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Inventing New Products/Inventions/DIY Provisional Patent Application

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QUESTION: Hi Penny,

I came up with a unique little product idea so I decided that filing a provisional patent application would be a good idea at this state especially in relation to the new law change of "first come aka first to file" passage. I have looked at filed patents through the USTPO and Google Patent to get a good understanding.So what I would like to know in explaining the i.e. problem and solution say my product uses several different type of sensors i.e. light , motion, can I just say the product uses several sensors(s) and explain what those sensors do, or do I have to define each sensor by name and define what each one does? Also my product has both electrical function and mechanical function, so in my provisional application do I need to define the "method" of function for the product and also define "device" in the claims area as well? How vague can I be in the provisional application? I read one should be vague to have far reaching implications for the patent filing but how vague can one be? Last question does the provisional need to be expansive i.e. 7-8 pages or can it be short and sweet and just be broken down into bullet points per say?

ANSWER: Hello Mike,

You wrote:
I came up with a unique little product idea so I decided that filing a provisional patent application would be a good idea at this state especially in relation to the new law change of "first come aka first to file" passage.

a)  First to File more applies, in my personal opinion, to Non Provisional filings than provisional app filings. After all, one is filing only an Application not a document that will receive "Inspection and Review" by PTO personnel such as a non provisional. The letter you send with the provisional will be opened and stamped, given a serial number and that's it. You could write the word HELLO and as long as a check is enclosed it will be filed as a provisonal assuming accompanying PTO forms are enclosed with a check. Your data won't be read, merely stamped and filed.   

b) If it’s only an idea at this point, it would seem to me one should first attempt to reduce it to practice (build a proto and test it) to see if it will not only work in reality; be priced both in terms of mfging, wholesale and retail ranges so as to be economically viable; and it be determined bssed on the numbers of players contracts already secured - if there is space for it and if so, what's it going to cost to produce and to roll out.

2. I have looked at filed patents through the USTPO and Google Patent to get a good understanding. So what I would like to know in explaining the i.e. problem and solution say my product uses several different type of sensors i.e. light , motion, can I just say the product uses several sensors(s) and explain what those sensors do, or do I have to define each sensor by name and define what each one does?

a) Even though a Provisional will NOT be Inspected and Reviewed by the PTO, if one intends to rely on what is stated and if some later form of a non-Provisional dispute arises, the “File Wrapper” can be ordered by anyone so they can view PTO responses, phone calls with Examiners and anything filed or denied in the former provisional(s) filing. So, from Day 1 (provisional) one has to be cognizant on what one is claiming or failes to claim (didn’t state) hence one closely knows and follows PTO guidelines along with the CFRs. One can submit many provisionals, as one develops and tests prototypes each may require submitting a new provisional if novel, unobvious and useful data is found or if data invalidates earlier conclusions. However, the one-year grace period one has after filing a provisional may not apply if one promoted, sold, advertised, or some how violated any of the grace period rules. The bottom line is that there should be a sufficiency of disclosure and enablement as the law requires. However, later provisionals cannot claim priority to earlier provisionals so it’s possible it may cost one later now the new FTF law is in effect. Many patent professionals and agents are willing to help and some give inventors a free  fifteen or thirty minute interview to aid understanding and ramifications of the new law.

3. Also my product has both electrical function and mechanical function, so in my provisional application do I need to define the "method" of function for the product and also define "device" in the claims area as well?

a) You might review the Enablement law in 35 USC 112 which states what one’s disclosure to the PTO should contain. You might also look at it from the PTO side by reading how a patent examiner (after a non provisional is filed) might view the Enablement rule: Section 2164, of the Manual of Patent Examining Procedure. In other words what one’s Specification should contain. Since there are different lines of reasoning about what it means, it might be circumspect to review them.

b) No claims are required when submitting a provisional. It is merely an Application and NOT a formal NON Provisional writing which will be Inspected and Reviewed. Moreover, I would suggest if you want a very specific answer as to defining the “method” and “device” you should seek legal advice from a registered patent atty or agent. .

4. How vague can I be in the provisional application? I read one should be vague to have far reaching implications for the patent filing but how vague can one be?

a) Whomever said to be “vague” about anything especially when circumnavigating in the area of patent law, they need to have their head examined. As I mentioned earlier, there are specific requirements about what one must divulge and if it’s discovered one withheld data that should have been divulged, one could risk losing any later patent that issues for willfully withholding data.  

5. Last question does the provisional need to be expansive i.e. 7-8 pages or can it be short and sweet and just be broken down into bullet points per say?

a) I’m beginning to sound, to myself, like a robot: there are specific rules about what must be divulged irrespective of how many pages that would take. If the numbers of pages exceed the free amount given the PTO, there would be an extra fee – when filing for a non provisional. But you’ve not been asking about non provisional – only a provisional application. .

Regards
Penny Ballou


---------- FOLLOW-UP ----------

QUESTION: Hi Penny,

Thanks for the response ok alot of what you said makes sense. Just a clarification I have develop the product for over two years with designers and engineers and we have a proof of concept. So what I would like to know I want to obtain a filing date and be able to market the sale of the product using the "patent pending" tag. So I want to file an application I read up what LegalZoom.com had, basically they said I can do the basics explain the problem to be solved, the solution i.e. invention, describe the invention with illustrative figures, and how to use the invention. it says for the filing date I do not have to include "claims" that can be done once I have the official patent file, is this correct? So basically I just need to explain the problem, the invention solution, description, how to use and illustrations am I understanding this correctly? Should I follow this format that I see in patent filings excluding the "claims" section?

Field of Invention
Background
Summary of Invention
Description of Drawings
Detailed Description of the Preferred Embodiment's

No claims in the phase of the process, correct?

Answer
---------- FOLLOW-UP ----------

1. So what I would like to know I want to obtain a filing date and be able to market the sale of the product using the "patent pending" tag.

a) A filed Provisional received at the patent office or via Express Mail in a US Post Office would put whatever you are disclosing in "patent pending" for a year. BEFORE that year ends you would visit a patent attorney or a patent agent so they can draft a more formal Non Provisional which will require legal Claims.

b) Have Legal Zoom provide you a written email or whatever indicating you must have Claims when only a Provisional is drafted.

c) What I'm reading from what you wrote is a possible confusion between filing either a Provisional Application for Patent vs the more formal "Non-Provisional (Utility) Application for Patent". Two different animals. I think you'll find if all you want to submit is a Provisional, which you can write on your own, no Claims are required though some attorneys are of the opinion one "broad" claim is better than none in a Provisional.

2. So I want to file an application I read up what LegalZoom.com had, basically they said I can do the basics explain the problem to be solved, the solution i.e. invention, describe the invention with illustrative figures, and how to use the invention.

a) Why on earth would you pay them? It's called garbage in/garbage out. If you are not sufficiently competant or know your invention well - frankly it would surprise me. All you are doing with them and any of these types of outfits is "fill in the blanks" and what comes out is what you put in their blanks. It's lunacy!

3. it says for the filing date I do not have to include "claims" that can be done once I have the official patent file, is this correct?

a) Yes and No. As mentioned above, Claims accompany formal Non Provisionals usually drafted by a patent attorney or patent agent so they are NOT required however, many a patent attorney or agent will advise you to have some. In fact, if one goes to attorney to have a Provisional written the same format as used to write a Non-Provisinal will be followed by them including claims ----and they charge for it too generally around $2,500. In other words, it is my opinion some of them are of the opinion inventors run out of money, don't have it, or can't confront paying them the big bucks when the year is close to running out after filing a Provisinal so they want their monies up front as they figure the inventor won't be back. It's part of a client risk assessment.

4. So basically I just need to explain the problem, the invention solution, description, how to use and illustrations am I understanding this correctly? Should I follow this format that I see in patent filings excluding the "claims" section?

a) You could. though it reads to me like you're being somewhat "rote." You really should follow what the PTO says in the two numerical refrences I gave you. You should also understand "enablement" and "best mode". I can't give you legal advice I can only advise you to read the published PTO materials as I have done already.

You should have the basics in it so that when a lawyer or agent goes to convert the Provisional over into a formal Non-Provisional he is not having to add an essential element or two not included in the Provisional as it would get the Non-Provisional's filing date and not be dated back to the Provisional since it wasn't included in it.

ALL THE BELOW ARE SOME PARTS OF THE FORMAT FOR A FORMAL NON-PROVISIONAL THERE IS NO "CUT IN STONE" WRITEUP BY THE PTO FOR A PROVISIONAL SINCE IT'S MERELY AN APPLICATION.

Field of Invention
Background
Summary of Invention
Description of Drawings
Detailed Description of the Preferred Embodiment's

No claims in the phase of the process, correct?
Yes!!! and NO!!! depending on which lawyer thinks the PTO made a mistake not including them in Provisionals.

Links to read:
http://www.uspto.gov/patents/resources/types/provapp.jsp

http://www.neustel.com/provisionalfaq.asp

http://www.ipwatchdog.com/2013/09/14/the-benefits-of-a-provisional-patent-applic


Regards,
Penny  

Inventing New Products/Inventions

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Penny Ballou

Expertise

The Invention Process; Royalties; Licensing Inventions/Products; Pricing; Direct to Market; Marketing/Promotions; Patent Searching; DIY patent writing; Types of patents/costs/how to's; Funding (grants and Angel investors); Prototyping; Off-Shore sourcing.

Experience

I am founder of an inventors group; Advisory Board President of www.inventored.org; former Licensing Executive Society member; researcher for www.piausa.org and a consultant; plus moderate and contribute to several online inventor discussion groups.

Publications
Enter my email address into any search engine to find them.

Education/Credentials
Invention development: well-studied and applied in all aspects of the process and an inventor myself with one invention in patent pending and others ramping up. Lived and attended schools in Mainland China and the UK.

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