Submit Your Own Provisional Patent

The purpose of this article is highlight quickly actionable minimum requirements to file a provisional patent by yourself.

*Provisional patents cannot be submitted for design inventions, only for inventions that would otherwise become non-provisional utility patents.

What is a provisional patent? A provisional patent application allows you to file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The primary benefit is an early effective filing date "now" at low cost assuming a later filed non-provisional (ie real deal) patent application. You are allowed to use the term "Patent Pending" in connection with your invention after a provisional patent application is filed.

How long is a provisional patent good for? A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed and cannot be extended past 12 months. There is a minor exception to this rule that might give you 14 months, but it is not even worth mentioning. Plan for a 12 month limit.

Once filed it is game on. A later non-provisional patent will need to be submitted within 12 to 16 months and linked by your attorney to the provision patent application you originally filed.

FILING & DATE REQUIREMENTS

Your provisional application must be submitted within 12 months following any initial disclosure of your invention and contain the following:

1. A cover sheet identifying:

• The application as a provisional application for patent;
• The name(s) of all inventors;
• Inventor residence(s);
• Title of the invention;
• Name and registration number of attorney or agent and docket number (if applicable);
• Correspondence address; and any U.S. Government agency that has a property interest in the application.

The USPTO provides a Provisional Patent Cover Sheet.

A complete link of patent forms can be found HERE.

2. An overview of your invention:

*This is taken verbatim from the USPTO website. You can read 35 U.S.C. §112 for yourself, but this format here will be much more digestible. If reading it makes you think you need an attorney, see my tips and tricks section at the bottom of this article!

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

(c) FORM.—A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Example: 

6. The Fancy Widget of claim 5, wherein ... 

7. The Fancy Widget of claim 6, wherein ...

8. The Fancy Widget of claim 7, wherein ...        

(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Should I include drawings with my provisional patent? Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file with the application any drawings necessary for the understanding of the invention.

When will I get a filing date? A filing date will be accorded to a provisional application only when it contains a written description of the invention as described above and complies with all requirements. In my experience with the USPTO everything takes time. I have utility patent that has been in review since 2016 and I am just now seeing movement on it. That said, a provision patent should be processed much quicker.

How much does it cost to submit a provisional patent? The USPTO doesn't make this easy to find as it is 'subject to change'. The link below will reference the current fees. You can also call the USPTO Contact Center at 571-272-1000 or 800-786-9199 for assistance.

At the time of writing this the fee for a provisional patent was listed at $75, $150, or $300 depending on the size of your organization. See the complete: USPTO Patent Fee Schedule.

To certify as a mico-entity, sign the CERTIFICATION OF MICRO ENTITY STATUS form and include with your application submission. If you qualify the fee for submission is $75.

How do a file my provisional patent? The provisional application papers (written description and drawings), filing fee and cover sheet can be filed electronically or filed by mail.

File electronically through the USPTO EFS-Web page.

Or, mail to the following address:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

AND, THAT'S IT! Do the work and file your provisional yourself, for cheap. Claim 'Patent Pending' and if your invention blows up in those following 12 months, hire and attorney to round out the details.

TIPS & TRICKS

• Use Google Patents. Perform your own patentability search. This will save you loads of money if you do end up using an attorney. Create a Google Spreadsheet and list all the patents that are similar to yours. Rank each of the existing IP based on what you feel is closest to your invention. From there you can quickly look at descriptions and claims to more easily write your own.
• Do market research. What is already out there on the market? Are the product successful or not? If you do good market research you will notice the names of companies and inventors on patents that correlate to the products you see in the market. Connecting these dots will make you savvy and teach you ways to be successful with your own invention.
• If you are going to spend money, spend it on talented design. I use Espiritu Design for my inventions. Between a solid patentability search and thorough market research you should be able to write up a provisional patent on your own that you can be confident in. Combine this work with real drawings that show real utility and your money will be well spent. You will be protected and you will progress your invention. A good attorney will be able to help make the transition to a non-provisional patent if and when the time is right.
• It never hurts to work with expert legal council. I have worked with a number of IP lawyers over the years, hence why choose to do as much as possible on my own. That said, I HIGHLY recommend Jason Croft, Partner at Maschoff Brennan for expert council. Jason has helped me out in some hard times and doesn't waste time doing what he does best.