In a previous post I recommended that an inventor not write their own Non-Provisional Patent Application (NPA). This not the case with a Provisional Patent Application (PPA), which does not require the formalities of an NPA. The PPA is a beast of an entirely different nature.
Here are a couple of points to remember about your PPA:
- A PPA is not a patent. It is an application. This is important because...
- A PPA does not provide you with patent protection and…
- A PPA expires 12 months from the time of filing. See the timeline here.
- A PPA provides a priority date for purposes of filing.
- A PPA requires enablement.
I'm not going to go into further detail on these points here. We'll save that for another day.
And now, a few issues that confront inventors when drafting a PPA.
1. Overthinking It
Don’t overthink it or psych yourself out. Putting together an effective provisional patent application is simpler than you think. A PPA is, at its core, your story. Think of how you would explain your invention to your mother or spouse - In common English. If you write your PPA that way, you’re most of the way there.
One word of caution - Do not, under any circumstances, read a published utility patent to get insight into the process. Doing so will not only ruin your day, but it will create the impression that you must learn a new language to write a patent, which is true, but irrelevant to writing a PPA.
Don't let the task overwhelm you.
2. Failing to Enable Your Invention
Don't hide the secret sauce. That's the lesson here. You must disclose what your invention is and does with clarity. This is one of the few requirements of a PPA.
Here's the test: if someone reads your PPA; understands your invention; and then knows how to make and use your invention - you pass! If not, go back and add more detail. I don't think it's a bad idea to share your description with a trusted friend as a gut check. When in doubt, get competent legal advice.
For the hopelessly paranoid, your provisional patent application never becomes public if you don't file a corresponding NPA. There is very little chance that someone might steal your idea if you put it down on paper and file it as a PPA.
Reveal everything, hide nothing.
3. Unintentionally Limiting Your Invention
Even though there is an enablement requirement, you will want to avoid requiring too much specificity in your PPA. When inventors describe what they have invented, there is a tendency to create unintended limitations.
Here are a couple of descriptions:
- My invention has a base made from aluminum.
While it may be true that the base can be made from aluminum, is aluminum the only material suitable for the base? Probably not. More likely aluminum was chosen for other reasons. One of the reasons may be as simple as that is what the inventor had lying around in the garage.
- The base is made from a rigid material which includes any of: aluminum, steel, a polymeric compound, a composite material, and the like.
This example avoids limiting the base material to aluminum and includes other suitable materials that might be used to form the base.
One way to avoid this issue is for each element
of your invention ask yourself the following questions:
- Is this the only way to make this?
- Is this the only material that can be used?
- Is this the only way to do this?
When you limit yourself to a specific material or method, you give others an opportunity to design around your invention.
Thinking about other ways things may be done is the way to go.
4. Omitting Illustrations
It is common knowledge that a picture is worth a thousand words.
I'll write that again.
It is common knowledge that a picture is worth a thousand words.
If I had a picture, I could have eliminated all those words... Probably.
Use illustrations. If you can draw well - draw. If you can't draw - take pictures. Almost anything goes in a PPA. When you take a picture, look at it and describe what it shows. If there is something you can't see, then take another picture of the previously unseen part and describe it.
I'm often asked how many drawings or pictures should be present. I used to say, "As many as are required to tell the story." Now I just say, "Six." That's not really the number, but it makes people feel better.
Pictures goood. Fire baaad.*
5. Using Inconsistent Terminology
It is important to use the same words to describe the same thing the same way. If that last sentence doesn’t make your eyes water, you may want to consider a career in law.
For example, it would be a mistake, when referring to a fishing pole, to also call it a fishing stick or a fishing spear at different points in your PPA. You do not want any confusion as to what you have invented. Be very consistent. Don’t hesitate to be repetitive. Various names for your invention might be appropriate in your marketing copy, but it has no place in a PPA.
You say potato and I say potato... but at least we're using the same word.
Keep it simple and keep it consistent.
6. Using Trade Names and Trademarks
Most inventors like to come up with catchy names to call their invention. These names are known as trade names. Trade names are very useful marketing tools, but have no place in a PPA. For example, see if you can tell the difference between the next two descriptive sentences:
- The invention is the swirly twirly brush that eliminates using Liquid-Plumr (R) for stubborn clogs.
- The device is a bristle brush attached to a spring to mechanically clear drains therefore eliminating the need for chemical clog removers.
The first sentence contains the inventor's trade name for the invention as well as a registered trademark. Unfortunately, the trade names are not adequately descriptive of the invention nor is the use of a trademark sufficiently descriptive. The second sentence gives me a warm fuzzy feeling because it clearly describes the invention.
Don't use trade names or trademarks.
7. Using Color
There are times when color may have some utility - such as when the use of red causes an involuntary response in an otherwise docile bull to charge and trample anyone within eye sight.
Otherwise, don't use color to describe your invention. Color is generally considered an aesthetic attribute as opposed to something that has utility.
In my case, I'm wearing a red shirt, purple jacket, gray sweats, and brown socks while writing this post. You may think that is an aesthetic choice. You would be wrong. It is a clever way of getting people to avoid eye contact with me while I'm busy.
Leave color for coloring.
Hopefully these points will help you draft a better Provisional Patent Application in the future.
* This is an obscure reference to the movie "Young Frankenstein."