Wednesday, July 23, 2014

Enablement: Suggestions on Provisional Patent Application Content

Patent Attorneys do not usually participate in the drafting of a provisional application.  Their (and/or their firm’s) role is limited to preparing certain forms associated with the filing, handling the mechanics of the filing, and setting up a reminder system so that the conversion of the application (due one year from the provisional filing) is not overlooked.  For these services, the lawyer’s fees typically run $1000 (or more).  There is also a Patent Office fee of either  $65, $130, or $260 (as of this writing) due depending on circumstances. 

While the services listed above might seem trivial, the Patent Office filing system is the epitome of a user-unfriendly website and can have even an experienced filer pulling their hair out with frustration.  If the filer hits one of the many potential roadblocks and has to file a hard copy provisional, the Patent Office currently assesses an additional $400 (or $200) fee.  Thus, speaking frankly (and acknowledging that the following statement is somewhat self-serving), it might be well worth the money to have a Patent Lawyer handle the filing. 

So, what should entrepreneurs include in their provisional applications?  One key is to “enable” someone of ordinary skill in the art (i.e. technology) to make, use, operate, etc. the invention.  Thus, the content will vary with the invention.  If it’s a product, engineering drawings are helpful if available.  If it’s an electronic device, schematics are helpful.  And if it’s software related then block diagrams, flowcharts, etc. can be worth a thousand words.  On that note, a textual description of what the invention is, what it does, etc. can add valuable information.  And, pictures (if appropriate) are also worth a thousand words.  

While this article IS NOT LEGAL ADVISE and is in no way a suggestion that a lay person write their own non-provisional application, the author hopes that it has given you some pointers on what to include in your provisional application.

If you do feel a need for legal advice regarding your invention, we at the Villhard Patent Group would welcome a discussion of your situation.  You can obtain more information about us at or you can call us at 512-897-0399.  We look forward to hearing from you.

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