do provisional patents require drawings?

Do Provisional Patent Applications Require Drawings?

Inventors often file a provisional patent application to obtain an early filing date but don't spend enough time preparing and thinking about the consequences of having a weak provisional patent application. We often get asked do provisional patent applications require drawings? We will answer this question below.

Do Provisional Patent Applications Require Drawings?

Provisional patent applications are not required to have drawings, however, including drawings is a good idea because they expand the scope of a provisional patent. Having a somewhat broad provisional patent helps some applicants avoid problems down the road when it comes time to file a regular (nonprovisional) patent application that relates back to an earlier-filed provisional patent application.

According to the USPTO, if an inventor chooses to include drawings in his patent application, the drawings must follow the standards set by the patent office. We can't stress this enough, even though you're not required to submit drawings, most attorneys recommend that applicants do include them to assist the patent examiner in understanding your invention. If you do choose to include them we will explore some of the requirements for drawings.

Here are some of the requirements you'll have to follow if you choose to include drawings:

  • Black and White Drawings

    The drawings you include should be made using black ink on white paper. If you're filing your patent application online, you should scan the drawings and make them available in the PDF Format. The patent office allows colored photos, but you have to file a petition before including color photos. If the patent office grants your petition, you can include them.
  • Views

    You should include as many drawings as necessary to show the invention that you want to patent. If a single portion of your invention is important to your patent, you can include enlarged drawings of that portion of your invention.

  • Label Your Drawings

    If you choose to include drawings with your provisional patent, you have to label each drawing by including the title of the invention, the application number, and the inventor's name. If you submit additional drawings after filing your patent application, you must label each drawing as "New Sheet" or "Replacement Sheet." All of this information must be placed on the top portion of the paper.
  • Drawing Paper

    When submitting drawings to the patent office, the paper that you use must not be shiny, must be durable, and free of cracks, folds, and creases. All drawings must be made on standard A4 Paper and applicants can only include drawings on side of the paper. Don't add drawings to both sides of a single piece of paper.
  • Numbering the Paper Sheets

    You should number the paper sheets for your drawings. The first sheet should be number with the number 1 and additional sheets 2, 3, 4, 5, etc. Applicants must place these numbers on the middle top portion of the sheet.
  • Margins

    The sheet must include the following margins
    • Top Margin: 1 inch
    • Bottom Margin: 3/8 inch
    • Right Margin: 5/8 inch
    • Left Margin: 1 inch

Note: If you are creating these drawings on your own, you should visit the USPTO website for a complete list of the requirements that you have to adhere to.

Why Should An Applicant Include Drawings?

Applicants should include drawings in their provisional patent application because drawings can be a great tool to supplement the description of the invention you want to protect in a provisional patent application. Often times, inventors overlook the importance of provisional patents and so they don't do as good of a job as they do in preparing it and thoroughly describing the invention they want to patent.

This often backfires when the time comes to file a nonprovisional patent application that relates back to the provisional patent application. Having drawings that broadly illustrate the inventor's invention reduces the possibility that a patent examiner will make a determination that the invention described in a nonprovisional application is not the same one disclosed in a provisional patent.

So, don't make the mistake that many applicants make in not including drawings with your provisional patent. Ask your attorney about how including drawings can help you patent your invention by assisting the patent examiner in determining how your invention works, as well as how to use it. If your provisional patent application does not disclose these two things, you might face some trouble down the road.

Importance of Provisional Patent Applications in the United States

Provisional patent applications are really important in the United States mainly because of the fact that patent law awards inventors who are first to file their patent application with the patent office. Unlike other countries that give priority to the person who first invents an invention, the US awards the person to file the invention with the patent office.

For example, if you invented a new type of water hose but didn't file a patent application with the patent office and different inventor comes up with the same hose idea a year after you do. If he files a provisional or nonprovisional patent application with the patent office before you do, he will be awarded the patent even though you invented the new water hose first.

So, if you have an invention, speak to an attorney and let them guide you on what you should do. He will likely tell you to file a patent application with the patent office as soon as you have an invention that you can describe. Don't sit on your invention for too long, because if you do, someone else may file a patent application and you'll be left with basically nothing but an invention.

How Much Do Provisional Patent Drawings Cost?

If you're like us or most people, you probably don't know how to create drawings for your provisional patent application. Don't give up just yet as there are many companies out there that offer to create these drawings for you. Many of the services that we saw charge between $50 to $100 for each patent drawing. Let's assume that you need 7 drawings to cover your invention, you would have to pay $ 350 to $700, depending on the patent drawing service that you choose.

If you can't afford to have these drawings professionally made, you will be happy to hear that the patent office does not require a professional to create them. Although it's not recommended, some applicants make these drawings themselves.

If you choose to go this route, check out the USPTO website drawing requirements because they're pretty strict about what type of photos to include and how they should be formatted. We included some of the requirements above, but note that what we included is not a comprehensive list of the rules you have to follow.

Why Do Inventors Even Choose To File a Provisional Patent Application?

Inventors often to choose to file a provisional patent application instead of a regular patent application because provisional patents are perceived as being easier and cheaper to prepare. While this is true, some applicants make the mistake of not taking them to properly prepare them.

By now, you should know that spending the time to adequately describe your invention in words, as well as drawings is extremely important if you want to patent your invention later down the road.

A provisional patent application only provides 12 months of patent-pending status, to patent an invention, an applicant must file a regular, nonprovisional patent application with that 12 month period.

When the time comes for you to file a regular patent application, you will appreciate the time you took and the money you spent in preparing your provisional application, especially if you've got competitors who filed patents on the same matter after you file your provisional patent.

This is so because to benefit from the priority date of an earlier provisional patent, the patent examiner must determine that the invention you described in your provisional patent is the same one you described in your regular patent application. Including drawings that fully explain your invention, will definitely help the patent examiner make that positive determination that you want to patent your invention.

Provisional Patent Application Drawings

At this point, you should know while that the patent office does not require that you include drawings as part of your provisional application, it's almost reckless not to. You have to accurately and thoroughly describe your invention, including drawings is a great way to broaden the scope of your invention and explain it so that the patent examiner will know what you're talking about. If you have any general questions or comments, please feel free to leave them in the comments section below.


can a provisional patent application be amended?

Can a Provisional Patent Application be Amended?

Inventors and applicants often file a provisional patent application prior to filing a regular patent application with the USPTO. Applicants often to do this because of the cost of filing and preparing a provisional patent application. However, we get asked all the time whether a provisional patent application can be amended after it's been filed with the patent office. We will answer this below.

Can a Provisional Patent Application be Amended?

The short answer is: a provisional patent application can be amended but an applicant cannot add new matter beyond what the applicant initially disclosed. Said differently, you have to stick to whatever you included in your provisional patent application. You can only amend your provisional patent application to make it comply with the law, you cannot add anything new to your provisional application.

If an applicant wants to make changes to the information that he provided in the provisional patent application, he can do so by including the changes in the nonprovisional patent application. However, the applicant should be aware that any amendments to the nonprovisional patent application that were not part of the provisional application will not benefit from the early filing date of the provisional patent application.

Said differently, anything new you add to your nonprovisional patent application will not benefit from the earlier filing date of your provisional patent application. This becomes an issue for some applicants if someone files a patent application for the same features before you included them in your nonprovisional patent application.

If they applied to protect the same material that was not included in your provisional application but included in your nonprovisional application, you won't be able to benefit from the early priority date of your provisional application.

Some Applicants who want to make amendments to their provisional patent application do so by simply filing a subsequent provisional patent application that includes the changes that they want to make. But, the drawback of doing this is that the two applications will have different priority dates, each having a priority date of the day it was filed. Doing this could cause a problem if someone files a patent application for the same matter in between your filing of the first provisional application and the second provisional application.

How to Avoid Making Amendments to Your Provisional Patent Application?

Inventors who have an invention but have not yet filed a provisional patent application often avoid having to make amendments to their provisional patent application by drafting the description of their invention as broadly as possible. Applicants typically take a step back and as themselves whether the description they included describes the invention as it would be used in its final form.

We know that sometimes it's difficult to anticipate what the final version of your invention will look like, so if you have time, hold off on filing a provisional patent until you have a better idea of how your invention works and how people will use it.

Applicants often draft their provisional patents just like a person would write an instruction manual for their invention. Although provisional patents aren't examined by the patent office, you need them to support a later-filed nonprovisional application.

To do this, the patent examiner will need to compare the invention you described in your nonprovisional application to the invention in your provisional application, if they're too different, you won't be able to benefit from your earlier priority date.

So, do as good a job as possible to broadly describe your invention in your provisional patent application to avoid all of the problems associated with amending a provisional patent.

Drawings

Many applicants mistakenly believe that because they are filing a provisional patent, they don't need to include drawings with their provisional application. That is a mistake. You've probably heard the saying that a picture is worth a thousand words. This couldn't be truer when it comes to patent applications.

Drawings are great to supplement the description of your invention. They often fill in the gaps that are left by the written description. So, as a rule of thumb, include drawings whenever possible, their value may surprise you if your written description fails you.

If you don't know how to create drawings for your invention, you can seek the help of a professional. There are many professional artists who specialize in creating drawings that meet the requirements of the patent office. We have seen such services cost between $50 to $100 per drawing and you'll need several of them. So, keep the cost in mind when budgeting to patent your invention. Drawings may seem expensive up front, but they are a very good and cheap way to expand the scope of your provisional patent application. Including them can save you time and money down the road.

Why is the Importance of Provisional Patent Application Often Overlooked?

Applicants often look at the ease of preparing a basic provisional patent application and think that they don't need to spend the time and money to carefully prepare them. However, the truth is that applicants should spend the time to carefully prepare them because the provisional application could prove to be very important, especially if another party files a patent application for the same matter after the applicant files a provisional patent application.

As you may know, provisional patent applications do not ever turn into a patent grant unless an applicant files a nonprovisional (regular) patent application. So, if an applicant prepares a poor provisional patent application that does not appropriately describe an invention that he wants to patent, the patent office may determine that the invention in a later-filed nonprovisional application is not similar to the one the applicant disclosed in the provisional application.

This type of finding will prohibit the applicant from claiming the benefit of an earlier-filed provisional application. This becomes an issue if a different party files a patent application after the applicant files his provisional patent and before the applicant files his nonprovisional patent. So, as a word of caution: pay attention to and carefully prepare your provisional patent.

Attorney

If you don't have the necessary experience preparing a provisional patent, you will benefit greatly from having an experienced patent attorney assist you with its preparation. Patent attorneys are familiar with the process, they know what needs to be done to obtain their client the best possible patent protection for their invention. Don't underestimate the value that an experienced attorney brings to the table, even if you're hiring them to prepare something like a provisional application.

If you don't have the budget to hire an attorney to prepare your provisional patent application, you should consider the option of hiring a patent agent. Like patent attorneys, patent agents are licensed by the USPTO to assist applicants in preparing patent applications, as well as dealing with the patent office on their behalf. The best part is that they typically charge less than patent attorneys because they don't have a legal education. That said, they are competent to assist inventors in matters in patent matters.

Converting Your Provisional Patent Application

An applicant has two options to "convert" his provisional patent application into a (regular) nonprovisional utility patent application. The first way to accomplish this is to file a nonprovisional patent application that claims the benefit of the earlier-filed patent application.

The second, less popular way, is to file a petition to convert a provisional patent into a nonprovisional patent application. Inventors mostly choose to file a regular utility patent application that claims the benefit of an earlier-filed provisional patent because they get an extra year of protection.

This is so because by the patent term begins on the day that you file your nonprovisional patent application. Whereas if an applicant were to choose to convert his provisional patent, the patent term would begin on the day of filing the provisional patent. So, ask an attorney what option you should choose and follow their instructions.

Amending a Provisional Patent Application

By now, you should know that substantive changes to a provisional patent application are not allowed by the patent office. Changes to make the application comply with the law are permitted, but absent extraordinary circumstances, amendments are not permissible.

To avoid the hassle of having to make an amendment to your application, later on, spend the time and money to properly prepare your provisional patent application because it may pay off in the long run if your provisional application proves to be important. If you have any general questions or comments, please feel free to leave them in the comments section below.


does a provisional patent need claims

Does a Provisional Patent Need Claims?

If you're working on your invention, you may want to file a provisional patent with the USPTO as a placeholder in time until you're ready to file a regular, nonprovisional patent application. Many applicants and inventors approach us and ask us whether they need to add claims to their provisional patent application?

Before filing a nonprovisional patent application, inventors often prefer to file a provisional patent application to obtain an early priority date for their invention. To obtain a provisional patent, inventors and applicants have to include a description for their invention. So, we often get asked does my provisional patent have to include claims? We will answer this below.

Does a Provisional Patent Need Claims?

According to the USPTO, a provisional patent does need formal patent claims. However, they recommend that an applicant completely and thoroughly describe the invention they're seeking to protect. That said, while claims are not required for a provisional patent, you should spend a good amount of time describing your invention in your provisional patent application.

So, why are we telling you to accurately and thoroughly describe your invention in your provisional patent application? We are stressing this because the description of your invention will become very important when the time comes for you to file your regular utility patent application.

You have to remember that provisional patents only last for 12 months. During those 12 months, you need to file a nonprovisional patent application to get a patent on your invention. When you decide to file your nonprovisional (regular) utility patent application, the patent examiner will look at your provisional patent application and your nonprovisional patent application. The invention you describe in your nonprovisional patent application has to match the one in your provisional patent application.

This is important because the patent office will not allow you to claim the benefit and priority date of an earlier-filed provisional patent application if the descriptions do not match. So, while some people consider provisional patent application unimportant and easy to prepare, making a mistake in describing your invention could cause you a lot of problems, especially if someone else files a patent application for the same or similar invention and the patent office does not allow you to claim an earlier priority date.

So what's the takeaway? You should do your best to accurately and completely describe your invention. Don't file a provisional patent when you're super early in the process of inventing. File it once you have a solid understanding of how your invention works and the purpose it accomplishes. Pay close attention and do a good job preparing your provisional patent application.

If you don't have experience preparing and filing a provisional patent application, you should seek the help of an experienced, licensed patent attorney. Experienced patent attorneys have drafted many patent applications, they know what the patent office and patent examiner are looking for. They will help you avoid making small mistakes that could cause a lot of trouble down the road.

If hiring an experienced attorney is too expensive for you, you should try looking for an experienced patent agent. Patent agents are authorized by the patent office to assist inventors and application in the preparation and prosecution of their patent applications.

While the patent office does not require inventors to hire patent agents or patent attorneys, they do recommend that you hire them to assist you with the preparation of provisional patent applications and regular utility patent applications.

Is Your Description Descriptive Enough?

So, now that we have stressed the importance of including an accurate and complete description of your invention, how much detail should you add to your provisional patent application? You should include enough detail so that a person who's familiar with the field of your invention will be able to figure out how to make the invention, as well as knowing how to use the invention.

Imagine yourself writing an instruction manual for making and operating a remote control. Include all of the information that the maker of such an invention needs to know how to make it and what the user needs to know to be able to operate it. If you include this level of detail, your description is probably going to be good enough.

So, while others may tell you that provisional patents aren't important and don't require much preparation, laugh and don't listen to them because by now you should know the consequences that are associated with having a provisional patent that doesn't adequately describe your invention.

As we previously said, if you don't include the appropriate amount of detail, the patent office may deny you the benefit of claiming the earlier priority date of your provisional patent. If someone else filed a patent on the same or similar invention, you could lose your entire patent.

Should You Include Claims in Your Provisional Patent Application?

Whether you should include claims in your provisional patent application is up to you but we will go through some of the benefits and disadvantages of including them vs not including them. If you want to include claims, include broad claims, don't limit your invention by including claims that limit the scope of the invention.

You can always make claims narrower later on when you file your nonprovisional patent application but if you draft your claims too narrowly, you're limiting your ability to make broader claims in your nonprovisional application. You have to remember that if you want to benefit from your from the early filing date of your provisional patent, the invention you've described in your nonprovisional patent application has to be the same one you described in your provisional patent application. So, to avoid having the patent examiner determine that the inventions are different, include some claims but don't put yourself in the corner with narrow claims.

We know that applicants are sometimes in a rush to file a provisional patent to get their priority date, but just remember taking the time to carefully draft your provisional patent application will go a long way in ensuring that you get the best patent protection possible.

Some people argue that claims should not be included at all in a provisional patent application because they cause problems in the event that the claims of the nonprovisional application are different than the ones you included in your provisional patent application. They go as far as to state that they shouldn't be added at all to avoid running into claim related issues.

Having said that, whether you choose to include claims or not in your provisional patent application, one thing is for sure: you need to draft both the descriptions of your invention in both your provisional patent and nonprovisional application should be very similar and have the same subject matter. If you add something to your nonprovisional application that's not in your provisional patent application, you won't be able to benefit of an earlier filing date.

Filing Your Nonprovisional Patent On Time

If you have a valuable invention on your hands and you want to patent it, make sure to file your nonprovisional patent within 12 months of filing your provisional patent application. The patent office rarely grants extensions and if they do, it will end up costing you a ton of money. So, it's better to just pay attention to the deadlines and file your application within the allotted time.

How to Turn Your Provisional Patent Into a Nonprovisional Patent?

To turn your provisional patent into a nonprovisional patent, an applicant may file a nonprovisional patent application that claims the benefits of an earlier-filed provisional patent application within 12 months of filing the provisional patent application.

For an application to claim the benefit of an earlier application, it should identify the patent application number to which it's claiming priority, as well as the date on which it was filed. The benefit of proceeding this way is that your patent term begins at the time you file your nonprovisional patent application and your priority date starts almost a year earlier (at the time of filing the provisional patent application).

Provisional Patent Claims

By now, you should know that while patent claims are not required for provisional patents, you should do a thorough job describing your invention in your provisional patent application. If you don't have experience preparing provisional patents, we recommend that you hire an attorney to assist you in its preparation. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


can a provisional patent be extended?

Can a Provisional Patent be Extended?

Many inventors often choose to file a provisional patent in place of a regular, nonprovisional patent because provisional patents are less expensive and require less preparation than filing a nonprovisional patent application. We often get the question: can a provisional patent be extended? We will answer this question below.

Filing a provisional patent application with the patent office allows inventors to secure an early filing date until the inventor files a regular, nonprovisional patent application. Applicants need to file a regular patent application within 12 months of obtaining a provisional patent because provisional patent applications do not become patents. But, can you extend a provisional patent? We answer this question in the following paragraph.

Can a Provisional Patent be Extended?

The short answer is: a provisional patent cannot be extended. The patent office does not issue extensions for provisional patents. Provisional patents last for 12 months and that's it. During that 12 month period, an applicant for a utility patent should file a nonprovisional patent application to capitalize on the earlier filing date of the provisional patent.

If an applicant fails to file his regular, nonprovisional patent application within 12 months of filing the provisional patent application, the provisional patent lapses, allowing other inventors who may have filed a patent application for the same invention to enjoy priority over our hypothetical applicant.

Unless you absolutely have to, you can enjoy provisional patent status for longer, but you have to know that taking the steps we are about to explain to you may cause some big problems, so please proceed with caution.

If your provisional patent is about to expire or has expired, you can prepare another provisional patent application that includes any improvements you've made to your invention, and file it with the patent office. That said, doing this may cause some problems.

By filing another provisional patent, you may have a problem if someone else files a patent application for an invention that's the same as yours after your first filed provisional patent. Since you're basically abandoning the first provisional patent application, you won't benefit from that early filing date. You have to go with the filing date of your newly filed provisional patent application.

Now let's go back to the inventor who filed his patent application for an invention that's similar to yours after your first provisional patent application but before your newly filed provisional patent application. If your invention is the same or similar, he will now enjoy priority over you because by not filing a nonprovisional patent application within 12 months of filing your first provisional patent, you lose the benefit of claiming the earlier priority date.

This is so because in the United States, the patent office gives priority not to the first person to invent something, but rather to the first person who files his patent application with the patent office.

Just remember, refiling your provisional patent application or filing a subsequent amended provisional patent application comes with the consequence that you will lose the priority date from your first provisional patent application. So, if you're not concerned about other inventors inventing something that similar to what you've invented, you can go ahead and file an additional provisional patent application. That said, you should consult with an attorney before performing any of these actions, especially if your invention is valuable.

Filing a Nonprovisional Patent Application Before the Expiration of Your Provisional Patent

Instead of allowing your provisional patent to lapse, you can file a nonprovisional patent application that has the ability to mature into a patent. By filing a nonprovisional patent application within 12 months of filing your provisional patent, you can continue to market your invention as patent-pending while continuing to enjoy the early priority filing date of your provisional patent.

If you already have a provisional application that you've filed with the patent office and you're getting closer to the 12-month mark, you should contact an attorney to talk about your options. Making the right choice could make the difference between getting your invention patented and leaving the patent office with nothing but lawyer fees and patent application fees.

Public Disclosure of Your Invention

If you publicly disclose your invention after filing a provisional patent you will be barred from filing a subsequent provisional patent application. Public disclosure includes: telling the public about your invention, selling the patent-pending invention or offering it for sale.

Just remember, the patent office does not allow applicants to refile the same provisional patent or one that you've made amendments to if more than 12 months has passed from the day you publicly disclosed your invention. So, what's the takeaway?

If you know that you might need more time to work on your invention before filing a regular patent application, it's a good idea to keep your invention secret. If you need the assistance of a friend or a student, ask them to sign a confidentiality agreement, agreeing not to disclose your invention to anyone else. That said, while signing a confidentiality agreement does not 100% guarantee that they will not talk to someone else about your invention, it reduces the chances of them doing so.

Here is another tip: If you choose to file a subsequent provisional patent application either because you need more time to work on your invention or because you need to make amendments to your provisional patent, filing a provisional patent application does not constitute public disclosure of your invention.

As long as you're certain that no else has filed a patent application for an invention that's similar to yours, you can still file an additional provisional patent because provisional patent applications are not made public, therefore you don't have to deal with issues that arise when an inventor publicly disclosing his invention.

Cost Savings Associated with Filing a Provisional Patent

Many inventors choose to file a provisional patent instead of a regular, nonprovisional patent application because of the cost associated with filing a regular patent application.

When an inventor or applicant files a regular patent application, he not only has to pay filing fees, but he's also responsible for paying patent search fees and patent examination fees. It's an understatement to say that the fees add up. So, instead of paying these fees, many inventors choose to obtain some sort of protection without being liable for thousands of dollars of fees. The protection they opt for is applying for a provisional patent.

Having a provisional patent application filed with the patent office allows inventors to market their product or invention as patent pending. Patent pending is valuable because it tells competitors that you've taken legal steps to protect your invention. This discourages some of your competitors from copying your invention and offering it for sale.

Things to Look Out for When Filing a Provisional Patent

When filing a provisional patent application, many inventors make the mistake of not adequately describing their invention. If that sounds like you, take the time to prepare your application. As part of preparing your application write a description that completely describes your invention.

We stress this because if and when you choose to file a nonprovisional patent application to get your patent, the patent examiner will look at your provisional patent application and compare it to the regular patent application to make sure that the invention you described in your provisional patent application is the same invention that you disclosed in your regular patent application.

This is very important especially when you really need that early filing date of the provisional patent to give your invention priority over others who have filed a patent application for an invention that the same as or similar to the one you're seeking to patent.

Also, pay close attention to dates, like we mentioned 500 other times in the post, dates are important when it comes to patenting your invention. Your filing date, whether you choose to file a provisional application or a nonprovisional application is important because of the U.S system that awards the first to file and not the first to invent.

So, make sure that you file something to hold a place for your invention. If someone steals your idea and heads over to the patent office to patent it, you will lose if you don't file before them. So, if you have a valuable invention that you know you can commercialize and profit from, contact an attorney, draw up a strategy, and have them help you prepare and file the proper application.

Every person has a different situation, the only way you'll know what to do is to seek the help of a professional.

If you don't have the monetary resources to hire an attorney, look for a patent agent. They're skilled and licensed by the patent office to assist inventors like yourself prepare and file their patent application, as well as communicate and work with the patent office to get you your patent.

Extending a Provisional Patent

By now, you probably know that provisional patents cannot be extended. However, there are some things you can do to enjoy the benefits of your provisional patent. Every situation is different, so if you have any questions about your invention and how to go about patenting it, look for a decent patent attorney who can help you prepare and file the correct application. If you have any general questions or comments, please feel free to leave them in the comments section below.