If you are reading this article, there is a good chance you know what a Provisional Patent Application is and is not. Let me start with a little background about Alpine Engineering and Design. We are a mechanical engineering firm who has become extremely familiar with the patent process through obtaining over 75 patents, and by working as expert witnesses on numerous patent lawsuits. We are not patent attornies, so make sure that you don’t take any of this as legal advice.
What are the Benefits of a Provisional Patent?
Now, there are a lot of good things about a Provisional Patent Application. Being able to write it yourself is one of those good things. Patent attorneys will be more than happy to write one for you if you are really worried about doing it yourself, but I have found that the inventor can often write the PPA better than an attorney simply because they have spent so much time thinking about all of the different ways they could make their invention and know so much more about it. If you do decide to write and submit your own PPA, the following tips can help you get the most out of it now, and in the future when you file a non-provisional utility application.
Generally speaking, a PPA is like a report that you would write in school. When you write your report, you want to use plain language to tell the story of your invention; there is no benefit to making it sound like the patents you might have read. The topic of your report will be your invention, and the rest of the report could include any number of the following sections:
How you came up with the idea –
This is where you tell the backstory. What is the problem you were having? Who else has this same problem? What causes the problem? What was the ah-ha moment when you figured out how to solve the problem?
Discussion of the Competition –
This is where you discuss the state of the prior art, or similar products that already exist either as physical products or patents (for more information on how to perform a patent search, see our article How to do a Patent Search here). In this section you can answer the questions, what other products exist that attempt to solve the same problem? How do those products attempt to solve the problem? Do they actually solve the problem, or is there a part of the problem that they cannot solve. Where does the competition fall short?
Explain your Invention –
This is going to be the bulk of your Provisional Patent Application, and will want to describe your invention in as much detail as you can. You may find that describing your idea in words can be difficult, but it doesn’t have to be perfect. It may take three sentences or three paragraphs to describe one feature. Don’t be afraid to be wordy, there is no penalty for extra length but leaving things out may limit the protection you can get later. Here are some things you can describe to get you going:
Describe the way it looks:
What parts does it have? What are the features of each part? which features are unique? How do the parts fit together? Are the parts any specific shapes? Can they be other shapes and still have the invention work, even if it won’t work as well? (You really don’t want to say “this is another way you can do it, but it really doesn’t work as well.” A better way to write that would be to say that “Ideally” or “Preferably” it is done one way, but you recognize that it could also work these other ways, or with these other shaped parts). What material is it made out of? What other materials can it be made out of?
Describe what it does:
How does it solve the problem or problems you talked about before? What does it do differently than the competition?
Describe each step in the process of how it is used:
Some ideas and inventions are very process based, and this step will be easy. Other inventions seem simple enough that anyone would know how to use it. Describing the process can still be a benefit because it allows a method claim to be drafted. One of the biggest benefits of method claims is that your exact step-by-step process will be hard to find in the prior art, so the claim will have a high likelihood of issuing.
Describe why it works:
Is there a secret sauce to your invention? Why is it different from and better than the competition? Did you expect it to work like it does, or was the result somewhat surprising?
Describe the Benefits of using your invention:
What is the main use you envision for your invention? What is a typical usage situation and what is the benefit the users will get? Is it faster, lighter, stronger, safer, easier to use, more comfortable etc. Write out the benefits.
Describe different ways of making your invention:
I always like to pretend that I am a competitor that is trying to design around the patent, and I use as much creativity as possible to come up with different ways of solving the problem or configuring the design. I then include and explain those alternative designs in the PPA writeup so we can claim them later if we need to.
Use Lot of Pictures:
They say a picture is worth 1000 words, and that is certainly true in PPA’s. In a utility patent, there are specific rules and formats for drawings. Those rules and formats do not apply to PPA’s. You can use hand drawings, CAD models, photographs of prototypes, charts or graphs of testing or just about any other picture to help describe and disclose what you think your invention is. Use pictures liberally, and throughout the application to get points across. It is well worth the effort.
While a Utility Patent will require claims to be submitted with the non-provisional application, there is no need to draft claims for a PPA. Claim drafting is best left to a patent attorney, as there are many rules regarding wording and punctuation among other things. A good patent attorney will also know how to write the claim to get the most coverage with the lowest probability of those claims being invalidated.
When writing a PPA, remember that the name of the game is disclosure. You want to get as much out as you can. Often, your product or design may change between when you start showing your idea and when you finalize the design. The full utility patent will be limited to what was disclosed in the provisional so you want to try and encompass as many of those future changes as possible in your initial write up. If your product or design does change substantially, in ways that were not covered in the original PPA, don’t worry. You can always file an additional PPA on your invention.
Filing the Provisional Patent
Then follow the instructions on the screen
Disclaimer: These are ideas that I have found helpful as I have worked on my own PPA’s. I am not a patent attorney. This article is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this article or any of the links contained within the site do not create an attorney-client relationship between Alpine Engineering and Design, Inc. and the reader. The opinions expressed at or through this article are the opinions of the individual author and may not reflect the opinions of any individual attorney.
About the Author
David Smith is a Mechanical Engineer, Licensed Professional Engineer and an MBA. He has been working Product Development since 2006. Mr. Smith has developed and patented multiple products and loves helping inventors and entrepreneurs protect their ideas and bring them to market. Mr. Smith also works as an expert witness on patent and product liability cases.