Drafting Tips for Self-prepared Provisional Patent Applications

Every inventor eventually faces the same dilemma: How do I shop my invention around to manufacturers and potential licensees without disclosing too much information? When faced with this question, it is often worthwhile to file a provisional patent application in order to obtain “patent pending” status. Once filed, an effective filing date is established, and the term “patent pending” can be used in conjunction with the invention for at least 12 months from that filing date. With the recent implementation of the America Invents Act, individual inventors can now perform their own patent searches, consult with experienced attorneys, and file their own provisional applications with emerging web resources like patentfiler.com.

Inventors choosing to draft their own patents must keep several points in mind. First, a provisional application must explain how to make and use the invention in order to comply with 35 U.S.C. 112. If an inventor fails to describe an element of the invention or explain how the elements of the invention interact, the omission may prove lethal to the application. To ensure a detailed description is properly “enabling” in this way, focus on the points of novelty of the invention and describe those features in a manner that would enable a person skilled in the art to make and use the invention.

Second, if an inventor fails to file a foreign patent application within one year of the U.S. filing date, the inventor will lose any right to the benefit of the U.S. filing date. Also keep in mind that a public disclosure of the invention prior to the priority date of an international patent application will prevent issuance of a foreign patent or will invalidate the patent if it is issued.

Finally, if the invention requires modification in the future, a new provisional application must be filed in order to protect the new features of the invention. The USPTO does not substantively examine a provisional application, so individual inventors should thoroughly analyze their existing provisional application. If care is not taken to examine the provisional application, one may not become aware of a problem until asserting an issued patent that claims priority to the provisional application (e.g., in litigation or license negotiations.)