Patent Search

Filing Strategy: Provisional Patent Applications

Intellectual Property FirmsA provisional patent application (PPA) is commonly used as an inexpensive starting point for creating intellectual property (available in the United States, Australia, the United Kingdom, Singapore, Japan, China, and New Zealand, for example), but what is the use of a PPA? The PPA allows one to append the coveted “patent pending” designation, and to seek investors during its one-year pendency. The PPA can be filed for a minimal fee, and is not required to have claims (which are the legal component of a patent for providing protection) as part of an IP strategy. From a pending PPA, one can claim the priority date of the PPA in a full patent application in any country that the applicant wishes to apply. Besides deferring costs and enabling the inventor to seek investors for drafting and filing the full application, the PPA also allows the inventor to quickly and broadly capture aspects of the invention which can then be refined (to some degree) in a full patent application.


Once an inventor has determined that an innovation is worth pursuing patent protection, a suitable disclosure must be prepared for submitting as the PPA. Since the PPA will not be formally examined unless patentability issues arise in the examination of a subsequent patent application claiming priority to the PPA, many inventors do not pay much attention to the PPA disclosure, considering the PPA as the first stage to a “work in progress.” Individuals have been known to have filed presentation slides of business plans for technical innovations as PPAs, leaving out important details of the underlying technology. This is a misguided and potentially-damaging approach, discouraged by most intellectual property firms.


The best approach to drafting a PPA as part of a comprehensive IP strategy is to follow the format of a full patent application as a guide. In addition to the text portion of the disclosure, a set of drawings is included to illustrate the connectivity of system components, architectures, advances over the prior art, process flows, method steps, and other schematics to better understand the invention. It should be noted that in some jurisdictions the inventors do not necessarily have to be the patent applicants. In the USPTO, it is required to disclose proper inventorship as the applicants. An assignment of patent rights can be made by the inventors to third-party entities.


The summary section is an overview of the invention. It treats the invention as a whole, and focuses on the capabilities that the various embodiments provide. Breadth of scope should be the concern. One should consider as many equivalent approaches, alternate materials, and/or substitute components that will still enable the invention to be essentially performed. Likewise, processes should be carefully evaluated to be reduced to the minimum number of steps that are required to perform, produce, or enable the invention over the prior art. Additional features, aspects, or implementations should be presented as preferred or alternate embodiments.


Furthermore, the USPTO allows additional embodiments to be introduced into a full application claiming priority to the PPA provided that the additional embodiments are sufficiently within the broad scope of the aspects and features originally presented in the PPA. Since such a patent application may be submitted up to one year from the submission of the priority PPA, it frequently arises that aspects that were not fully contemplated become strategically and/or financially significant. By maintaining the broadest scope in describing the invention, one has some flexibility to adjust the direction, emphasis, and/or application of the invention.


The description of the invention and its various embodiments is typically provided by referring to the drawings and their elements. The description and drawings should be “woven together” to provide a clear understanding of the invention and how it is performed, produced, or implemented. This should be done with the prior art in mind; however, it is not recommended to compare and/or contrast an invention to the prior art in the patent application itself unless absolutely necessary, weighing the impact on the IP strategy.


The drawings should be simplified to convey primarily the technical features of the invention. Prior-art drawings may be included to distinguish differences, but should be clearly labeled as such. Schematic block diagrams, high-level architectures, system components, circuitry elements, and reaction pathways should be represented in symbolic form instead of actual pictures of such constituents. Software algorithms are typically depicted as high-level flowcharts.


FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP.


FPIP files patent applications on behalf of its clients directly before the USPTO, EPO, WIPO, and ILPO, and worldwide via our network of professional associates. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.