?
To know how to write a provisional patent application (PPA) well, you must first understand its purpose. While a provisional application might make sense for several reasons, a PPA primarily serves one fundamental legal purpose: to provide support for your subsequent nonprovisional. If the disclosure in your provisional is scant, then your provisional application will not be worth much from a legal perspective.
Sure, you’ll have patent pending status. And you might even be able to raise capital for your startup. At the end of the day, however, a grossly deficient provisional will come back to bite you.
Nothing herein constitutes legal advice. If you are unsure about writing your own provisional patent application, consult a patent practitioner licensed with the USPTO. Here is a helpful list of cautions provided by the USPTO.
Design or utility patent protection?
At the outset, recognize that we are talking about utility patent protection as opposed to a design patent. There is no need to file a PPA if you want to apply for a design patent.
While we’re on the subject of clarifying things, keep in mind that it is called a provisional patent application. The USPTO does not grant any provisional patents, so it would technically be incorrect to say something like, “I got a provisional patent approved.” A PPA is a placeholder that requires timely follow-through in order to obtain utility patent rights.
How to Write a Provisional Patent App: Where do you start?
Outlines are great. They help to organize your thoughts and provide a roadmap for what you should write. In particular, a helpful outline of an invention or new product would start with the core features. Your outline may include specific characteristics of each core feature. Let’s call these characteristics subfeatures.
Don’t be afraid to get very specific with these subfeatures. Remember, you are not claiming your invention in a provisional. Instead, you are providing an invention disclosure with as much detail as possible to support your subsequent nonprovisional.
With your outline, you have a skeleton of your write-up. Once complete, you can fill in the meat by drafting the written description.
Should your provisional include drawings, photos, images or any other visuals?
Absolutely. Your provisional should include as much visual detail as possible. Include any drawings, diagrams, photos, etc. Even rough sketches can serve a useful purpose. Unlike a nonprovisional, the format of a provisional patent application need not follow the same rigid requirements. So the flexible format of a provisional filing enables you to file all sorts of images.
As discussed below, images can be highly useful especially where your detailed description might be lacking certain details. You never know when you might rely on a visual image in your provisional to support your nonprovisional claims.
How to Write Your Written Description
Now that you have your outline and visuals, begin drafting the written description. As you expand upon the outlined features and subfeatures, you may want to refer back to your visuals.
For example, label your first drawing or photo with something like “FIGURE 1.” Feel free to mark up the visual by pointing to and identifying certain parts or features. In your written description, frequently refer back to FIGURE 1 and discuss, for example, how Part 10 is connected to Part 20 and so forth.
Elaborate on the Unique Features
Spend more time detailing the unique features of your invention. When in doubt, do not leave it out. Err on the side of caution by including more detail than what you feel is necessary. If additional drawings or photos might help to illustrate the new features, throw those in as well. As you write your provisional patent application, continually refer back to the images. You can annotate your drawings or photos with numerals or labels, and then refer to them in your written description.
For example, an additional photo of your product concept taken from a different angle may help to show a feature that is partially hidden in your current visuals. Take those additional photos and add them to the provisional filing.
What is the critical deadline to convert to a nonprovisional?
The deadline to convert to a nonprovisional is 12 months from the provisional filing date. If you have filed a series of provisional applications that you intend to consolidate into a single nonprovisional application, calendar the 1-year anniversary of the earliest provisional filing date.
When is the foreign filing deadline?
The foreign filing deadline is also 12 months from the provisional filing date. If your budget cannot accommodate multiple foreign applications at the 1-year foreign filing deadline, consider filing a single international PCT application.
Need to file a provisional patent application that will give you peace of mind?
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