I try to be observant and to follow the trends, especially in my small specialized world where law, technology, and guns intersect. But I managed to underestimate the significance on what I think is the biggest thing to happen in United States Patent Law in my lifetime.
I’ve written before about how important it is to file to secure patent rights as quickly as possible, under the new First-to-File legal regime that Congress enacted about three years ago. I had no idea how significant this would turn out to be for inventors and innovative companies everywhere. I knew that my clients would need to file something ASAP on their new developments, usually before they had enough information to be sure whether the value of an invention really justified a substantial investment in the patent process.
I didn’t invent the Provisional Application for Patent, but I realized three years ago that it was the ideal vehicle to get the fast and affordable protection my clients all needed. So I decided to make it “almost free.” I tell new clients that the good news is that it’s cheap and will safely reserve their rights so they can promote the invention without fear. The bad news is that they get to do most of the work – more on that later.
How it works is that my client sends me the images and description of their invention, just like they usually would. And I review it to make sure it’s legally adequate for the informal Provisional standards (it just needs to prove that the darn thing was actually invented at this point). If it needs some beefing up, I’ll suggest adding a view, or an explanation that answers a question on my mind. Once it’s ready (“good enough” is good enough) my office formats it, and files it with the U.S. Patent and Trademark Office’s famously stubborn and non-intuitive online portal. We put it in our calendar system, and remind the client when it’s time (within a year) to file the full patent application. All that for a thousand bucks (at the time of publication) including the filing fee.
The best part is that the full cost of the provisional can be fully credited forward toward the price of the full patent application. So it really is “almost free.”
Another benefit is that I provide these provisional filers with special messages that do more than remind them of upcoming deadlines. In addition to getting this newsletter, they receive information and guidance that I hope actually makes their project more successful, more ready-for-prime-time, and more ready to invest in the full patent application. Because instead of hoping that things will go well for the provisional filing clients, I want to increase the odds that the right decision will be to go forward with a full patent application. This didn’t occur to me until I realized that provisionals were so big, and that most of my clients were taking advantage of them so often.
The information and guidance is especially valuable to the startups and individual inventors. What kinds of things do they need to know about developing drawings, prototypes, and finalizing engineering? What if they’re not ready when the deadline comes? Where can they get the contacts for the specialists they need? When is the time to approach industry players to make a critical relationship? How can they reach the right people? Might I have a contact they should know (I love to put together the right people to generate success for everyone – and my established clients don’t mind being the first to hear of a new development).
Before 2013 when the First-to-File law was enacted, I had never filed a single provisional application. Not one. I usually told clients that they made sense for the PhD candidate the day before the dissertation was to publish. But for everyone else, if you were going to hire me to write a provisional, you may as well have hired me to write the full patent application.
In 2013 and 2014 my clients’ provisional filings were trending along fairly stably. But late last year, they started taking off. And this year they have skyrocketed. When last month’s filing exceeded those of 2013 or 2014, I knew this was important.
The most important message from my mundane statistical tracking is that everyone (else?) is filing provisionals fast. So if you’re working in a competitive field where their might be dozens of inventors working on the same issue, you’d better file as fast as you can. It’s funny, but when a client calls me up and says it’s extremely urgent to file, and how fast can I do the job, I remind them that most of the homework is theirs, and I can review, advise and file in a flash, if needed, after they send drawings and a simple description of the invention.
In the past, I just told inventors not to worry too much because the write-up was so easy “even a caveman can do it.” Hence the nickname “Caveman Patent.” But lately I’ve realized that a typical inventor needs more than just confidence, so I developed a Provisional Drafting Guide. That forms the remainder of this issue, and might make this post one to archive for future reference. Some readers tell me they keep all the newsletter back issues in a ring binder, but the rest of you might think about printing and keeping this one.
THE QUICK AND EASY WAY
Gather up all the images (drawings, sketches, CAD, snapshots) it takes to show every detail of your invention, how it is made, and how it works.
Write up what each image shows. Name each part, and explain how they connect and operate together. Don’t worry about format, grammar, or making it sound like a patent. Just explain it like you would to anybody.
Send it to us at firstname.lastname@example.org, and we’ll tell you if it needs any additions or changes. That’s it!
If you’re in a rush to get the application filed, be sure you’ve sent us the signed Representation Agreement we need to get going.
You may want to ask us to send you an invoice for the flat fee for the provisional filing, so that doesn’t delay the filing.
THE ADVANCED WAY
Seriously, everything you really need is listed above, so you can stop here unless you’re the type who likes to get into greater detail than needed.
The Drawings (Images, Sketches, Photos, CAD)
It’s probably best to prepare and assemble your images first. Images are even more important than the write-up, which will be much easier once you have the images ready.
Try to include LOTS of images, as many as it takes to show everything. And then maybe some more. There’s no extra charge for images. When in doubt, include it.
Don’t limit yourself to the images you already have on hand for other purposes. You’ll probably need to create more to tell the whole story to someone who has no idea what your invention is about.
Include one image showing the whole outline of the final product even if the invention is just a small part (show a whole rifle with a trigger invention). This helps provide context.
A mix of photos and drawings is fine.
It helps to show images of each part in a disassembled state. Exploded views are good for this.
Show a series of images for moving parts, like the cycling of an action. This can be like an animation, with each image showing a significant moment in the cycle. Don’t skimp on the number of images.
Optional: Label critical parts, elements and surfaces in the drawings with numbers. The write-up can refer to these like “the nose 22 of set screw 24 is pressed against the flat 26 on shaft 28”. You don’t need to number every element like formal drawings, but the most important ones should be identified.
Imagine you are creating an owner’s manual for your least knowledgeable customer, or a manufacturing guide for your newest employee. Illustrate all the steps of assembly.
Each image should include a label like “Figure 1”, “Figure 2”.
Paste one figure onto each page of a Word Document, when practical. Use <ctrl><Enter> to get page breaks after pasting or inserting each image.
A single Word document with all the images is ideal. The text may be in a separate Word doc, or may be in the same doc, but in its own section. Do not intersperse the drawings in the text as you might normally do, because the U.S. Patent and Trademark Office requires separate sections or separate documents.
PDF files are a borderline second choice, although the U.S. Patent and Trademark Office system is very fussy about how these are created, so we may need to request a Word doc anyway to convert to the files.
One document should contain all drawings – please don’t submit a bunch of separate jpg or other image files as email attachments, if you can possibly avoid it.
If you have any formatting challenges, we can probably assist.
Don’t worry about the drawings being pretty, as long as they’re clear in what they illustrate.
It’s OK if there’s some text and labels on the drawings, but this isn’t a substitute for the write-up.
Title of the invention
This can be as simple as “Firearm” or “Rifle Sight”, or as complex as “System for reducing cyclic rate in auto-loading rifle.” The goal is simply to help you and us identify this invention compared to your past and future inventions.
Full name, city and state of residence of each inventor
An inventor is someone who contributed to coming up with the concept that you think is new, not just someone who was part of the team, like a draftsman.
Don’t include any personal information you won’t want public. Leave out your street address and phone number, because this will likely become a public document.
If multiple inventors are listed we will follow your order. There is no legal significance, but the first inventor will be listed more prominently on certain publications and communications.
This is not mandatory, but can be helpful to the attorney reviewing your draft.
In normal language, give an idea of the problem the invention solves, and maybe mention other solutions that your invention improves upon. Tell the story just like if you were explaining it to a friend or your patent attorney.
Example: “Suppressors are useful for reducing noise and protecting hearing. However, they sometimes come loose, and this can lead to damage or injury. Past efforts to solve this problem have used… These efforts suffer from the disadvantages of being (expensive, inconvenient, heavy, bulky, hard to make…).”
Description of the drawings (the essential main write-up)
DETAILS ARE GOOD. Details here never hurt you, and always help. Even dimensions and materials can only help your case, and do not restrict or narrow your rights in any way. When in doubt, include it. Mention all the other ideas, alternatives, variations, and crazy uses you think of. If you don’t include it, that means someone who sees your invention may be able to patent the crazy variation that occurs to them and block you from expanding.
Go through each drawing, and explain what it shows.
Identify each component shown, and any important parts or surfaces of each component.
It’s not required, but numbering the components and parts in the drawings and in the description can be helpful, especially for the critical ones that are the key to what makes your invention new.
Describe the characteristics of each component that are significant to your invention. (e.g. threaded, aluminum, cast, flexible)
For each component, answer as many of these questions as it takes to explain things:
What is it called?
What is its form or shape?
What are its features, parts, characteristics, finish?
What is it made of?
What is its function?
What does it interact with?
How does it interact? (pulls, pushes, rubs, slides)
What different positions/conditions/range of motion does it have? (e.g. a rifle bolt may have a forward battery position, a rearward recoil position, and an intermediate cartridge-stripping position).
Explain how each component relates to other components.
Tip: Start with the biggest part, such as a frame.
Tip: Describe the assembly process in detailed step by step instructions as each other part is added.
Describe the relationships between components: (e.g. attached, secured, removable, threaded, engaged, adhered, sliding, rotating, spaced-apart, adjacent, electrically connected, connected for fluid flow)
Sequence of operation.
Describe the “scene” in each step in the operation. Go back and tell the relationships between each of the parts at that moment.
Example: “Figure 3 shows the trigger group at the moment before the trigger has been pulled. The trigger lever has moved back from the rest position partway to take up the slack, the hammer hook is still engaged to the sear, but the hammer has not yet been released. The bolt is in battery…”
Don’t worry about it looking or sounding like a patent, and don’t try to sound like a lawyer. Just write like you’re explaining the idea to an interested friend. You are creating a technical description, not a patent.
If you know what patent claims are, you don’t need them.
Details are essential.
Don’t worry that adding details or specific examples will limit your rights.
It’s OK to say that the design is for an AR-15 or a Sig even if it could be applied to other products.
Details NEVER hurt you, and usually help.
Don’t leave out any secrets unless they’re unrelated to the invention.
Add in all the “what if” scenarios. You don’t have to illustrate them all, but it’s good to mention everything you think of.
List alternate materials.
List alternate designs (e.g. “while shown as square, the shaft could be hexagonal or any other polygon shape that avoids unwanted rotation”).
List alternative uses and applications.
List every “You could do this, you could do that” that comes to mind. It’s better that you secure the variation than someone who sees your invention thinking they thought of a way to improve it.
When in doubt, send an email with your question, or just trust that what you’re working on is probably perfectly suitable. Either way, we’ll review it and give you feedback if anything is needed – start writing, and we’ll be ready when you are!
PS: we can usually file within a week or even a few days of when we have everything.
PPS: send an email if you have any questions, or just send what you have and we’ll tell you how it looks.
Provisional Process and Strategy
The Provisional helps give you First-to-File status, so you can go out and test and market your idea, even sell product before deciding whether to make the investment in the full patent application
To get the benefit of the Provisional’s First-to-File filing date, we must file the full patent application within a year.
We’ll let you know at about 9 months about the upcoming deadline so there’s time to prepare the full application, and will provide a quote based on the complexity of the application.
We don’t normally do any patent searching before filing a Provisional – searching could cost more than the Provisional. However, we sometimes search before investing in the full patent application.
If a Provisional expires without filing a full patent application, rights aren’t lost as long as a new provisional or full patent application is filed within a year after the invention is first offered for sale. The only thing lost is the First-to-File insurance against someone else filing on a similar invention in the meantime, which may be only a small risk.
You can file another provisional on the same invention and start a fresh year running, if you think you won’t be ready to file a full patent application in time. But you can’t “extend” or renew a Provisional by filing a later one.
You may file multiple provisionals as an invention is developed, and incorporate them all into a single full patent application.
We can include multiple inventions in a single provisional, although they may need to be filed as separate full patent applications later on.