How to File a USA Provisional Patent Application Online

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Once familiar with the steps and requirements of filing a USA provisional patent application, the act of filing is quick. A few minutes and your application number is in hand.  For those unfamiliar with filing at the United States Patent and Trademark Office (USPTO) the filing process provokes frustration.

This is a “familiarization” post.

The basics for provisional patent applications are explained by the patent office: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

The requirements are:

  • the application as a provisional application for patent;
  • the name(s) of all inventors;
  • inventor residence(s);
  • title of the invention;
  • name and registration number of attorney or agent and docket number (if applicable);
  • correspondence address; and
  • any U.S. Government agency that has a property interest in the application.

There is more.  Before the application is started online https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered  have these three documents ready for submission:

  1. Drawings
  2. Specifications
  3. SB 16 Cover page.

Download the cover page http://www.uspto.gov/sites/default/files/forms/ProvisionalSB.pdf

The cover page does not work properly in Chrome and other modern browsers.  A message appears.

SB16 Message from Chrome Browser

SB16 Message from Chrome Browser

Download the file and open it with the free Adobe reader – it is a big file – 781 Megs.  https://get.adobe.com/reader/download/ Try a different PDF program first. Be sure to uncheck the box for the free stuff.  Some think McAfee acts like malware, slowing down the computer and offering annoying messages.

Free Adobe Reader Download

Free Adobe Reader Download

The cover page becomes fillable.

Clip of SB16 Cover page for Provisional Patent Application

Clip of SB16 Cover page for Provisional Patent Application

Fill it out and save it.  It is needed soon.

Drawings

For the first (or second) time filer, the drawing requirements are difficult to meet.  Layers, embedded fonts, and other requirements make it simpler to print out the drawings and re-scan them as 300 DPI images.  If you don’t have the ability to print, the next option is to download the “joboptions” file and install it.  It is easy to install.  Double click and it installs itself. Or, you can follow the instructions from the Patent Office.

Link to document guidelines: http://www.uspto.gov/sites/default/files/ebc/portal/efs/pdf-guidelines.pdf

Link to the file that automatically configures your Adobe printer: http://www.uspto.gov/sites/default/files/ebc/portal/efs/uspto.joboptions

Link to the instructions for using the joboptions file. http://www.uspto.gov/sites/default/files/ebc/portal/efs/joboptions.pdf

Be sure your file name is short and has no spaces.  The file size cannot exceed 5 megs.

Before the drawings are “printed to PDF”, the drawings themselves should follow the guidelines of the patent office.  One of the simpler ways to make drawings in compliance is to use Sketch-up free version with this style applied   Pen Black Patent2 – Copy.style.  For security reasons a .txt was appended to the end of the name, remove the .txt so that the end of the file name is style.

Draw at will and then apply the style. Print the result, scan and the drawings are good to go. Any CAD program will work for drawings.  Sketch-up is just an idea for those that do not have ready drawing expertise.

The requirements for non-provisional drawings from the patent office http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent#heading-24.  Requirements for provisional drawings at the USPTO (Patent Office) were not found.  Draw as closely as possible to the non-provisional requirements.

 

Turning to the Specifications

For provisional patent applications, the drawings and specifications are the important items. Writing claims, background, and the other elements of the Utility Patent applications are not as important for provisionals.  Stanford University publishes a user-friendly application template.

provapptemplate

Download and fill in the sections. Once complete, if feasible, ask a patent attorney to look it over and provide comments.  Typical attorney comments include:

“Remove this information. This information should be included on an Application Data Sheet instead. At least, remove your e-mail, website, and telephone numbers. Omit any references to trade names, etc., throughout the document. You will want to refer to the system using a generic name if it isn’t already. Omit references to trade names, etc. This section should be a “BRIEF DESCRIPTION OF THE DRAWINGS”. In this section, introduce each drawing by Figure #, then provide a brief description of what is shown in the figure. Move this description to the “DETAILED DESCRIPTION” section. Because no claims are added, omit “CLAIMS” section entirely.

These comments came from a brief edit by a qualified patent attorney.  Other comments include requests for expansion of detailed descriptions on drawings, truncating brief descriptions, omitting the word “invention”, covering as many variations as possible – called embodiments.

The attorney points out flaws, missing components and provides ideas about embodiments.  It is not trivial to write specifications.  Expect a lot of red ink over your first few attempts.

With the drawings, specifications and cover page completed the applicant is ready to file electronically via https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered

The first page is easy.  Fill out the blanks.

Ready to file a USA Provisional Patent Application?

See what happens next.  Click on an image to see it larger.

EFS 1

Page 1 Above and below continuation screenshot.  Straightforward data entry.  Note that the provisional is a subset of a Utility patent.  Click on utility to see the provisional patent radio button.

EFS 9

Page two below.  If the application, drawings and specifications are correctly formatted, this is easy.  If not, go see the previous post.  The Patent office is particular about formatting.

EFS 10

Choose the appropriate entity and then calculate and the fee submission sheet is calculated online and automatically included in your submission.

EFS 8

EFS 3

Select, pay now and an easy pay by card menu shows next.

EFS 4

After payment receive email or print receipt and you are done.  EFS 6

 

Categories: Patent Filing

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