Drafting a Provisional

Application
Sue A. Purvis
Innovation and Outreach Coordinator
New York City Region

Outline

Why file a Provisional Application?

Attributes of a well-written application
Legal Requirements
Provisional Application Drafting Ideas/Tips
Provisional Applications
Filing Requirements
Strategic Uses/Basis for Priority
Pros and Cons

Provisional Utility Applications

(MPEP 201.04(b))
Low cost submission to establish filing date
$130 small entity
$65 micro entity

Micro entity certifies that he/she:

Qualifies as a small entity (less than 500 employees);
Has not been named as an inventor on more than 4 previously filed patent
applications;
Did not, in calendar year preceding the calendar year in which the applicable
fee is paid, have a gross income exceeding 3 times median household
income; and
Has not assigned, granted, or conveyed (and is not under obligation to do so)
a license or other ownership interest in the application concerned to an entity
that, in calendar year preceding the calendar year in which applicable fee is
paid, had a gross income exceeding 3 times the median household income.

Provisional Utility Applications

(MPEP 201.04(b))

Automatic abandonment after one year

Inventor given time to investigate market
potential / make improvements
be careful too much change could result in
loss of provisional filing date
No patents rightsnot examined
Term patent pending allowed to be applied
Inventors may use term during time period after patent
application (Provisional, Non-Provisional, Design, or
Plant) has been filed, but before patent has issued
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Provisional Utility Applications

Claims and Oath/Declaration are not
required
Items required:
Specification in compliance with 35 USC 112,
Paragraph (a) (enabled, written description, best
mode)
Drawings (needed in almost all cases)
Filing fees
Cover Sheet identifying Provisional Application
USPTO Received 163,040 Provisional Applications in FY 2012
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Benefit of Provisional Filing Date

Non-Provisional Utility and Plant Applications can
claim the benefit of Provisional Application filing date
if Non-Provisional Application was filed within 12
months of the Provisional Application filing date
No Provisional Design Applications
A non-provisional application (regular) claiming the
benefit of the provisional application must be
adequately supported by the disclosure filed in the
provisional application
Note: A Non-Provisional Application can be filed without
filing a Provisional Application

The well-written patent application

What attributes should a well-written patent
application have?
Describe invention so one of ordinary skill can
understand (make and use)
Disclose the best mode
Provide support for claims of unknown scope
Claims narrow enough to avoid prior art
Claims broad enough to hamper design around

What is a claim?
35 U.S.C. 112: Specification shall conclude with one or more
claims particularly pointing out and distinctly claiming subject
matter which applicant regards as his invention.
Parts of a claim . . . where nature of case admits, as in the
case of an improvement, any independent claim should
contain in the following order: 37 C.F.R. 1.75 (e)
Preamble
Transitional (Linking) Phrase
Body

Order of claims - least restrictive claim should be presented as

claim no. 1, and all dependent claims should be grouped
together with claim or claims to which they refer to the extent
practicable. 37 C.F.R. 1.75 (g).
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What is a claim?
Defines a property right
1. Apparatus for shaking articles, the apparatus
comprising:
(a) a container for the articles;
(b) a base;
(c) a plurality of parallel legs, each leg being connected
at one end to the container and at the other end to the
base to support the container for oscillating movement
with respect to the base; and
(d) means for oscillating the container on the legs to
shake the articles.
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Diagram of the Claim

Oscillating
Means

Container

Legs
Base

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Another Diagram of the Claim

Base

Legs

Container

Oscillating
Means

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Substantive Legal Requirements

35 USC 101 Utility, Statutory
Subject Matter
35 USC 112 (a) Enablement,
written description, and best mode
35 USC 112 (b) Definiteness

35 USC 112, 2nd Definiteness

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Substantive Legal Requirements

35 U.S.C. 112 (b)
Definiteness requirement
Claims evaluated in light of

Content of the application

Prior art

Interpretation given by those of ordinary skill

Special terms

Define in the specification/ be your own lexicographer

35 U.S.C. 102

Novel

35 U.S.C. 103

Nonobvious

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Parts of an Application

Title
Abstract
Drawings
Background of the Invention
Summary of the Disclosure
Brief Description of the Drawings
Detailed Description of the Invention
Claims
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Drafting Ideas
Tell the Story of the Invention
Patent application is a means to
communicate and persuade
The cast of characters
The prior art
Likely users of the technology
The inventor(s)

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The Story of the Invention

Set the stage
Background of the invention

Unfulfilled need
Failures of others
Problems with prior art
Serious nature of problem

But what you say may be used against you

This is prior art and can be used as such by the examiner as
such during prosecution

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The Story of the Invention

The inventor saves the day
Summary of the invention
Tie to Background (problem/solution)
Broad characterization of benefits (e.g.,
functional)
Recast independent claims Support for
claimed invention

Detailed description
Refer to advantages of the described features
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Application Drafting
Define Special Claim Terms
Avoid 35 USC 112(b) issues
claims must set forth the subject matter that applicants regard as
their invention; and
claims must particularly point out and distinctly define the metes
and bounds of the subject matter that will be protected by the
patent grant.

Why is this important even in a Provisional?

Be explicit (As used herein, term X means Y)

Claim interpretation
Applicants definition controls
Choose your words wisely
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Application Drafting
Avoid narrow characterizations
Overly narrow characterizations of what constitutes
the invention can be used to limit the scope of
patented claims:
this invention relates to , a made pursuant to the
teachings of the present invention
coupled with a lack of description of alternative
embodiments

Solutions
Use alternative language such as: "certain embodiments
of the present invention include, but are not limited to . . .
Describe as many alternative features and embodiments
as possible

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Application Drafting
Avoid Dedication to the Public
Problem Disclosed but unclaimed subject
matter is dedicated to the public
Solution Draft a comprehensive set of
claims (only needed for non-provisional
application)

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Application Drafting
Duty to Disclose
37 C.F.R. 1.56 -Duty of candor and good
faith
Misrepresentations, misleading statements,
and omissions violate this duty.
Disclose relevant prior art

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Provisional Applications
35 U.S.C. 111(b)
Act as a placeholder
Never substantively examined
Automatically lapse one year from the filing date
Must file a non-provisional within the year to get
priority date

Once filed, applicants can use patent pending

Can not claim priority from another application
Patent term measured from filing date of
subsequent non-provisional application
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Provisional Applications
Filing Date Requirements
Required
A specification
A drawing (if required to
understand the invention)
A cover sheet or cover
letter
Fee

Not Required
A claim
An oath or declaration
(37 C.F.R. 1.63)
An IDS

The provisional application must be made in the name(s) of all of the

inventor(s). It can be filed up to one year following the date of first sale, offer
for sale, public use, or publication of the invention. (These pre-filing
disclosures, although protected in the United States, may preclude patenting
in foreign countries.)
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Provisional Applications
As Basis for Priority
Domestic Priority
For non-provisional applications

Foreign Priority
Foreign Applications can claim benefit of
Provisional Application filing date if filed within
12 months of the Provisional filing date under
Paris Convention Article 4
Patent Cooperation Treaty (PCT) can claim
priority to US Provisional Application
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Provisional Applications
Domestic Priority
Requirements
Non-provisional application (35 U.S.C. 111(a))
Within 12 months of the filing date of the
provisional
At least one common inventor
Reference to the provisional application must be
made in non-provisional
Provisional application must satisfy 112(a) for the
invention claimed in the subsequent nonprovisional application
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Provisional Application
Domestic Priority Example
New Railhead Manufacturing, LLC v. Vermeer Mfg. Co.,
298 F.3d 1290 (Fed. Cir. 2002)
Patent discloses a new drill bit for drilling rock formations
January 1996

January 1997

Spring/Summer
Sale of drill bit

2/97 File
Provisional

1 year grace period

from filing date

January 1998

11/97 File Utility

Application claiming
Priority to Provisional

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Domestic Priority Example Cont

Court found disclosure of provisional application
did not meet written description requirement
with respect to subsequently claimed drill bit
Applicant not entitled to priority back to filing
date of provisional application (limited to 11/97
filing date)
Sales occurred more than one year prior to the
11/97 date, thus patent invalid under 35 U.S.C.
102(b)
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Provisional Applications
Advantages & Disadvantages
Advantages
Simple and inexpensive to
file
No declaration, claims or
an IDS need
Specification not
examined, and can be
informal (PowerPoint
presentations, manuals,
lab notebook entries, etc.)

Disadvantages
Must satisfy requirements
of 35 U.S.C. 112(a) with
respect to a later-claimed
invention in order to
provide any benefit of
priority

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Provisional Applications
Advantages & Disadvantages
Disadvantages
Advantages
Utility application can
The various claims of laterclaim priority to multiple
filed utility application may
provisional applications
have different priority
Multiple provisional
dates based on multiple
applications can be filed in
provisional application
one-year time period
filing dates, which must be
measured from earliestevaluated and considered
filed provisional application
in order to capture
changes in rapidly
evolving technologies
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Provisional Applications
Advantages & Disadvantages
Advantages

Disadvantages
Patent term of a regular utility Examination is delayed up
patent that claims priority to a
to one year
provisional application relies
Content must be evaluated
on the non-provisional filing
for adequacy of disclosure
date
to support the claim for
Do not have to be in English.
priority
Thus, copies of foreign
priority documents may be
filed as provisional U.S.
applications

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Conclusion
Application drafting
Patent application as a vehicle to communicate and
persuade
Substantive and formal legal requirements
Tell the story of invention

Provisional applications
Relatively simple and inexpensive
Without quality disclosure loss of priority and
possible loss of patent rights loom

USPTO Cover Sheet http://www.uspto.gov/forms/sb0016.pdf

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What is prior art?

A disclosure (your own, or a third party
disclosure) in the public domain that either
discloses your claimed invention, or renders it
obvious
Can be, the same as a publication, i.e.:

A journal article
A meeting abstract
A poster or presentation at a meeting
A sequence in a database
A published patent application or issued patent
Use or sale of the invention
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Why should you care about prior art?

To see if any Prior Art related to your
invention exists
Helps determine if you want to file an
application
Helps to determine the appropriate claim
scope when drafting claims
Now lets learn to search for prior art
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Search Strategy From most

specific to most general
Start your search from a known piece of information
a patent number, inventor name, company or
university. Look at their inventions that are similar to
yours, and the classifications for those inventions
Search the patent databases using likely keywords or
combinations, and examine the resulting hits for
similarity; then look at the classifications on the most
similar patents
Use the Patent Classification tools
http://www.uspto.gov/patents/resources/classification/index.jsp

Searching US Patents
Three Types of Searches at USPTO.gov
Quick
Advanced
Patent Number or Application Number

Two Different Databases to Search

Issued patents
Published Applications

Websites
USPTO - http://patft.uspto.gov/
Google - https://www.google.com/?tbm=pts
Espacenet - http://worldwide.espacenet.com/?locale=en_EP

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Patent Classification System

USPC and CPC
Schedule creates an organizational
framework for patents which allows for
easier searching
Schedule is a road map to determine the
best places to search for prior art

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Text Search vs. Subclass Search

Text searching is very useful for some
aspects of finding certain information.
Subclass searching should always be
performed because it shows you all
relevant structures.

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Advantages of Subclass Searching

Finds related structures
Do not need to know specific search terms
Discover elements previously unknown to the
Examiner
Can search via figures (e.g., mechanical
features)
Sometimes difficult to express search needs
accurately in textual terms

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Both Methods are Important

Subclass searching is excellent for finding
relationships between elements/structures/
method steps, and for finding related
elements, structures or steps. Also great
for showing the advancement of the
technology.
Text searching is excellent for finding
specific elements/structures/methods that
can be articulated well in a text query.
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Quick Search on USPTO Site

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Patent Classification

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Patent Classification Schedule

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Finding Proper Class/Subclass

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Review Class Schedule / Definitions

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Performing a Text Search

Search Statements:
Air quality or sensor
Search returns 634,000+ patents

Air quality and sensor

Search returns 2163 patents

Air quality and sensor and pollution and

indoor
Search returns 131 patents

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Performing a Text Search

Scan Titles of the Patents
Note Class/Subclass of the Pertinent
Patents
Consult Patent Class Definitions pertinent
Class/Subclasses
Do Additional Word Searching in the
Pertinent Class/Subclasses Identified
Check Cited References of Pertinent
Patents Found
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Text Searching Tips

Constantly Evaluate Your Results
Remember: Text Searching is an Iterative
Process
Start with a Big Net and Refine Your
Results Step-by-Step

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Resources
http://www.google.com/advanced_patent_search
Google Patent Search
http://patft.uspto.gov/
Searching US patents
http://www.patentlens.net/
Patent Lens
http://worldwide.espacenet.com/advancedSearch?locale=en_EP
European patent database

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THANK YOU
[email protected]
www.uspto.gov/cornell