DIY Provisional Applications


Introduction

I talk to many start-up entrepreneurs regarding protecting their IP.   Typically they do not have a lot of time or money to seek patent protection.  However Congress created the provisional application for patent procedure for the benefit of just that group of entrepreneurs. Although I do not recommend filing your own provisional application without assistance of a patent attorney, I also highly recommend that, as a default, filing such a do-it-yourself application instead of doing nothing and risk loss of ownership of your IP.  DIY Provisional Application

Also see my article concerning things NOT to do before filing an application for patent

Discussion

There are few formalities required of the provisional application.  The filing fee for a small entity is $130 and $65 for a “micro-entity”.  See my article for Fee Discounts for Micro-Entities. After filing the provisional application, the invention can now be labeled “patent pending”.

Of course, a provisional application will never be examined by a USPTO examiner.   It “sits on the shelf” for twelve months and either goes abandoned (and never published) or it is expressly incorporated into a non-provisional application. 

A non-provisional application must be filed in order for the invention to be ultimately considered for patent.  Also, the patent application automatically goes abandoned after 12 months from the original filing date if it is not expressly referenced in such a non-provisional application.  

To maintain the benefit of the early filing date of the provisional application, a non-provisional application must be filed within this 12 months period and non-provisional application must clearly and expressly claim priority to the earlier filed provisional application(s). 

As stated above, I advise entrepreneurs that if they cannot afford to have a patent attorney participate in the preparation of the provisional application, then the entrepreneurs may want to consider filing their own provisional application.  This is not my recommendation, but I also believe that filing entrepreneur filing his/her own application is better than doing nothing and leaving a great risk of loss of patent or IP rights.

As I have elsewhere posted, I encourage filing for patent protection in contrast to attempting to maintain the innovation as a trade secret.  See Trade Secret vs. Patenting.

Application Content

A provision application for patent is not a “fill in the blank” form.  Rather, the application is created from blank paper.  The application should have a title, a written summary and a detailed written explanation (preferably incorporating drawings).  

The summary should state the problem solved or advancement achieved by the invention.  The detailed written explanation (“specification”) should state (without express limitation) the advantages over the prior art or existing technology/practices.  The text of the specification should be broadly written.  More detail with alternatives are better than a narrow description that describes only the inventor’s preferred method of making or using the invention.   

Drawings can be helpful and I encourage incorporating drawings as part of the written specification. Handwritten drawings are acceptable. Elements of the drawing should be numbered and the numbering incorporated into the written specification to help the reader to understand how the invention is made or functions.

I further urge the entrepreneurs to incorporate all information regarding the invention, including alternative structural configurations or materials that may be used in components to the invention.  Stated differently, don’t merely describe what you believe is the best method or configuration.  Think of the provisional application as your base document.  Include all relevant embodiments.  

What I try to emphatically communicate to the entrepreneurs is that if they write their own provisional patent application, it is essential that their description of the invention be sufficiently detailed that a person skilled in the art of the invention would know how to make or use the invention after reading the entrepreneur’s application.  The application must be written as a teaching tool for the person of ordinary skill in the art.  This communication or teaching is termed “enablement” and is required under 35 U.S.C. 112.  

The application can be either filed by mail, preferably US Postal Express Mail.  It can also be filed electronically.  Filing instructions are found at the USPTO website, www.uspto.gov.  

In addition to the written application, there is a one page Provisional Application Cover Sheet that should accompany the written application.  Also an Application Data Sheet should be filed.  This is a multi-page “fill in the blank” form that identifies the inventor, the patent applicant, contact information and prior patent filings for which priority is claimed. Both forms are available at the USPTO website.  

Subsequent Filings

Also, remember you can also later file a second or third provisional if you later think of or create improvements to the invention subject of the earlier application.  Note, however, the filing of subsequent provisional applications will NOT extend the original 12 time period.  In other words, multiple provisional applications can be combined and made subject of a single non-provisional.  However, if you intend to include the earliest provisional as part of the disclosure package (recommended), the non-provisional must be filed before expiration of the 12 months after the earliest provisional was filed.  

Conclusion

Writing your own patent application and maneuvering through the USPTO website is not an easy task.  Time, thought and patience are required.  There are, however, telephone help resources available through the USPTO website. 

As state above, I believe it to be better to file a DIY provisional rather than doing nothing. I believe a provisional application is like chicken soup, it cannot hurt you.

Copyright David McEwing, 2019