7. Filing Requirements for Provisional Application for Patent
Filing a provisional application for patent requires fewer technical specifications
than a full patent application. The main three elements of a Provisional Patent
A written description of the invention
Any necessary drawings
The USPTO filing fee
Unlike a full patent application, a Provisional Application does not need
a detailed discussion of prior art, the invention's objectives and advantages, or
alternative embodiments of the invention. In addition, claims are not required for
a Provisional Application. Drafting claims is often the most difficult part of completing a non-provisional ("full") patent application. That's because the precise wording of claims determines
the invention's scope of protection.
Description of the Invention
For a Provisional Application, the description can usually be written in lay terms, unless more technical terminology is required to understand the invention. The USPTO does require the description to adequately describe the full scope of the subject matter you wish to claim as your invention. It must be written in full, clear and concise terms so that any person skilled in the invention's art or field could make and use your invention (this is called the "enablement" requirement). However, with the coming switch from "First-to-Invent" to "First-Inventor-to-File," time is increasingly of the essence, so filing your Provisional Application as soon as possible is the best way to safeguard your invention.
This section must also include a brief description of each illustration included
with your application. In addition, you must state the "best mode" for carrying out
the invention. In many cases, an inventor may have already written a narrative that
includes most or all of this information in the course of researching and developing
A Provisional Application's written description typically includes the following:
Title of the invention
Purposes of the invention
Description of drawings
Components or steps of the invention
How these components interact or how the steps are carried out
How one uses the invention to make it work
Best mode of the invention
As an option, a provisional patent's written description could also include the following
Advantages of the invention
Alternative ways for the invention to achieve its results
Listing Inventors on your Patent Application
All patent applications, even provisional ones, must be filed in the name of all the inventor(s) involved. At least one of the same inventors must be listed on the
Provisional and corresponding Non-Provisional Applications or the earlier filing date will not apply.
Anyone whose inventive contribution is used in any way in the invention is considered to be a co-inventor. For example, a person who added the springing device onto the original stapler would be considered a co-inventor of the stapler, while the machinist hired by the inventor(s) to produce a prototype would not.
Drawing(s) of the Invention
The reason for requiring drawings for provisional applications is the same as that
for full patent applications: to help others understand your invention. In rare cases,
a written description alone will suffice. The USPTO strongly recommends
including illustrations of your invention for purposes of clarity.
Drawings are especially important if you plan to later apply for a utility patent. At
that time, an Examining Attorney will compare the Provisional Application (including
any drawings) to the Non-Provisional Application. The two applications must be similar enough for the Examining Attorney to determine that they relate to the same invention.
The USPTO suggests these six optional formats for illustrations accompanying
a Provisional Application:
any view (e.g. top, side, disassembled, exploded, perspective)
labeling numbers (e.g. sheet, figure, reference)
schematics or flowcharts
dashed lines or straight lines
black and white or color photographs
computer-generated or handmade drawings
If you do not have professional illustrations of your invention, don't worry. LegalZoom
can help you prepare them.