You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
Robert M. Hunter, Ph.D.
Registered Patent Agent
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If you write well, preparing your invention disclosure in the format of a provisional application may reduce your costs. If technical writing is a challenge for you, just use the invention disclosure checklist.
Here is an example of the level of detail required in a provisional U.S. patent application for a straightforward mechanical invention that was eventually claimed only an an apparatus. There is another example of the level of detailed required in a provisional U.S. patent application for a straightforward mechanical invention that was eventually claimed as an apparatus and a method of using the apparatus. These U.S. patent recently issued from regular patent applications that changed very little from the provisional patent application stage. The provisional patent applications did not contain patent claims and the Background of the Invention sections of the provisional applications were less detailed. In the first case, during the prosecution phase, the inventor settled for relatively narrow claims and in the second case the inventor pushed for claims that were as broad as the background art allowed.
Some of the information I request below will be entered onto the Provisional Application for Patent Cover Sheet form, which is the only form required to be submitted with a provisional application.
All of the disclosure, except descriptions of actual working examples, is written in the present tense. Any descriptions of working examples, e.g., experiments you actually performed to show that the invention works, are written in the past tense.
Do not try to show how your work is supported by others' work in the past. In fact, do not use the word "prior art" in the disclosure. The document must convince the reader that your invention had a "virgin birth," i.e., that your invention solves problems that were unrecognized or unsolved by other workers in your field.
Submitting a digital version of the document (in Microsoft Word or WordPerfect format) is always helpful (but I can scan any typewritten text and convert it into one of those formats). The item numbers refer to the question numbers on the invention disclosure checklist. The format is as follows:
Not Applicable (confirm)
Not Applicable (confirm)
This invention relates to. . . . In particular, the invention relates to . . . (item 3)
The background art is characterized by . . . . (items 5 and 6)
A purpose of the invention is to provide . . . (item 4)
One advantage of the invention is that . . . . Another advantage of the invention is that . . . . etc. (item 10)
The invention is an (apparatus, device, system) and/or (process, method, technique) for . . . . (item 7)
The apparatus comprises (contains at least) . . . . (item 8)
In use, a preferred embodiment of the invention is operated by . . . . (item 9)
In broad terms, a preferred embodiment of the apparatus is comprised of . . . .
In broad terms, a preferred embodiment of the method is comprised of the following steps: . . . .
Further aspects of the invention will become apparent from consideration of the drawingsand the ensuing description of preferred embodiments of the invention. A person skilled in the art will realize that other embodiments of the invention are possible and that the details of the invention can be modified in a number of respects, all without departing from the inventive concept. Thus, the following drawings and description are to be regarded as illustrative in nature and not restrictive.
The features of the invention will be better understood by reference to the accompanying drawings which illustrate presently preferred embodiments of the invention. In the drawings:
Fig. 1 is . . . . (item 9)
Fig. 2 is . . . .
Fig. 3 is . . . .
The following reference numerals are used to indicate the parts and environment of the invention on the drawings:
3 . . .
Referring to Fig. 1, a preferred embodiment of apparatus 1 is disclosed . . . (item 12)
Referring to Fig. 2, . . . .
Referring to Fig. 3, . . . .
The best mode of the invention involves . . . . (item 13)
Operation of the invention involves . . . . (item 14)
Many variations of the invention will occur to those skilled in the art. Some variations include . . . . Other variations call for. . . . All such variations are intended to be within the scope and spirit of the invention.
Although some embodiments are shown to include certain features, the applicant(s) specifically contemplate that any feature disclosed herein may be used together or in combination with any other feature on any embodiment of the invention. It is also contemplated that any feature may be specifically excluded from any embodiment of an invention.
(items 15 and 16 are for my use only, but are very important)
Some practitioners argue that an omnibus claim be included in any provisional application that might be used to assert priority of invention in subsequently-filed non-U.S. patent applications. Omnibus claims are not permitted in U.S. utility patents.
What is claimed is:
1. The invention substantially as disclosed herein.
An (apparatus) and/or (method) for . . . . (item 8)
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