In this guide we take a close look at exactly what is required in a provisional patent application. Even though it is simpler than a full patent, a PPA still requires a number of steps and documentation.
Provisional patent applications (PPA) are something I recommend to absolutely everyone bringing a new product to market. A provisional patent application can be done without a lawyer, and it only costs a few hundred dollars.
Once you have filed, you can use the phrase “patent pending” to protect your product idea for one full year. At the end of that year, you will have first dibs on filing a full utility patent for your product.
Keep in mind that a PPA expires after one year, and it cannot be extended or renewed. But this gives you an entire year to decide if your product is worth the time and money required for a full patent.
Why spend thousands of dollars on a utility patent for a product that may not even sell well, or ever make a profit?
So don’t make the all too common inventor mistake of obtaining a full utility patent as step one of your product development.
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One of the first things you need to do is conduct a patent search. You need to make sure that someone else doesn’t already hold a patent on “your” product idea.
Invention promotion companies, many of them unscrupulous and scammy, offer to conduct patent searches for inventors, at a very high price. Don’t fall for it, because it’s something you can do pretty easily yourself.
You can start your search using the United States Patent and Trademark Office (USPTO) website.
Step one is to brainstorm to create a list of keywords that describe your product and to then find the corresponding CPC (Cooperative Patent Classification) numbers for those product categories.
Plug in those keywords one by one into the USPTO search box (right, upper corner) on the US Patent and Trademark Office homepage.
But you also need to add “CPC Scheme” before your keyword. For example, if your product is an umbrella, then write “CPC Scheme umbrella” in the USPTO homepage search box.
Then, scan the list of resulting CPC codes for umbrella related products to determine the CPC code that is closest to your own product.
You can click on any CPC code number to read a full definition of that particular classification code. Make a short list of the CPC codes that seem most closely related to your product idea.
If you don’t have much luck finding the relevant CPC codes then you can also find your product classifications using the International Patent Classification Catchword Index.
Now, you need to search on the USPTO “patent full text database” that is found here. Plug in a CPC code to search for the most relevant patent publications.
If a patent looks similar to your product, or solves the same problem, you want to carefully look at the product description, specifications and drawings. Look for any similarities to your invention and especially pay attention to the patent’s claims.
Most importantly, don’t freak out if you find a similar patent. Most patents are rather narrow and can be easily worked around. A narrow patent simply means that it only protects one specific implementation of the solution. There are generally numerous ways to solve a problem.
When reviewing a patent, pay most attention to the claims section which is really the meat of a patent. In most patents you will find very specific claims that can usually be worked around by implementing a slightly different solution.
For written help with a U.S. patent search, the USPTO has an excellent 7-Step U.S. Patent Search Strategy Guide.
If you would like help in-person, there are Patent and Trademark Resource Centers (PTRC) at libraries in every single state. There, librarians can show you how to use the library’s databases of patent publications.
You can conduct similar searches for European patents using the Espacenet database.
Once you have determined that there are no existing patents to your product, or you determine they can be worked around with a slightly different implementation, then you can move on to creating your Provisional Patent Application.
Requirements for a Provisional Patent Application
Below are the requirements for filing a Provisional Patent Application (PPA):
• PPA Coversheet – Includes the name of the inventor(s), mailing address, title of the invention.
• Application Data Sheet (ADS) – This is a fillable PDF which may not be viewable in your browser. If so, download and complete using Adobe Reader 5.0 or higher
• Drawing(s) and Number of sheets (number of submitted drawings)
• Specification (ie description of the invention) with the number of pages
• Other (specify any other attachments)
You also need to stipulate if your invention was or was not made by an agency of the U.S. government, or under a contract with an agency of the U.S. government. If so, you need to provide the government agency’s name and contract number. This must also appear in the “Specification” section of your application.
How to Describe Your Product
Always keep in mind that your patent is only as good as your description of your product. If you fail to accurately describe your product, how it works, and why it differs from similar patents, then it won’t provide the protection of your idea that you are looking for.
Start by taking a look at the USPTO’s definition of written descriptions in provisional patent applications.
“The written description should provide enough detail that would allow someone having ordinary skill in the same technology, the ability to make and use the invention. A PPA must disclose enough information that a person having ordinary skill in the same technology would recognize that the invention claimed in a later filed nonprovisional application is described in the PPA upon which it relies.”
Be as specific as possible when defining your product, and include the following:
• Purpose of Invention
• Description of problem(s) that the Invention solves
• Description of how the Invention is an improvement over existing technology
• Individual and business demographics for users of this Invention
• Description of how the Invention benefits its users
However, try to not be so specific that you lock yourself into a single solution. For example, instead of specifying that your product will use Bluetooth, you might wish to just state that it has wireless connectivity.
This gives you the flexibility to change your design choices later without negating your original patent application. It also makes it more challenging for others to work around your patent.
The drawings that you submit can be made by hand or computer generated. Be sure to include your product from many angles, and in different positions.
For example, Drawing 1 shows the product in the off position. Drawing 2 shows the product engaged in the on position.
You must number and label every drawing. The USPTO also allows you to submit a CD with artwork files (seriously, a CD? Is it 2004?), for example CAD files, 3D renderings of your product, etc.
You can also attach a list of all the parts and components in your product. Assign a reference number and descriptive title for each part and component.
In your application you need to stipulate your entity status which determines the Provisional Patent Application fee you will pay. The standard fee is $300, the “small entity” fee is $150, and the “micro entity” costs $75. There is also a $50 processing fee for all provisional applications.
If your specification and drawings exceed 100 pages (which would be considered extremely rare), then you must pay a higher application standard fee of $420, or $210 if you are a small entity, or $105 if you qualify as a micro entity.
The USPTO often increases fees in a new calendar year, so be sure to check their current fees before filing.
Small and Micro Entity Status
In an effort to promote the innovations of individual inventors and small startups, over large corporations, the USPTO offers reduced application fees for small enterprises.
The USPTO has defined four categories that may qualify for “small entity” status: an individual inventor, a university, a small business concern, or a nonprofit organization.
A small entity is defined as an entity that does not, together with all affiliates, have 500 or more employees; or a nonprofit.
So if you have less than 500 employees, you can claim small entity status. These savings become much more significant when you file a utility patent versus a provisional patent.
To claim micro entity status you must qualify for small entity status, and your yearly income needs to be less than 3 times the U.S. median household income for the preceding year.
If you are applying in 2021, you would need to have a yearly income below $235,500. If there are two inventors listed on the PPA, each inventor needs to separately earn below that amount to qualify.
Additionally, an inventor cannot have “assigned, licensed or otherwise granted an interest in the invention to an entity” that has a gross yearly income greater than $235,500. The one exception is when the entity is an “institution of higher education.”
Additionally, to claim micro entity status you cannot have been named as an inventor on more than 4 prior patent applications.
What Not to Include
Be aware that a record of your patent application is available to the public. This means you need to avoid including any personal information that could be nefariously used, for example in identity theft.
Avoid including things like social security numbers, bank account numbers or credit card numbers. However, don’t worry about the credit card or check you use to pay the PPA fee, that information is not retained in your application file.
How to Submit the PPA
There are two options for submitting your Provisional Patent Application to the U.S. Patent and Trademark Office.
The first option is to submit it electronically using the USPTO’s Electronic Filing System (EFS-Web). If you file electronically then you will need to provide PDF versions of all of your documentation.
If filing electronically then you should also use the electronic Application Data Sheet (ADS) available via the EFS-Web system instead of submitting the PDF version.
The second submission option is to mail the application to the USPTO here:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
With a Provisional Patent application you can protect your product idea without spending a lot of money upfront. This allows you a full year to determine how well your product really sells, and if it can truly be manufactured, shipped and sold at a profit.
Always strive to minimize your financial risks. Make sure your product is selling well before spending tens of thousands of dollars on a Utility Patent.
Keep in mind that if the design of your product changes significantly over that one year, you may lose that protection. This is why your description should be as broad as possible without infringing on any existing patents.
Your PPA guarantees that you can be the first entity to file a full utility patent on the exact product in your PPA. If your product has changed significantly, then anyone can file for that utility patent at any time.
Similarly, don’t rush into filing a PPA. You don’t want to file a PPA if you anticipate making major design and engineering changes to your product.
Keep in mind that the USPTO does not examine drawings in PPAs. However, they do review all PPA’s to confirm that they meet the minimum filing requirements.
A coversheet is one of the minimum requirements, so be sure to include all the required information, and the signatures of all inventors.
This article guide was written by Jessica Teel.
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