PatentWizard

1. What is the value of your time (based upon income, personal free time, etc.)?
2. What is the risk of writing a poor and inadequate patent application (based upon your writing and drawing skills, etc.)?
3. What is the marketability of your invention?
4. What is the patentability of your invention?

If 3 or more factors are high, then you should seriously consider hiring a patent attorney or patent agent to draft your patent application. If 3 or more factors are low, then self-drafting should be considered. If you are in the “middle”, then you need to seriously evaluate your position and attempt to make the best decision for you and your technology.

Individuals desiring to “self-draft” a patent application should seriously consider preparing a provisional patent application, particularly if this is your first time self-drafting a patent application. Preparing a “formal” patent application (“FPA”) is typically more complex and more expensive than preparing a “provisional patent application (“PPA”). Provisional patent applications are a very good “starting block” for first time self-drafters and a valuable tool for experienced self-drafters. Below is a comparison chart discussing some of the features of the PPA compared to the FPA.

The answer to this question depends upon the quality of information that you enter into the software program and the amount of time you expend in reviewing your provisional patent application. If you do not spend the required amount of time in writing the provisional patent application with PatentWizard, of course the overall quality of the provisional patent application will suffer possibly resulting in the loss of patent rights in the future. It is highly recommended that you have a patent attorney review your provisional patent application prior to sending to the USPTO.

Individuals that are not good at expressing the structure, function, operation, and benefits of their invention in writing and in drawings should not utilize PatentWizard or any other self-drafting software to draft a provisional patent application. As stated previously, the quality of the provisional patent application drafted with PatentWizard is directly dependent upon the quality of information and reviews by the inventor. PatentWizard is not for every inventor or invention. You need to make the final decision yourself prior to filing a provisional patent application.

No. Performing a patent search has to be done by either you or a skilled professional. You can purchase and download PatentHunter (www.neustelsoftware.com/patenthunter/) which provides online patent searching and patent image downloading.

Yes. PatentWizard provides a direct link to the USPTO forms required to submit your provisional patent application to the USPTO.

No. No software program, book or website can replace the advice of a qualified patent attorney. You should consult with a patent attorney prior to submitting your provisional patent application to the USPTO.

PatentWizard was designed by Michael S. Neustel, a U.S. Registered Patent Attorney. Neustel Software, Inc. is owned by Michael S. Neustel.

No. Provisional applications do not require formal patent drawings so hand sketches are acceptable. However, if you prefer to prepare your drawings in a CAD format, PatentWizard provides links to various CAD software programs for you to use.

Since June 8, 1995, the U. S. Patent and Trademark Office (PTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent is a U.S. national application for patent filed in the PTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information or prior art disclosure. It provides the means to establish an early effective filing date in a patent application and allows the term “Patent Pending” to be applied.

Inventors sometimes refer to a provisional patent application as a preliminary patent application. However, there is no such thing as a preliminary patent application or a preliminary patent.

• Provides simplified filing with a lower initial investment with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent;
• Establishes an official United States patent application filing date for the invention which helps with the U.S. First to File Patent System;
• Permits one year’s authorization to use “Patent Pending” notice in connection with the invention;
• Begins the Paris Convention priority year;
• Enables immediate commercial promotion of the invention with greater security against having the invention stolen;
• Provides the same confidentiality, access, and certified copies by PTO as §111(a) non-provisional applications for patent;
• Allows for the filing of multiple provisional applications for patent and for consolidating them in a single §111(a) non-provisional application for patent;
• Provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).

The period of up to one year of pendency for the provisional application is excluded from the term calculation of a granted patent that relies upon the provisional application for patent, thus providing a term endpoint that is 21 years from the provisional application filing date.

You do not need professional patent drawings for a provisional application. However, if your sketches are not adequate to fully illustrate your invention, then a professional draftsperson should be hired to prepare your drawings.

If the inventor takes no further action, the application will automatically be abandoned 12 months after the provisional application for patent’s filing date by operation of law or upon failure to correct informalities (e.g. pay filing fee or correct cover sheet error).

No. Once a provisional patent application is automatically abandoned 12 months after the filing date it is non-revivable and you will not be entitled to the filing date of the provisional patent application.

It is strongly recommended that inventors consult with a registered patent attorney or agent before and after filing a provisional patent application. A list of patent attorneys and agents, listed alphabetically by geographic region, who are registered to practice before the PTO can be obtained from the U.S. Government Printing Office at the following address or website:
Superintendent of Documents P. O. Box 371954 Pittsburgh, PA 15250-7954 Telephone: 202-512-1800 www.uspto.gov

The §111(a) non-provisional application for patent must be filed within 12 months of the provisional application for patent filing date to claim the benefit of the provisional application filing date. As always, consult with a patent attorney if you should have any questions.

Yes. The provisional application for patent must be made in the name(s) of all of the inventor(s). Each inventor named in the provisional application for patent must have made a contribution to the invention as described. If multiple inventors are named, each inventor named must have made a contribution individually or jointly to the subject matter disclosed in the application. Please keep in mind that joint inventorship often times means joint ownership which can create future problems if not addressed up-front. Neustel Law Offices has an informative page titled Patent Ownership Basics that can help you understand joint inventorship and joint ownership of a patent.

It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (Note: These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.) You should consult with a patent attorney if you should have any questions.

If any of these three items are missing or incomplete, no filing date will be granted. To be complete, a provisional application for patent must also include:
1. The filing fee as set forth in 37 CFR 1.16(k)
2. A cover sheet identifying the application as a provisional application for patent.

The cover sheet is required so as to distinguish the provisional application for patent from other applications and documents filed in the PTO. The cover sheet provides all of the information needed to process the provisional application promptly and properly and prepare the filing receipt. A sample cover sheet is available from the PTO. Use of the PTO’s cover sheet is not mandatory, however, as the cover sheet requirements pertain to content, not format. The cover sheet must identify:

• Application as a provisional application for patent.
• Inventor name(s).
• Inventor residence(s).
• Title of the invention.
• Name and registration number of attorney or agent and docket number (if applicable).
• Correspondence address.
• Any U.S. Government agency that has a property interest in the application.

No. A formal (non-provisional) patent application must be filed in order to receive a U.S. patent for your invention. It is recommended that inventors hire a patent attorney to draft the formal patent application.

The benefits of the provisional application for patent cannot be claimed if the one year deadline for filing a non-provisional application for patent is missed. If the one year deadline for filing falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the non-provisional application must be filed the next business day in order to be co-pending with the provisional application. Provisional applications for patent cannot claim the benefit of a previously filed application, either foreign or domestic. It is recommended that the disclosure of the invention in the provisional application for patent be as complete as possible. In order to obtain the benefit of the filing date of a provisional application for patent the claimed subject matter in the later filed non-provisional application must have support in the provisional application for patent. The non-provisional application for patent must have one inventor in common with the inventor(s) named in the provisional application for patent to claim benefit of the provisional application filing date. A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim the benefit of that provisional application. A CAFC decision recently handed down specifically addresses “priority” issues involving earlier filed “provisional” patent applications. In New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co., 298 F.3d 1290, 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002). The CAFC said: “As a part of the Uruguay Round Agreements Act, the Patent Statute was amended to allow applicants for United States patents to file provisional applications that could provide the priority date for a non-provisional utility application filed within one year of the provisional. See 35 U.S.C. 111(b). Such a provisional application need only include a specification conforming to the requirements of 35 U.S.C. 112.1 and at least one drawing filed under Sect. 113; no claims are required. 35 U.S.C. 111(b)(1), (2). However, for the non-provisional utility application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor and the written description of the provisional must adequately support the claims of the non-provisional application”. A more recent example of a provisional patent application not fully disclosing the invention resulted in the invalidation of the patent that was attempted to be enforced against FaceBook (see FaceBook Invalidates Patent – Leader Technologies, Inc. v. Facebook, Inc., No. 11-1366 (Fed. Cir. May 8, 2012)). Though these cases disclose nothing new for individuals/entities experienced with provisional patent applications, it is a good “reminder” that a provisional patent application needs to be prepared to the same level/quality as a non-provisional patent application.

Yes. A U.S. provisional patent application is recognized internationally in all major countries (e.g. Australia, Singapore, Japan, UK, China and New Zealand). Please keep in mind that a non-provisional foreign application must be filed within 12-months of the provisional application’s filing date to retain the earlier priority filing date. The World Intellectual Property Organization (WIPO) recognizes provisional patent applications for the purposes of priority also.

No. Some individuals feel that some foreign countries may not recognize a provisional patent application filed without claims. However, we are unaware of any case law or statute in a foreign country that would require the usage of a “claim” within a U.S. provisional patent application. In fact, adding a claim to a provisional patent application may create potential problems for future patents that claim priority from the provisional patent application based upon “prosecution history estoppel” arguments. A well-known authority on International Patent Law states: “The World Intellectual Property Organization (WIPO), the responsible administrative agency for the Paris Convention, and the European Patent Office, moreover, have taken the position that provisional United States patent applications are regular national filings under Article 4 of the Paris Convention and are as a consequence adequate to establish a priority date.” BAXTER, WORLD PATENT LAW & PRACTICE (December 2001). BAXTER further states: “[T]he European Patent Office has acknowledged that the U.S. provisional application gives rise to a right of priority within the meaning of Article 87(1) EPC. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. Similarly, the International Bureau also has taken a position that a United States provisional application is adequate to support a claim to priority for an international patent application filed under the Patent Cooperation Treaty. The Japanese Patent Office officially declared that a U.S. provisional application will be considered to provide a basis from which a right of priority can be claimed under the Paris Convention.” BAXTER continues to state: “Provisional applications, although not published, and never, directly, form the basis for a granted patent, provide a basis for internal priority for a subsequent regular United States patent application and under the European Patent Convention and the Patent Cooperation Treaty authorities form a basis for convention priority. Other countries recognize a provisional application for claiming priority (e.g., Taiwan), for more details on this, see Chapter 10.” BAXTER further states: “Sections 111 and 119 of the patent law are amended to now provide for filing a provisional application. The intent is to establish a system of domestic priority which will place U.S. citizens on equal footing with foreign applicants who benefit from a foreign priority date but only have the patent term measured from the U.S. filing date, not the foreign priority date. The provisional application permits U.S. applicants to have the term of their patent measured from the filing date of a “regular” application, not a provisional application. Thus, the provisional filing does not serve as the basis from which the term of the patent is measured.” It should also be noted that Section 4801(a) of the “American Inventors Protection Act of 1999” amends 35 U.S.C. 111(b)(5) to provide that “[n]otwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under [35 U.S.C. 111(a)].” This clearly supports the position that a PPA should be considered as a formal patent application for foreign priority purposes. Finally, including a “super broad” claim in a provisional application may result in the implication of Festo when a non-provisional is later filed with a narrower claim scope. See Deering Precision Instruments, L.L.C. v. Vector Distribution Systems, Inc., 347 F.3d 1314 (Fed. Cir. 2003). Deering involved the deletion of a broad claim and the adding of a new narrower claim within the same non-provisional application. Even though Deering did not involve a provisional application, there is the real potential that a similar situation could occur where a later filed non-provisional application includes a narrower claim than the claim in the provisional (i.e. effectively deleting the broader claim and inserting a narrower claim). You should consult with a patent attorney before including a claim within a provisional patent application.

No. Provisional applications for patent may not be filed for design patents, only utility patents. Design patents only protect the overall appearance of your invention while utility patents protect the function and structure of your invention. Utility patents are the most common type of patent issued by the USPTO as they generally provide broader protection for most inventions. See Neustel Law Offices website more information on the differences between a design patent and a utility patent.

No. Amendments are not permitted in provisional applications for patent after filing, other than those to make the provisional application comply with applicable regulations. You can simply refile the original provisional application with the amendments as a second provisional patent application (see next question below).

While it is not typically recommended, you can refile your provisional patent application in situations where you do not need your priority date of the first provisional patent application. Since a second provisional patent application cannot claim priority to an earlier provisional patent application, you will lose your earlier filing date of the first provisional patent application if you do not file a non-provisional patent application during the one-year pendency of the same. If you are interested in refiling your provisional patent application instead of filing a non-provisional patent application, visit the Can You Refile a Provisional Patent Application section of Neustel Law Offices. You cannot “extend” your provisional patent application past the 12-months pendency. However, effective December 8, 2010, the USPTO has implemented a 12-month pilot program titled “Extended Missing Parts Pilot Program”. You can learn more about the Pilot Program and about how to effectively extend your provisional patent application.

You should file another provisional patent application to include the new subject matter (i.e. improvements).

No. Filing of an information disclosure statement in a provisional application for patent is prohibited.

Yes. If you filed a provisional application, your one-year period dates from the filing of the provisional application, not the regular utility patent application. If you are considering foreign patent protection you should speak with a patent attorney prior to filing your provisional patent application.

Below are the current provisional patent application filing fees as of December 29, 2022:

Micro Entity Applicant – $60

Small Entity Applicant – $120

Large Entity Applicant – $300

A “small entity applicant” is an independent inventor, a small business concern (less than 500 employees), or a non-profit organization. See Micro Entity v. Small Entity vs. Large Entity from Neustel Law Offices for more information. Please visit the USPTO website at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule to view the most current USPTO fees prior to filing a provisional application..

Provisional patent applications are NOT published by the U.S. Patent Office and are kept secret by the U.S. Patent Office. There are some exceptions to the secrecy of a provisional patent application such as when a non-provisional patent application claiming priority to the provisional patent application is published or granted as a patent. See an article by Neustel Law Offices titled Are Provisional Patent Applications Published for more information.