Don’t Fall Prey to False Security in a Hasty Provisional Patent Application

The Legend of Eos and Provisional Patent Applications

The Legend of Tithonus and Eos is an apt metaphor for the situation that inventor’s find themselves in when they recklessly pursue a Provisional Patent Application.

As the Legend goes, Eos, the goddess of the dawn, fell in love with Tithonus, a handsome mortal.  Eos, realizing that her beloved Tithonus was destined to age and die, begged Zeus to grant Tithonus immortal life.  Zeus granted Eos’s wish – literally.  He made Tithonus immortal, but (because Eos didn’t think to ask) he did not grant Tithonus eternal youth.  As Tithonus aged, he became increasingly debilitated and demented.  Eos, needless to say, regretted her lack of precision and foresight as crazy old Tithonus babbled around behind her for an eternity until, fed up, she transformed him into a cricket.

We don’t want you to suffer Eos’s fate!

Without careful consideration, foresight, and precision, your Provisional Patent Application may haunt you like a cranky old man and your regret might keep you up at night like an undeterrable cricket.

Your patent application, regardless of whether you file provisionally or non-provisionally, must comply with all of the requirements of the patent statute – it must provide a written description that fully enables its claims.

The Provisional Patent Application secures a filing date so the inventor can rely on the date during prosecution of a non-provisional patent application.  The Provisional Patent Application stops the clock on the references that an Examiner can use against the non-provisional patent application during patent prosecution.  Those references may include the inventor’s own activities, such as inventor disclosures, sales, and offers to sale.

Often, a novel invention is the foundation of value on which a startup is built.  It can be the startup’s most valuable asset.  The inventor who exercises precision and foresight during the preparation of the Provisional Patent Application will ensure a solid foundation.  The subtleties of preparing and prosecuting a patent application are too numerous to describe in a blog post.

However, here are a few basic guidelines for a Provisional Patent Application:

1.  Carefully and Fully Describe Your Invention

In your Provisional Patent Application, begin with your basic invention.  Let’s go back to the self-cleaning cat litter box.  Basic invention: self-cleaning cat litter box.  Next describe what that invention might look like as a product.  For example, a litter box with a mechanical arm that pushes a rake through the litter to capture and remove waste.  Next, go a step further, describe other variations of the self-cleaning litter box (you never know, maybe the realities of manufacturing will force you to produce an alternative).  For example, a mechanical arm that drags a screen through the litter to capture and remove waste.  Maybe a centrifugal motion device that spins the clean litter to the edge of the box while the waste drops out through a trap door.  Obviously, be realistic, but describe the other methods you might want to employ to accomplish the same end.

Try to come up with three good alternate methods.

2.  Be the Enemy, Consider How Your Competitors Might Produce Your Invention

Often a startup knows its competitors.  It is important in patent application drafting to consider how the competitor will go about manufacturing or replicating the invention.

If the Provisional Patent Application only describes the basic invention, or the product that the inventor anticipates marketing, it may not be sufficient to support the filing date of broad claims or claims to product variations. The patent case law abounds with examples of patents that were limited in scope – and worse – declared invalid, because the underlying Provisional Patent Application did not fully enable the ultimate patent claims.

3.  Include Claims in Your Provisional Patent Application

Claims are statements included in a patent application that describe the structure of an invention in precise and exact terms.  The USPTO does not require claims in a Provisional Patent Application.  However, there are a few reasons why claims might insure a tighter Provisional Patent Application.

The first reason is that the claims often form an “outline” of the invention.  Yes – the old grade school adage comes back – outline before you write!

I sometimes think of the claims as a poem.  Claims should distinctly describe your invention in a paucity of powerful words.  Just like with poems, we humans often do not completely “get” what the author of the poem wishes to communicate.  That is where the specification comes in.  The specification should fully inform the reader what each word used in the claim means, how they fit together and interact, and how to make it work! This is why claims are a good starting place or outline.  The writer may forget what needs to be said without the guidance of the claims.

The second reason is that the claims help the patent owner prove that it was in possession of an invention at the time of filing!

Conclusion

Provisional Patent Applications are important to protecting the value of precious innovations.  There is a lot of misinformation about the Provisional Patent Application that leads startup inventors astray.  The savvy startup will carefully and diligently prepare for filing what might be the most important document in its asset pool.

Whether self-prepared or prepared by an attorney, the Provisional Patent Application should fully describe the invention, the ultimate product, at least one alternative variation on the product, and should also include claims.  Claims are tricky to prepare and often increase the ultimate cost of the application, however, the increased cost will be worth it when the company ultimately licenses, sells, or defends the issued patent in court.

For an explanation of a Provisional Patent Application and a Non-Provisional Patent Application See Heather’s post Keep Your Story Straight:  Five Important Patent Terms