Patent It Yourself - PDF Archive

72 | Patent it YOURSELF
In keeping with my recommendation that you make your
PPA look as much like your RPA as feasible, I recommend
that you prepare your drawings and description as I
describe in Chapter 8. Although you legally don’t need
to include the Background, Advantages, Description of
Drawing Figures, List of Reference Numerals, Summary,
Conclusion, or Abstract parts of the specification, it won’t
hurt if you do, and including these parts will make your
PPA that much more effective if it is later examined. Your
drawings can be informal drawings; they need not be inked
or done carefully with a CAD program, but they (and the
description) must be in permanent form (no pencil).
You also don’t need to include any claims (Chapter 9).
However, if possible, it is a good idea to draft some claims
before filing the PPA, since this exercise will help you
determine whether your detailed description includes
everything necessary about your invention. Also some
foreign jurisdictions may require that the application
contain a claim to obtain priority.
CAUTION
Provide a Full Description of Your Invention.
While it need not be well written or use any legalese,
your “description” MUST comply with the full disclosure
requirements—that is, it MUST clearly teach how to make
and use the invention and it MUST disclose the best mode or
version you currently prefer, if it has several modes or versions.
To this end, I suggest you carefully review and follow Chapter 8,
Section F, which discusses these requirements in detail.
Your description should be written in as simple
terms as possible so that a lay judge can understand it
or can be easily taught to understand it. If the invention
is technical or abstruse, start your description from
ground zero, assuming your reader knows nothing about
the field, and then gradually move up to the minimum
technical level necessary, defining all technical terms. In
addition, your invention must be in a statutory class (see
Chapter 5, Section C, for more on statutory classes). For
software inventions, this means that the invention must be
intimately involved with hardware.
If you have several inventions, you can put them all into
the PPA, even if they’re not related. If you know of several
embodiments of any invention, put them all in, even if you
have doubts about the operability of any embodiment. The
PTO will never read your PPA unless they need to verify
that it supports an invention or embodiment that you are
claiming in an RPA that you file within one year after you
file the PPA. As with the invention disclosure, I recommend
that you include as many embodiments of your basic
invention as you can think of, even if some may not work.
For more information on preparing a Provisional Patent
Application, review either Patent Pending in 24 Hours, by
Richard Stim and David Pressman (Nolo), or check Nolo's
online provisional patent program (www.nolo.com) that
assists in the drafting of a PPA.
Now that you’ve prepared your PPA (long or short)
including the description, drawings, and optionally a claim,
you need to prepare a Provisional Application for Patent
Cover Sheet document (Cover Sheet). Preparing the Cover
Sheet is very easy. Go to the PTO’s site (www.USPTO.gov),
then, click File Online, then Patent Forms, then EFS-Web
Fillable Forms, and find form SB/16 Provisional Application
for Patent Cover Sheet. To download it, right-click the
form and select “Save Target As” and save the form on your
desktop. (While you’re at it also download and save the form
SB/14 Application Data Sheet because you’ll need this too.)
Open the SB/14 form, read it carefully, and fill it out (using
your computer) with your name, city, state, and country.
“Click Add” to add any additional inventors. Then type the
title. Leave “Attorney Docket Number” blank or just put a
short reference to your invention if you have filed or plan to
file other PPAs. If you have a PTO Customer Number type it
in the box, but if not, click “Firm or Individual Name” and
some blanks will magically appear where you fill in your
name(s), mailing address, and phone. Click the appropriate
button regarding a U.S. government contract. If you haven’t
assigned (legally transferred) and are not legally obligated to
assign the invention to a company with over 500 employees,
check “No” under “Entity Status.” Type your name and date
in the blocks at the end (leave the attorney’s Registration
Number blank), and sign the form in the Signature block. If
there are two or more inventors, only one inventor need sign.
You can sign the form using your computer by typing an
“S” (slash-sandwiched) signature such as follows: “/Mildred
Phillips/” or you can print the form, sign it in ink, and scan it
back to PDF.
With your PPA and Cover Sheet prepared, let’s now
go on to filing the PPA electronically, the way I strongly
recommend.
a. Filing Electronically
The PTO’s Internet Electronic Filing System (EFS-Web)
enables patent applications, amendments, and other
documents to be filed over the Internet. While the EFS
works pretty well, it still requires a bit of time to learn
and to convert your documents to the Portable Data
Format (PDF). Nevertheless, even if you’re filing just one
application, it may be easier, cheaper, and faster for you
to file electronically rather than mail a paper copy of the
application to the PTO, which entails making a file copy