How do I Write a Provisional Patent Application That Protects my Invention?

You’ve read Should I Protect my Invention With a Provisional Patent Application and have decided you should. Great! But now you might be asking yourself, “How do I write this thing?”

No problem.

First, let’s review some of the basics of a provisional patent application, then we’ll go over an approach to write one, and after that, we’ll go over how you can file your provisional patent application.

What is a Provisional Patent Application?

A provisional patent application (“provisional application” or “provisional”) is a type of utility patent application that is filed at the United States Patent and Trademark Office (USPTO).

A provisional application is an informal filing compared to a nonprovisional patent application (“nonprovisional application”, “patent application” or “application”) in that a provisional application is not examined by the USPTO, informal drawings are accepted, and you do not need to include formal claims or an inventor declaration or oath. However lax the requirements may be, a provisional application must describe as completely as possible the invention. If the invention is not thoroughly described, there is a chance you will not receive the benefit of the filing date of the provisional application.

Detail, Detail, Detail!

If you do not include enough detail about how the invention works in a provisional application, your invention may not be protected by the provisional application.

It is worth noting that a provisional application is not legally binding and does not patent your invention. Filing a provisional application establishes a filing date and allows you to use the terms “patent pending.”

After a provisional application is filed, a corresponding nonprovisional application must be filed within a year to claim priority to the filing date of the provisional application. If you decide not to file a nonprovisional application, instead choosing to, for example, protect your invention as a trade secret, the USPTO will keep your provisional application secret.

Why File a Provisional Patent Application?

I often get asked the question, “Should I file a provisional application?” Generally, a provisional application is a quick (and sometimes cheaper) way to begin the patent process. If you haven’t already, read Should I Protect my Invention With a Provisional Patent Application? This article will help you understand if a provisional application is right for your situation. For those wanting to write their own provisional application, read on. 

Strategy for Writing a Provisional Patent Application

A. Review and Compare Existing Patents and Patent Applications

To help you prepare a provisional patent application, you should review and compare existing patents and patent applications in the same field of technology as your invention to familiarize yourself with the general layout of a patent application and terms used in that field of technology.

You can find published and issued patent applications on the USPTO website. Once there, search for patent applications and patents similar to your invention. For tips on searching, try following the USPTO’s seven-step strategy for searching. You can also perform a similar search on Google Patents.

During your review, note the terms used to describe the different elements that are similar to those of your invention. Also, note the way the drawings in these reference applications are arranged and laid out.

B. Tell a Story

Now that you have a better understanding of what a patent application looks like, it’s time to think about the story of your invention. That’s right, your provisional application tells a story, and your story should be guided by your answers to: “What is the problem my invention is trying to solve,” “What is the solution to that problem,” and “What is the secret sauce (or “inventive concept”) of the solution that solves the problem?” 

Ideally, the story is told in the Background and Summary sections, and again in the Detailed Description section of the specification.

C. Know Your Audience

Another critical consideration is readership of your future patent application. I say future patent application because a provisional application is not a patent and generally is not published unless a nonprovisional application claims priority to it.

We’ve established that the specification of a provisional patent application must describe the invention with enough detail that someone skilled in the relevant technical field can understand how to make and use it. Such a description will satisfy the enablement requirement. 

However, a useful and effective specification speaks to a patent examiner; potential competitors, investors, and customers; a judge and jury, and so on. 

When writing the specification with this audience in mind, the specification can help facilitate allowance at the USPTO, spark investment, convert customers, make the patent easier to license and help protect your business interests from competitors. 

D. Use Drawings to Help Tell the Story

Before you begin writing the specification, sketch out the invention. These sketches will help organize the description of the invention and can be used when preparing drawings for the eventual patent application. For example, you can use flowcharts to show step-by-step processes and subprocesses of the invention, block diagrams to illustrate systems the invention may be implemented in, line drawings to illustrate use cases that include your invention, etc. 

Don’t worry about how your sketches look. Your goal is to complete a set of drawings showing all aspects of the invention. 

Make each sketch a separate figure, with each figure labeled FIG. 1, FIG. 2, etc. If two figures are related, refer to them with the same figure number but with different suffixes, for example, FIG. 1A, FIG. 1B, etc. 

Try to have a figure that includes a drawing that’s comprehensive enough to show the basic idea of the invention. Make this figure 1.

Once the sketches are complete, write a name for each element adjacent to the element in each sketch.

The Drawings Are Important

The drawings help a reader understand how the invention works, and as we discussed, a provisional patent application must describe the invention with enough detail that someone skilled in the relevant technical field can understand how to make and use it.

If you show something in the drawings that you did not adequately describe elsewhere, you may be able to rely on your drawings to include the description in your nonprovisional patent application. Thus, pay special attention to the drawings as they are an essential part of the provisional application.[/ht_message]

Writing the Specification

A provisional patent application includes several sections. Below we’ll discuss an order in which to write these sections as well as how you might go about organizing these sections in the specification of your provisional application. 

The easy part is organizing the sections, so let’s begin here. When organizing the specification, use the following order, unless you can describe your invention better or more efficiently in another way. The order is:

  • Title: A short, precise, and specific description of the invention.
  • Field of the Invention: A general description of the technical field related to the invention.
  • Background: A description of the problem the invention solves.
  • Summary: A description of the solution to the problem described in the Background.
  • Brief Description of the Drawings: A list of the figures and a brief description of what the drawings in the figures illustrate.
  • Detailed Description: A detailed description of the invention.
  • Informal Claims: A few statements reciting the invention.
  • Abstract: A short summary of the Detailed Description.

With the organization of the specification out of the way, let’s discuss how you might go about writing the specification.

A. Start by Writing the BACKGROUND Section

Once you have your sketches, it’s time to write the Background and Summary sections. Why write these sections now and not jump into writing the Detailed Description? Like the sketches, the Background and Summary provide a framework on which the Detailed Description can be built. 

The Background is your opportunity to tell the story of a problem that no one else could solve, or at least the solution was incomplete, expensive, complex, etc.

In the Background, describe at a high level the problems that others have faced in this area and how they have attempted to solve them. Keep technical details of these problems to a minimum. This might mean you describe the problem with just enough detail to illustrate that there is a problem, what that problem is, and that the problem hasn’t adequately been solved. 

After reading the background, you want the reader thinking, or even blurting out, “I wonder how they solved this! I must read on!”

Do Not Describe the Invention in the Background Section

Describing the invention in the Background section can later be used to reject the claims.

B. Then Write the SUMMARY Section

The Summary section presents the solution to the problem described in the Background. Begin the Summary with a sentence or two describing the essential details to the solution. Follow this with important details of the solution, important fallback features, less important fallback features, and advantages.

As the details get further away from the core inventive aspect of the solution, make it clear that such details are illustrative or optional. Other details and features can be described in the Detailed Description section of the specification. 

C. Then Write the DETAILED DESCRIPTION Section

While the Background and Summary sections describe how the solution solves the problem, the Detailed Description section along with the drawings illustrate how the solution solves the problem.

When writing the Detailed Description, describe the invention in as much detail as possible, keeping in mind that a patent application needs to focus on how the invention works, not what it does. For example, if I say I invented an app that can provide a personalized exercise routine, I’m talking about what it does. However, a patent application requires detail on how it works. Namely, what elements make up the invention, how those elements are assembled, and how those elements allow the invention to work.

Did You Add Enough Detail?

A provisional application only protects what is described!

How Much Detail?

You might be wondering whether every aspect of your invention should be described with as much detail as you can muster. In general, include more detail when describing aspects that relate most closely to the invention. Less detail can be used for aspects that are further removed from the invention.

Don’t Hide the Ball

Describe the invention early in the Detailed Description. For example, the first figure and corresponding description should illustrate and describe how the solution solves the problem.

Be Methodical

Begin describing each figure by first stating what the figure under discussion shows. For example, you might say “FIG. 1 illustrates an example interface that can be utilized in accordance with various embodiments”. Then get specific by describing the main elements of the figure and how those elements are connected. Then describe each element in detail and any subelements in detail.

Begin at a logical starting place when describing a figure. Then work forward, up, out, down, etc. logically, numbering and naming the elements in your drawings as you go. The first time you refer to an element, think about using several different equivalent names to help familiarize your reader with the element. Then pick one name and use it consistently after.

As often as possible, try to discuss one figure at a time.

Also, try to keep your reader advised as to which figure is under discussion. For example, you might write “As shown in FIG. 2A…”

Be Thorough

Always strive to include more technical detail. For example, when describing the elements of a drawing, how they connect, and what they do, try answering questions like: “How do these elements accomplish some functional feature? How is this step being performed?”

You should strive to describe each element using enough detail that someone reading the application can recreate the invention.

Detail Check

You can protect only what you describe, so write with as much detail as possible.

D. Then Write The BRIEF DESCRIPTION OF THE DRAWINGS Section

In the Brief Description of the Drawings section, provide a series of separate paragraphs, giving the figure number (e.g., FIG. 1) and a brief description of what the drawing illustrates. For example, the Brief Description Of The Drawings section could include something like:

FIG. 1 illustrates an example element of an optimization element in accordance with an embodiment, and

FIG. 2 illustrates an example process for determining route information in accordance with various embodiments.

Remember to refer to the drawings throughout the Detailed Description and to use the same reference numbers and consistent terminology for each element.

E. Then Write the FIELD OF THE INVENTION Section

In the Field Of The Invention section, write a broad statement that gives the technical field related to your invention. Use two sentences. The first sentence generally describes the technical field and the second sentence is somewhat less general. Together, both sentences broadly describe an area of technology. 

For example, if your invention relates to providing advertisements, your Field Of The Invention might read: “Various embodiments of the present disclosure relate to managing electronic content. In particular, various embodiments describe systems and methods for providing sponsored content in an electronic environment. 

F. Then Write the ABSTRACT OF THE DISCLOSURE Section

In the Abstract Of The Disclosure (“Abstract”) section, write one paragraph that provides a summary of the specification that is no more than 150 words. You want the Abstract to be as concise and clear as possible. 

G. Then Write the TITLE Section

Make the title of the invention short, precise and specific. The title should reflect the essence of the invention without being too long. Look at recently issued patents in your field to get a good idea of how specific to make your title. 

H. Then Write the Informal CLAIMS Section

Legally, claims are not required in a provisional patent application. However, including claims offers several benefits. For example, writing claims or at least statements that somewhat resemble claims can help focus your efforts on shaping what exactly your invention is. Also, the process of writing claims emphasizes the sections of the Detailed Description that should be described with the most detail.

When writing claims, keep them simple, but focused. Try describing in broad terms how elements are structured, connected, and interact. This might include listing the unique steps of the invention or the unique elements and how those elements interact. For example, when writing a claim, you could start with something like:

1. A method, comprising:

[First step of the method];

[Second step of the method]; and

[Last step of the method].

Fill in the sections in brackets with the steps of the inventive solution. Once you have your first claim, you can add a few additional claims that describe additional features or options of the invention. For example, you could follow claim 1 with something like:

2. The method of claim 1, further comprising:

[A new step].

Make sure that each term in the claims is described in the Detailed Description section. You’ll want to provide an expansive description of each term, with many examples of the things within the scope of the term. For every noun and verb (e.g., determining, sending, receiving, etc.) in a claim, the Detailed Description should provide a couple of examples of things that can perform the action and in general, should be illustrated in the drawings. 

Don’t worry about the format of the claims at this point. Just write as broadly as possible the essential steps or elements of your invention. Writing these steps will help ensure that the provisional application includes language necessary to support a future nonprovisional application. Also, the claims are a good starting point when it’s time to prepare formal claims. 

Tips

  • Divide the application into sections, and then divide those sections into smaller sections if necessary.
  • Organize the document’s contents by order of importance.
  • Provide an example of the invention’s intended use.
  • Review the provisional application to ensure you’ve included everything about the invention you can think of.
  • Review and edit the provisional application draft. Check for consistency in terminology, grammar, and reference numbers.

Patent Profanity

Generally, the following words and phrases are avoided by patent attorneys, or are used with caution: must, always, crucial, never, only, requires, the invention, prior art.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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