How To File A US Provisional Patent Application For Your Invention
[Return to Home Page for more information]
This webpage is at: www.patent-introductions.com/provisional.html ... ... ... to learn more about patents, click here ... ... ... to see how you can develop the patent skills an engineer should have, click here.
This webpage helps you file a provisional patent application, so that you can get "Patent Pending" status. It provides a recommended template for your Specification Document, instructions for filling out forms, and even a powerpoint presentation that guides you screen-by-screen and button-by-button through the steps for filing your provisional patent application electronically with the USPTO website.
Please read all of the below, so you can see whether a provisional is for you, whether you qualify, and so on. You are free to use these materials for creating and filing your provisional patent application, subject to the disclaimers in this website. Plus, these materials may be updated from time to time, as requirements change from the law and the Patent Office. Using this website or its materials does not create an attorney-client relationship with Patent Introductions, Inc., or its founder, or an employer of its founder. The materials of this website cannot be relied on as legal advice. If one wants legal advice, one should engage a patent attorney about the relevant facts & circumstances.
PRELIMINARY CONSIDERATIONS
Before you file a provisional patent application, consider all of the below:
PC1) Would a provisional give you enough protection?
PC2) Can you file a provisional without a patent attorney?
PC3) When should you file a provisional?
PC4) Are you eligible to file a provisional with the USPTO?
PC5) In what ways can you file a provisional?
PC6) In what ways can you pay the USPTO filing fees?
Do you still want to file a US provisional? If so, let's get started:
DOCUMENT PREPARATION STAGE for your provisional patent application.
First, complete each of these Preparation Stages:
DP1) Prepare the Specification Document for this filing.
DP2) Format your Specification Document so that the USPTO website will accept it for e-filing. This is important because, for uploading that will count as e-filing, the USPTO website interface will only accept documents that are in specific formats. At a minimum, your computer must be able to read .pdfs. Preferably, your computer should be able to fill a fillable pdf form.
DP3) Prepare the Cover Sheet required for the filing.
DP4) Optional: if you have started your Personal Patent Organizer (PPO), have your Personal Patent Organizer (PPO) available during the filing, which will help later.
DP5) You must pay a filing fee to the USPTO. Determine the amount of the filing fee, and whether to fill in additional form for the deepest discount.
DP6) Download the latest version of our Provisional e-Filing Instructions PowerPoint. (It may take a few seconds, because it is rather detailed. If a small window titled "Downloading" appears for too long, click to cancel it and the downloaded document may show up...)
LAUNCH STAGE for e-filing your provisional patent application
The first time that you will do this, allow at least 20 minutes for the e-filing.
Prepare as described in our Provisional e-Filing Instructions PowerPoint.
This is the link for launching. If you cannot use this link, paste in your browser the following: https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered
Once you launch, follow the steps of the powerpoint; it will guide you screen-by-screen through the process of e-filing. (If any of this did not work, call a patent attorney.)
DILIGENCE AFTER THE FILING
AF1) If you haven't already, update your Personal Patent Organizer (PPO) about this provisional patent application you filed; fill in the remaining fields. Update by copying the similar numbers in the parallel spaces of the PPO.
AF2) Update your calendar with the Future Date of when your filing will stop being useful. For US filers, this Future Date is the earlier of: a) one year from the day you filed your provisional, and b) one year from when you first disclosed publicly your invention. Then also calendar a reminder for four months prior to that Future Date, for the time to start your regular patent application, or else you lose patent rights.
AF3) Filing Receipt: In a few weeks, the USPTO will mail you a Filing Receipt at the correspondence address you gave. When you receive it, read everything it says. Caution: if the Filing Receipt writes that something is still missing from your filing, you should submit it by the deadline they give you. Save the Filing Receipt with your other files about this application.
AF4) When the time comes (from AF2) to start your regular patent application, engage a patent attorney. Take to them the copies of what you filed, and the Filing Receipt you received from the USPTO.
Good luck!
Greg Kavounas, CEO
Patent Introductions, Inc.
-------------------------------------------------------------------------------------------------------------------
DETAILED INFORMATION ABOUT THE ABOVE
PC1) DOES A PROVISIONAL GIVE YOU ENOUGH PROTECTION?
Let's not confuse the two different questions here:
a) Is a provisional desirable in the short term?
b) Is a provisional sufficient for the long term?
Here is some advice from the US Patent & Trademark Office (USPTO). If you cannot use this link, paste in your browser the following: https://www.uspto.gov/learning-and-resources/newsletter/inventors-eye/provisional-patent-application-it-me
For your circumstances, ask a patent attorney or a patent agent.
In any event, here are some of our thoughts, for each of these questions:
a) Is a provisional desirable in the short term?
Answer: very often yes. Within 1-2 months after you invent, a well-drafted provisional is often the right move to keep you going as you start exploring the possibilities, alone or with others.
There are many reasons why a provisional is desirable in the short term:
First, with a valid provisional, it will be less critical for others to sign a Non-Disclosure Agreement (NDA) with you.
Second, a valid provisional can keep your priority until you do novelty prior art searches. For how to start on such searches by yourself, see the Patent Ready® book. And, if the searches do not come up clear, think more about how you want to proceed.
Third, in the future your provisional may help your regular non-provisional application overcome obstacles. Since it is foreseeable that obstacles of this type may appear, the effort and the expense for the provisional is well justified for many people.
b) Is a provisional sufficient for the long term?
In the longer term, a provisional *alone* will not be enough protection for you, period.
This starts from the fact that: a provisional patent application:
i) will never publish while pending, the USPTO starts by keeping it confidential;
ii) will never issue into a patent; and
iii) will give you rights that will expire in a year *or less*, depending on when you made public use of your invention, disclosed it, etc.
A provisional does not replace a regular non-provisional application. All of what you hear about a patent stopping someone who copies an inventor happens only from patents, and not from patent applications or provisional patent applications. And patents are issued as a result of filed regular non-provisional applications, not provisional patent applications. This is why, in the longer term, a provisional alone will not be enough protection for you.
If you do file a regular patent application within the time allotted legally, that regular patent application can benefit from your provisional. For example, your regular patent application will receive an effective filing date of your earlier provisional. In other words, a provisional can help with not losing some rights in a context of your disclosure. Even then, however, your provisional might not help if the Specification of your provisional has not been written legally appropriately for your invention and your circumstances, as discussed below, in the next Preliminary Consideration.
And, even if you properly follow your provisional patent application with filing a regular non-provisional, your provisional might not help if a competitor of yours has applied for the same patent before your regular non-provisional; in fact, they may end up with the patent and not you. Chapters 3 and 6 of the Patent Ready® book give examples of sample such patent races, but these are for regular non-provisional applications, not for provisionals.
Plus, if you are not careful with your dates, a provisional alone can get you in legal trouble for false patent marking. You should not continue marking your product "PATENT PENDING" after your right to do so has expired. You can read more about false patent marking, and how it can be detected by others, in the Patent Ready® Study Guide, which is a free & searchable download.
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
PC2) CAN YOU FILE A PROVISIONAL WITHOUT A PATENT ATTORNEY?
Answer: Yes. However, for many follow-up steps you will most likely need a patent attorney or agent. For preparing a provisional, again the answer is yes but there are many caveats: you run risks if the Specification Document you prepare is not legally the best it can be for your circumstances, and later it might not serve you as you thought it would.
What we do for you here: We provide a template for your Specification Document, and show you how to start preparing it. The template has good questions for you to answer, and we suggest you complete it by answering all the questions as best as you can, especially the "how-to" questions.
Then, we suggest that you hire a patent attorney or patent agent to finalize your Specification Document. Hiring them can go much smoother, and faster, if you tell them in advance that you have written down everything about your invention in your Specification Document. Of course, they may ask you further questions on aspects they think you did not cover, etc.
What we cannot and do not do for you: We cannot advise you as to how to finalize your Specification Document. This is because everyone's circumstances are different: different inventions, different invention contexts, different prospects for commercializing, etc. Such factors impact what is legally the best writing of your Specification Document in different ways. (And, if you skip this step as some do, you may still end up with a filed provisional patent application. It is just that your patent application might not be legally the best it can be for your circumstances, and therefore might not help you if/when a crisis time comes.)
If you have engaged a patent attorney to help you with your Specification Document but you want to file the application yourself, then:
a) let them know of your plans, so they do not file it also, and
b) after you file it, send them copies of everything, including a copy of the Filing Receipt that the USPTO will send you.
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
PC3) WHEN SHOULD YOU FILE A PROVISIONAL?
The US Patent & Trademark Office (USPTO) gives some guidelines as to when to file a provisional patent application. If you cannot use this link, paste in your browser the following: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
After you have publicly disclosed your invention and, since then, 12 more months have passed, you may no longer file a provisional for it. (You can delay starting this 12-month clock if all your disclosures have been according to written Non-Disclosure Agreements.)
It is a very good idea to file a provisional before you disclose your Invention to others.
And you should not forget to file a regular, non-provisional patent application in time; the deadlines for regular patent applications can be different than those for provisionals.
Plus, a caution: if you file electronically, your filing will register at the local time of the US Patent Office in Washington, D.C. For example, if you file from the West Coast of the US at 10:00 pm in one day, for Washington DC that will be 1:00 am of the next day, and so your filing date will be considered to be the next day.
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
PC4) ARE YOU ELIGIBLE TO FILE A PROVISIONAL WITH THE USPTO?
If you are a US citizen and live in the US, yes (except if you work for the Patent Office).
If not, check your country's laws, because some countries require that you file first in the country that you live in, or are a citizen of.
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
PC5) IN WHAT WAYS CAN YOU FILE A PROVISIONAL?
We show you how to file a prepared provisional patent application in a certain way, namely by electronic filing online. This process is also called "e-filing". We prefer this way, because you get feedback instantly about your filing.
Alternately, the US Patent & Trademark Office (USPTO) accepts filings by mail, by personal delivery etc. You can research other such ways to file from the USPTO website. If you cannot use this link, paste in your browser the following: https://www.uspto.gov/learning-and-resources/newsletter/inventors-eye/provisional-patent-application-it-me
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
PC6) IN WHAT WAYS CAN YOU PAY THE FILING FEES?
You will need to pay filing fees for your provisional patent application. These fees will be up to a few hundred dollars (more on the exact amount later).
We show you how to pay the filing fees by using a credit card, as part of your e-filing. If you want to pay later you can, but there will be a surcharge. (In some fact situations it is actually better to pay later, even with the surcharge.)
While e-filing, the credit card payment uses the USPTO's secure portal. Alternately, for paying later, the USPTO accepts payment by check, wire transfer, etc.
Back to Preliminary Considerations
-------------------------------------------------------------------------------------------------------------------
DP1) PREPARE THE SPECIFICATION DOCUMENT OF YOUR INVENTION
The Specification Document is where you describe your invention. If you have multiple unrelated inventions, write a separate Specification Document for each, and file each as a separate provisional application.
DP1-1) Start the Specification Document
For example, you can download this template in MS Word. (If a small window titled "Downloading" appears for too long, click to cancel it and the downloaded document may show up...)
DP1-2) Formal Sections A-D of the Specification Document
Do not skip this step; it is easier to collect now all this information, plus other forms will ask you for exactly the same information, arranged similarly.
For Section B) Title, start with the essence of what your content is. Try to limit it to 150 characters including spaces. See if you can edit to avoid articles like "a", "an" and "then".
For Section C) Attorney Docket Number.
You do not need such a number for your filing, but you be will be happy if you create one and use it.
You can just choose one, and use internally to distinguish this from your other, future filings, to which you can give a different Attorney Docket Number. (Never believe that your invention of today is your last one - never.)
The Attorney Docket Number for your filing will be an alphanumeric string. Here is a suggested formula for generating one:
Docket Number = [NAME_INITIALS]1P
Example of using this formula: If:
... the first co-inventor is named: Abraham Lincoln, and
... the second co-inventor is named: Mary Todd Lincoln, and
... this is the second (i.e. 2nd) Provisional patent application that they are filing as coinventors, then:
Docket Number= ALMTD2P
And, start using your Docket Number. For example, where you see the abbreviation [DktNo], replace it with your docket number!
DP1-3) Substantive Sections E-H of the Specification Document
Fill in according to the headings. CAUTION: ANSWER ONLY THE QUESTIONS ASKED HERE; IF COPYING ENTRIES FROM A COMPANY'S INVENTION REPORTING FORM ("IRF"), DO NOT COPY ANY ADDITIONAL FIELDS!
For more specific guidance, but still not legal advice, see the chapter of the Patent Ready book about filling in an Invention Reporting Form.
DP1-4) Then engage a patent attorney, so that your provisional filing can help you better when the time comes.
Caution: some inventors skip this step. If you do, you can still end up with a filed provisional patent application, but one that might not help you fully at a time of crisis in the future.
Engage a patent attorney, and confirm with them that confidentiality has been established.
Then show them this new document and tell them your purposes; ask them whether too much detail has been included in your answers (more detail often helps, but too much detail could be disadvantageous); develop together your eventual filing plans (filing in which countries, etc.); and ask them to finalize this document for your purposes to be met. All this will go faster, and more economically for you, because you will have started this on your own.
The patent attorney may add elements, delete portions, rewrite portions, etc.
Back to Document Preparation Stage
-------------------------------------------------------------------------------------------------------------------
DP2) FORMAT YOUR SPECIFICATION DOCUMENT SO THAT THE USPTO WEBSITE WILL ACCEPT IT FOR E-FILING
You are preparing to upload your Specification Document via the USPTO website. That website has limitations as to what it accepts, so prepare as shown below. If you change your Specification Document before filing, you need to redo these steps.
a) Your Specification Document must be a *specially generated* .pdf. If not specially generated, you will receive an error message (that your document is not validated). The pdf will be accepted if generated in the following way:
i) Open your Specification Document in Microsoft Word or equivalent
ii) Choose: File > Print
iii) Choose: Printer> Adobe PDF
iv) Click on Printer Properties
v) In the Default Settings, use the down-arrow to choose PDF/X-1a:2001.
vi) Then click OK
vii) Then click Print: it will generate a pdf document of the type that will be accepted for e-filing by the USPTO, if the file name is proper.
b) Your Specification Document must further have a file name that the USPTO website will accept (else you will receive error messages). For that file name choose A-Z, 0-9 and underscores ( _ ) ", but no spaces, no hyphens, etc.
Back to Document Preparation Stage
-------------------------------------------------------------------------------------------------------------------
DP3) PREPARE THE COVER SHEET REQUIRED FOR THE FILING
For your filing, along with your Specification Document, you must provide data about your provisional patent application.
A standard way to provide this data is by using a form that is called a "Cover Sheet", and uploading it along with your Specification Document. There may be other ways of providing this data.
The best way to provide the Cover Sheet is to use the appropriate form that the USPTO provides, which has a number: SB/16. Helpfully, the USPTO provides this SB/16 form also as a pdf-fillable form.
DP3-1) Find the pdf-fillable Cover Sheet, and save a copy
You can download this form from our webpage. (Click "Open"; if a " Please wait..." message shows up for this fillable .pdf, put your cursor to the top right of the screen, which may cause the form to download anyway; if a small window titled "Downloading" persists for too long, click to cancel it and the downloaded document may show up...)
OR Find & download the Cover Sheet form SB/16 from the USPTO's website. Its formal name is: Provisional Application for Patent Cover Sheet. To find it, try any one of the following links:
Link 1; or paste in your browser this: https://www.uspto.gov/patent/patents-forms
Link 2; or paste in your browser this: https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
... and search for a form with number: SB/16.
DP3-2) Enter your data in the Cover Sheet
See also what a sample filled-in cover sheet would look like. (As you fill it in, notice that much of the formal information is already in your prepared Specification Document, and you can copy it from there!)
Recognize there are different questions for the names, even though they will sometimes have the same answer:
a) who is/are inventor(s), under the Inventor(s) field - occurs early, and
b) who is the person filing the application, a.k.a. the e-Filer. In the case of a provisional, the e-Filer can be the applicant. That is the person:
b)i) to whom the USPTO's correspondence be addressed to, under the Correspondence Address field; and
b)ii) who will be signing this application under the Signature field in the end.
As you fill in, check whether you owe your invention to an employer, perhaps under an Employment Agreement. If there is a University was there funding under a grant?
In the end, you should *sign electronically*, which means you may type your name between forward slashes. So, if your name is Abraham Lincoln, in this space type: /Abraham Lincoln/. (*Careful:*; omitting even one of these slashes may invalidate or complicate your filing.)
Enter today's date.
DP3-2) Enter your data in the Cover Sheet
If you have filled the pdf-fillable form of the USPTO for the Cover Sheet, then it should be acceptable for uploading. If you have created a custom letter or something, ensure it is formatted as in DP2 above.
Back to Document Preparation Stage
-------------------------------------------------------------------------------------------------------------------
DP4) HAVE YOUR PERSONAL PATENT ORGANIZER (PPO) AVAILABLE DURING THE FILING
During the uploading, you will be fleetingly given data about your filing. After more steps, you will be given the same data in a receipt, assuming there are no glitches.
You can be prepared to capture the data when it is given fleetingly, on your Personal Patent Organizer (PPO). (If you have not started a PPO, consider starting one now (template: MS Word doc version, or MS Excel version). If this link does not work, paste in your browser the following: http://www.patent-ready.com/downloads/Personal-Patent-Organizer-Free-Sample.doc
Note, you may use a single PPO for multiple inventions and filings.
In the PPO, ensure you have created a record for this provisional filing. In that record, scroll down to where it says:
STAGE: PROVISIONAL PATENT APPLICATION (PPA) - FILING
Below that is where our screen-by-screen powerpoint will guide you to capture the data that the USPTO will give you.
Back to Document Preparation Stage
-------------------------------------------------------------------------------------------------------------------
DP5) DETERMINE THE AMOUNT OF THE FILING FEE YOU WILL HAVE TO PAY TO THE USPTO
Along with your provisional filing, you will have to pay a filing fee. The amount of the fee can be found by searching online: "USPTO fees", then "USPTO Fee Schedule", then "Patent Fees", then Provisional application filing fee, under 37 CFR 1.16(d).
Among the shown filing fees, find the one that is shown as "Regular". In 2017, this fee is $260, but check again for updates.
This "Regular" fee assumes no discounts. If you claim no discount and pay the regular fee, then there is no problem. (Later, however, you cannot request a refund for a discount that you did not claim.)
Instead of paying this "Regular" fee, you may qualify for, and claim, a first discount or even second discount from the regular fee. (It is illegal and wrong to claim a discount for which you did not qualify, just so that you can underpay. The law provides penalties for violators, including loss of patent rights.)
The first discount that you can possibly qualify for is by claiming that the patent rights will be owned by an entity that has Small Entity status. See on-line how much is the reduced Small Entity Fee - it is usually half of the Regular fee. There are many descriptions on the web as to who qualifies for this status. For example, search online: "USPTO qualify for small entity status". Independent inventors who have not (yet) promised any of their invention rights to anyone typically qualify for this discount. Many others also may qualify. We provide no further guidance as to this matter.
For claiming this Small Entity status, ensure you check the right box at the time of paying fees.
The second, deeper discount that you can possibly qualify for is the Micro Entity status. See on-line how much is the reduced Micro Entity Fee - it is usually a quarter of the Regular fee. There are many descriptions on the web as to who qualifies for this status.
For claiming this Micro Entity status, ensure you check the right box at the time of paying fees. Plus, every inventor has to qualify. Plus every inventor has to fill in and sign the additional form SB/15A of the Patent Office. These forms will be filed with the Patent Office, with the plan that they will ultimately become public record.
A reality is that, for practical reasons, many independent inventors are content with Small Entity status and do not bother to further claim Micro Entity Status, even though they might qualify for it. These reasons include:
a) all coinventors must be eligible, and
b) eligibility is sometimes burdensome to determine for some criteria, and
c) eligibility can be lost after a few applications anyway (do not be guided by the mere title of the form), and
d) the applicant needs to prepare one more form and sign it to claim the status for eligibility (and some things applicants fairly do not want to publicize about themselves), and
e) the additional savings of claiming the Micro Entity status instead of the Small Entity status is too small compared to the upcoming cost of drafting and filing the regular non-provisional patent application after that, having the application prosecuted,
f) etc.
We provide no further guidance as to this matter.
Back to Document Preparation Stage
-------------------------------------------------------------------------------------------------------------------
NOTE: Using this website or its materials does not create an attorney-client relationship with Patent Introductions, Inc., or its founder, or the employer of its founder. The materials of this website cannot be relied on as legal advice. If one wants legal advice, they should engage a patent attorney about the relevant facts & circumstances.