Provisional Patents -- 12 Step Program to Get Your Patent Pending

Inventors frequently and repeatedly ask us how to file a provisional application for a variety of reasons. It is important to understand the provisional patent specifications, as well as an inventors provisional patent rights.  Accordingly, our firm recommends that an inventor first conduct research on the filing provisional patent application process. Thereafter, we suggest the following process for preparing a patent application.

1.      Search to see if your invention already exists.  For example, conduct a key word search on Google patents.

2.      Review the USPTO tutorial that discusses conception to invention, patent searches and other background material.

3.      Fill out USPTO Form Cover Sheet for provisional patent.  Go to www.uspto.gov site, then search under Patents, go to Forms, and search on key word "provisional" to pull the Provisional Cover Sheet if the link does not work.  You'll need this.

4.      Describe the problem(s) that you are trying to solve.

5.      Describe why the current technology does not solve problem(s).

6.      Describe your solution.

7.      Describe how your solution might evolve in the future.  For example, could it include synthetic, natural, and/or other materials?  Could it include computer components? Could it be made in various shapes, various heights or various widths?  Remember your provisional will hold your place to file your non-provisional and you'll need to think about how your invention may improve, change, and how someone might copy

8.      Present at least one figure, show steps (like a recipe), pictures (if there is a prototype), video clips (if you have) or a hand sketch.

9.      Include a return receipt, postage paid postcard with number of pages of information, number of figures, check with payment to USPTO, and any other information you are including.  You want to include an itemized list of what you are mailing to USPTO on your prepaid, self addressed postcard. Typically, the USPTO will send the postcard back with a serial number before sending an Official Filing Receipt.  Please check the www.uspto.gov web site to calculate your fees.  For example, a small entity filing a provisional patent application in FY’09 must pay $110 USD.

10.  Make a copy of everything you are mailing to USPTO – cover sheet, description of problem, solution, possible evolutions of your solution, at least one figure (or other helpful media), return postcard, payment to the USPTO, DVDs or CDs with additional information, and anything else you are mailing to support your provisional patent application.

11.  Mail out the original materials via USPS Express Mail.  The filing date of the provisional patent application will be your mailing date.  Alternatively, you may be able to file your provisional patent application online via the EFS information system.  Please visit www.uspto.gov for a further explanation on how to use the EFS system.

12.  Docket or calendar the expiration of provisional patent application within 12 months of filing (or earlier if you have disclosed to others, published or sold).  Again, read & study the materials in the USPTO tutorial as well as other information about provisional patent applications.

Now that you've done that, you need to figure out how to take your idea or invention to the next level.  Think about joining a non-profit inventors forum.  You can search on www.uiausa.org for a forum in your state.  Alternate local inventor support groups can be found through local technology councils, but some of these members are in the business to make money, so keep that in mind too.

The content of this article is provided for informational purposes only. If you need legal assistance for an intellectual property issue, consult with Bambi Walters, or an Intellectual Property Lawyer near you to discuss the details of your case.
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