What You Need to Know About Filing a Provisional Patent

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1 What You Need to Know About Filing a Provisional Patent This document is provided for Innovation Week teams who would like to have some level of patent protection before they publically disclose their innovation at the competition, but perhaps cannot afford to work with a patent agent or attorney (and who are not working through the NDSU technology transfer office). It is possible to file your own provisional patent. However, it is highly recommended that you work with a patent practitioner who has experience filing and prosecuting patent applications whenever possible, as the quality of the protection you receive is likely going to be much stronger. There are some intricacies and complexities in patent law that the lay person just won t understand, and these could affect the protection you are afforded from a provisional patent filing. In lieu of that, and understanding that some protection is probably better than nothing at all, I am providing this document as a guide to writing and submitting your own provisional patent, in hopes that I can cover some of the things you need to know. The cost of filing your own provisional patent is $125, which is the fee you will pay the United States Patent and Trademark Office when you file the patent. Some things you should know about a provisional patent application: A provisional patent application (or PPA) is not really a patent application at all, but is more of a placeholder. When you file the PPA, your invention will be considered patent pending. The PPA will last for 12 months and then will automatically expire. You cannot extend the life of a PPA. You must file a utility patent application (the real patent application) within one year (12 months) of the PPA filing date in order to maintain the benefit of the filing date of the PPA. If you file a utility patent with this period which claims priority to the PPA, the effective filing date of the utility patent will be the filing date of the PPA. Therefore, filing a PPA allows you to be patent pending, establishes a filing date for any future regular patent filings, and gives you 12 months of extra time to do more development and/or to seek funding for filing the regular patent. Ideally, if you find someone interested in your technology, you can negotiate with them to cover the much more substantial cost of a utility patent, or you can get investment funding to help you file your own utility patent.

2 What a provisional or utility patent protects: A utility patent, or a provisional patent (which you can think of as a placeholder for a utility patent) covers any man-made process, composition, system, or device which is novel (nothing like it exists) and non-obvious (has to be something that would not be immediately apparent to someone skilled in that area). Examples of things that might be covered by a utility or provisional patent application: o A new manufacturing process for placing electronic components on a circuit board that is more efficient, eliminates steps previously thought required, or which does things in a way never done before. o A novel chemical compound not seen in nature. o An oven which uses lasers to help brown the outside of a loaf of bread (this is an actual patent, by the way). o A method of typing information into a computer which senses the vibrations and sounds of someone tapping on the surface of a desk where a keyboard graphic has been painted or is being projected by the computer (in other words, there is no actual keyboard.) Examples of ideas that are less likely to be covered by a provisional or utility patent: o A new type of restaurant with a Star Wars theme (this might be protected by copyright and/or trademark, and it still might be a great business, but there is no new functional idea here). o A business which provides a service, such as delivery of prescribed medicines to people who cannot leave their homes (again, might be a great business, and the idea may be novel, but there is no man-made composition, system, or device, and the process of delivering things is likely not novel.) o A cool webpage design (a lot of businesses make money designing webpages, and you may have something that looks very cool, but this would more likely be covered by copyright or trademark than a patent.)

3 What a provisional patent MUST contain to be effective: The single most important thing in a provisional patent application is a complete technical description of the concept (usually called the specification), preferably with lots of drawings where all the components in the drawings are labeled and described in the text. When you write this technical description for the provisional, consider the following: o Don t assume that your audience for the specification will know anything. Write the specification as you would for someone who has never seen your idea before, and provide enough background for them to understand it. It helps to explain the current state of the art in the field, and tell how your invention improves over that. o It is okay to use technical terms and jargon as long as the technical terms and jargon are STANDARD to the industry in which you are practicing. If there is any doubt of how a term might be interpreted, you should define your own definitions of that term in the description, possibly in a Defined Terms section in your specification. o Even though you have a really good idea of how you would implement the invention (or perhaps you have already implemented it), you should describe alternate embodiments (versions) of your invention. For instance, if you describe a new vehicle control system in which the electronic modules talk to each other wirelessly, you should also describe an alternate version which would have the electronic modules connected via a hardwired connection (unless the wireless connection is the only innovative thing about your invention.) Even if the alternate version is not quite as good as your preferred version, if you cover your bases with alternate versions, people are less likely to be able to work around any utility patent you eventually file on this invention. o Drawings on a provisional patent do not have to be perfect, and can even be hand-drawn and scanned in, but they do need to be clear and concise and labeled as much as possible. Black and white line drawings are best (most easily reproduced and required for a utility patent), but the key for the provisional is to completely convey your idea. o The specification does not have to be perfect, either, and can even have a few grammatical errors in it (although not recommended). The key with the specification, as with the drawings, is that is completely and accurately describe your invention and any alternate versions of your invention.

4 o Provide an abstract which very succinctly describes what your invention is and how it is novel over anything else in existence. You should be able to do this in 150 words or less. Example: My invention is a new kind of toaster which is an improvement over existing toasters in that it uses high-powered lasers to create perfectly toasted bread in under 1 second. o It is also good to add a list of your patent drawings, if possible, and to put all of the figures in one location in your document. Ideally, the drawings will have numeric labels for every important component in the drawing, and those same numbers are used when describing the component in the specification. If you need advice or help: While you are writing your provisional patent application, I would be happy to try to answer any questions you have or give you some pointers. My time will be limited, but I will do my best to answer questions and give help. My contact information at NDSU is: o Jonathan Tolstedt (701) , Cell Phone jonathan@brainstorm-llc.com or jtolstedt@appareo.com Fargo, North Dakota The actual process of filing your provisional patent application: The remaining pages of this document describe how to actually file your provisional patent application online at (the United States Patent and Trademark Office website). You will need the specification you create as described above, stored in PDF form, and a credit card so you can pay the filing fee (the fee is typically under $200, but is subject to change). Anything else you need is described in the following pages.

5 Instructions for Filing a Provisional Patent without a Patent Practitioner 1. Write your specification (which should be a solidly-written, complete technical description of your invention, with as much detail as you can provide) and save it as a PDF and remember where you saved it. If you can, get advice from a patent professional on how to write this and what to include. 2. Go to the following page: and click on and download the SB16 Provisional Application for Patent Cover Sheet. Fill out the PDF form with all inventors names and save it where you will find it later. NOTE REGARDING THE PDF FILE FOR THE SPECIFICATION: The USPTO (United States Patent and Trademark Office) website can be a little picky about the format of the PDF document you create for your specification (the SB16 cover sheet document you download from the USPTO website shown above is already in the proper format, so you should not have problems with that one). If you have problems, or just to be safe, you can save the file in the PDF/A-1a:2005 format. You don t have to know what this means, but most PDF tools have the ability to choose this format somewhere in the options of the tool you are using. The screen below is an example of a screen with the option checked from the Acrobat PDFMaker tool. Other screens may look different.

6 3. Go to this website: 4. Click on EFS-Web (the top link on the page underneath the heading File Online). 5. Under the heading About EFS-Web, select Launch EFS-Web Unregistered efiler). 6. Type in your last name and first name and address under the heading Sign-on as an UNREGISTERED efiler. a. Check New application/proceeding i. Select Utility for the type of application ii. Under Utility, select Provisional b. Hit the Continue button. Enter Name and Information of whoever will be filing the patent (one of the inventors) Select Utility Select Provisional Hit Continue

7 7. On the next screen (Application Data), enter a title, attorney docket number*, information on the first named inventor (whoever you want to have show up first on the patent), and the correspondence address of the person (inventor) who will be responsible for corresponding with the United States Patent & Trademark Office (USPTO). * The attorney docket number is just a number that you make up and can use to track the provisional patent online. It is optional. If you use it, you may want to use a unique word or name and a number, such as NDSU-Olson Hit Continue.

8 9. On the next screen, upload the PDF file containing your written specification. a. Hit the Choose File button. Browse to find the completed specification document. b. For Category, select Application Part. c. For Document Description, select Specification. d. Hit the Add File button to add the next document (your cover sheet). 10. Upload the PDF file containing your cover sheet. a. Hit the Choose File button. Browse to find the saved, completed cover sheet. b. For Category, select General Transmittal. c. For Document Description, select Provisional Cover Sheet (SB16). d. Select Upload & Validate at the bottom of this page. The next screen will show a progress bar as it uploads and validates each of the documents. If you have no errors, press Continue. (The figure below shows that the cover sheet document I uploaded had errors. This is because I used a blank cover sheet document, and it doesn t like that. You should not get this error if you filled out the form correctly.) Error because of blank cover sheet.

9 11. On the Calculate Fees page, click on the Small Entity link, select Provisional, and then hit Calculate. The fee should appear in the Sub-Total blank. If it does, hit Continue. Select Small Entity Check Provisional Hit Calculate 12. On the next screen, review the application data you entered and documents, and then hit Submit. 13. After you submit, you will be given a chance to pay fees. Follow the instructions to pay your fees by credit card. You will be paying the fee (shown here as $125, but it may have increased recently).