Filing Requirements for Provisional Application for Patent

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 Application are:

  • 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 the invention.

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 two elements:
    • 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:

  1. any view (e.g. top, side, disassembled, exploded, perspective)
  2. labeling numbers (e.g. sheet, figure, reference)
  3. schematics or flowcharts
  4. dashed lines or straight lines
  5. black and white or color photographs
  6. computer-generated or handmade drawings

If you do not have professional illustrations of your invention, don't worry. LegalZoom can help you prepare professional patent drawings.

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