Frequently Asked Questions

PatentFiler Questions

PatentFiler Technical Filing Questions

PatentFiler Post-Filing Management Questions

Provisional Patent Application Questions

General Patent Questions

Non-U.S. Applicant Questions

Patent Application Templates

PatentFiler Questions

Why should I use PatentFiler?

PatentFiler offers you the ability to file quickly and cost-effectively. For a low cost of $295 ($395 for Large Entities)(USPTO fees included), we will file your provisional patent application with the United States Patent and Trademark Office. In addition to follow-up communications and tools facilitating the next steps in the patent process, we offer the option of arranging a one-hour consultation with a highly qualified patent attorney (additional fees will apply).

PatentFiler was conceived and designed by some of the most respected patent attorneys on the West Coast to ensure an understandable, intuitive, and simple process to establish your rights.

Filing anything with the USPTO is cumbersome, slow, and complicated. PatentFiler is supported by Cislo & Thomas LLP, intellectual property attorneys who know how to file patents. PatentFiler provides many benefits including calendaring of the deadline to file a non-provisional application based on your provisional application; updated and timely advice and tips on how best to proceed; and Backend Management tools allowing users an easy platform to manage and develop their provisional application(s) including being able to attach and print notes for future use.

New Addition: Assignment Generator. Should you choose to assign your patent application to another party, PatentFiler will automatically generate and later file your executed assignment on your behalf with the United States Patent Office at no additional cost.

What should I do after filing my application with PatentFiler?

PatentFiler will email you the USPTO application serial number and filing date, which you should keep confidential, within two (2) business days. We will also give you information on taking the next steps in the development and patenting process. If you need more information, please Contact Us to arrange a fee-based consultation.

The USPTO states that “independent inventors should fully understand that a Provisional Patent Application will not mature into a granted patent without further submissions by the inventor.” We can help you with these next steps.

Do you provide further advice after my initial consultation?

Yes! Our clients receive expert legal and patent advice to help them further develop and monetize their inventions during the 12-month period to file a non-provisional patent application. You will receive a succession of communications each month of your one-year window to file a non-provisional application. These e-mails contain information regarding the following subjects:

  • Steps to take during the 12-month window before you file your non-provisional patent application
  • How to use non-disclosure agreements
  • The role of a patent attorney
  • Professional patent searches
  • Drawings and Figures
  • Prototypes
  • Licensing
  • Raising Capital
  • Considerations for further intellectual property protection
  • Time considerations
How do I know that my idea is secure with PatentFiler?

Your connection with PatentFiler.com is completely secure. Our site uses the industry standard HTTPS TLS protocol to create a secure connection between your browser and our servers, so all exchange of information is encrypted and secure.

If I file a Provisional Patent Application with PatentFiler now, how will my non-provisional application that I file within 12 months be different?

Non-provisional (regular) patent applications are usually longer and more formal than Provisional Patent Applications. They generally include more extensive claim language and disclosure materials because the inventor has usually invested additional time into developing his/her invention during the 12-month window.

How do I decide if I should file directly with PatentFiler or consult with an attorney first?

You may consult with an attorney before filing a Provisional Patent Application. Consider, however, that this will involve a different time and cost factor as you must consult with an attorney and wait until they have drafted your application before you secure a filing date. Meanwhile, you are paying the attorney for the time involved in your consultation and the cost of drafting your application in addition to the filing fee.

Consider that US patent law grants all rights to produce or sell an invention to the entity that files for a patent first. Effectively, the entity that files for a patent one day before a competitor will exclusively profit from that invention. Therefore, it may be advisable to secure the soonest-possible filing date by submitting an application with PatentFiler immediately at a low cost and then meet with an attorney after your submission to discuss next steps in the process, including the preparation of your non-provisional application.

Can I use PatentFiler if I am not the inventor?

Representatives may file with PatentFiler on behalf of the inventor if they are authorized to represent the inventor by the applicable law of the relevant jurisdiction. Representatives must check the box that they represent the inventor before submitting the filing and must agree to the terms and conditions.

How do I go about consulting with a patent attorney?

Please click on the Consult tab on our website, enter and send us your information. We will contact you within two (2) business days to schedule a meeting at one of our Southern California locations. Alternatively, if you live in a different area, we can also schedule a live web-consultation with you. It is important to get meaningful advice from a patent attorney to determine your best strategy going forward, searching for existing patents and/or filing your own patent application.

What is SDS®?

SDS® stands for Success Development System, our unique method to provide you with our expert legal and patent advice to help you further develop and monetize your innovation during the 12-month period to file a non-provisional patent application.

Our Success Development System is a succession of communications you will receive each month of your 1-year window to file a non-provisional application. These e-mails contain the following information, advice and resources:

  1. An outline of important steps to take during your 12-month window before you file your non-provisional patent application.
  2. How to test your idea in the marketplace with the use of non-disclosure agreements to help avoid the exploitation of your invention.
  3. The role of a patent attorney in helping you develop your idea and file a non-provisional patent application with the USPTO.
  4. The advantages of obtaining a professional patent search before you file your non-provisional application.
  5. How drawings and figures not only strengthen your patent application, but also result in a stronger patent.
  6. How and why prototypes help you develop your invention and find investors or licensees.
  7. Steps for licensing your invention, which is the most common path for commercialization.
  8. How to raise capital by targeting potential investors who can enable you to develop and market your invention.
  9. Considerations for further intellectual property protection such as trademarks, copyrights, and domain names in order to build your brand.
  10. Time considerations for the professional’s preparation of your non-provisional patent application.

PatentFiler Technical Filing Questions

What specifics do I need to include in my Provisional Patent Application?

In order to be effective, the application must include at least a written description disclosing the following:

  • Sufficient information to enable one skilled in the art to make and use the invention;
  • Any drawings necessary to understand the invention;
  • At least one (1) claim is recommended for possible future foreign rights, but not required by US law; and
  • A description of the best mode of making or carrying out the invention, which is contemplated at the time of filing. This may not be required, but is highly recommended.
How much do I need to disclose in my Provisional Patent Application?

Even though the law does not require claims in a Provisional Patent Application, the law does require that any inventive elements claimed in a non-provisional patent application be disclosed in the Provisional Patent Application. In other words, if new matter is introduced in the formal claims of a later non-provisional patent application, those claims will not get the benefit of the Provisional Patent Application's filing date. Thus, a patent practitioner must be as thorough as possible in order to avoid inadvertently narrowing the scope of potential claims later in the life of the patent application.

One may guard against inadvertently narrowing the claim scope by articulating all possible iterations of the invention in the Provisional Patent Application’s detailed description, using broad language, and incorporating several statements pointing out that the description is intended as a disclosure of "presently preferred” embodiments of the invention and is not intended to represent the only forms in which the present invention may be constructed or organized.

Do I need to include attachments (drawings and figures) in my Provisional Patent Application?

Drawings and figures are typically a necessary part of the Provisional Patent Application and are highly recommended (especially when their presence dictates an understanding of the invention — and even more so in a mechanical type of invention). A picture adds to your ability to best describe your invention to meet the United States Patent and Trademark Office’s (USPTO) disclosure requirements so that a person skilled in the art of your invention could make and use your invention without undue experimentation.

What file formats or file sizes can I upload to PatentFiler?

You can upload .pdf and .jpg attachments up to 20 megabytes total.

Who should I list as the inventor?

List the actual person(s) who contributed an element or a step to your invention. List all and only the people who came up with the idea and underlying details about your idea. Include their name(s) and complete address(es).

If I prepared my Provisional Patent Application already, do I need to complete all of the fields?

No. You may upload your completed application as an independent .pdf or .jpeg (under 5 MB) document and simply fill in the information fields by writing, “See Attached.”

What if I change my invention? Can a Provisional Patent Application be altered or edited after it is filed?

No. While a Provisional Patent Application may be re-filed at a later date, it cannot be changed after it is filed with the United States Patent Office. If significant changes are made to an invention, the best course of action is to re-file the Provisional Patent Application adding any new material that was not included in the original filing.

How much does a provisional patent application cost?

The fee to file with PatentFiler is $495 ($595 for large entities). Cislo & Thomas LLP's fees for preparing and filing a Provisional Patent Application begin at $3,500.00. Please refer to our fee schedule or contact our office at 310-979-9190 for further information.

What is the difference between a large entity, a small entity, and a micro entity?

An applicant may qualify as a small or micro entity entitling them to reduced USPTO fees based on certain criteria for experience and income. If the applicant does not qualify for either, the applicant is a large entity.

To qualify as a small entity, the applicant must be either:

  1. an individual,
  2. a small business concern having no more than 500 employees (or affiliates),
  3. a university, or
  4. a 501(c)(3) nonprofit organization.

If the applicant qualifies as a small entity, the applicant may also qualify as a micro entity (for an even greater reduction in fees). To qualify as a micro entity, the small entity applicant must either:

  1. not have been named as an inventor on a total of more than four utility patents (regular utility patents, not provisional patent applications), design patents or plant patents (this does not include certain international PCT applications and applications owned by a previous employer); AND the applicant had a gross income in the previous year of less than three times the median household income reported by the Bureau of the Census; or
  2. the majority of the patent filer’s employment income is from an Institution of Higher Learning, or the applicant has assigned, or is obliged to assign the patent to an Institution of Higher Learning. An Institution of Higher Learning is a public or non-profit accredited institution that admits post-secondary students for programs of not less than 2 years.

If there are multiple inventors, the rules apply individually to each joint-inventor and all joint-inventors must qualify.

What will I receive after I submit my Provisional Patent Application filing?

You will receive your "as-filed" Provisional Patent Application, filing confirmation, serial number, and a reminder about the deadline to file your non-provisional application. In addition, you will receive a succession of communications during each month of your one-year window containing expert legal and patent advice to help you further develop and monetize your innovation.

Example of As Filed PatentFiler Provisional Patent Application

How do you retrieve your password if you forget it?

When you click on the Sign In tab on PatentFiler.com, you will be prompted to enter your e-mail and password. If you forgot your password, click on the Forgot Password? link underneath. Submit the e-mail address with which you registered your PatentFiler.com account. PatentFiler will send you a link with a temporary password, which you can keep or change after you log in.

What are "Claims" and should I include them in my Provisional Patent Application?

A claim is a phrase in a patent application which defines what the patent application seeks to protect and to what extent. For example, a claim could read: "What is claimed is a system for dual solar and wind powered ventilation comprising…" You should include at least one single claim to secure future rights, though this is not required by US law. We will add one broad claim to your patent application. We do recommend that you list a claim for each element you are seeking to protect in order to secure the broadest rights possible.

How can you put in a user-defined reference or docket number?

Enter information about your Provisional Patent Application under the "File" tab on PatentFiler.com. The second box is titled "Optional User File or Reference No." Enter your desired reference number in this box and it will be saved with your application, which you can view at any time when you log into your account.

How do I save and document the relevant prior art for the Provisional Patent Applications I have already filed?

PatentFiler is in the process of working on a streamlined method for quick and simple saving of relevant prior art. Currently, applicants have the choice of copying and pasting the links they find, through PatentFiler.com/search or from other sources, in the notes section of their portfolio. Applicants can print these notes when needed.

How can I better describe relevant elements that would be essential in claiming the novel aspects of my invention?

Your goal is to write a Provisional Patent Application that is as close to a non-provisional patent application without claims. To do so without a patent attorney is not easy, but is doable. See below for tips and templates for preparing and filing a Provisional Patent Application yourself using PatentFiler.com.

  1. Background: In the background section, discuss what the current state of the field of your invention is and what the problems are. Then, state why those problems need to be resolved (hint: your invention should help overcome these particular problems).
    • This section is fairly straightforward because it is very similar to a pitch.
  2. Figures: Create images of your product or draw out the process of your invention. Make sure you cover all aspects (i.e., if it is a physical object, create images of all perspectives).
    • After sorting the images into a particular order, start with the first image and begin labeling the parts and elements you think are important.
    • Create a table/spreadsheet that keeps track of all the elements.
  3. Detailed description: The detailed description essentially describes what is in the drawings, what the labeled elements are, and the elements' relationships to one another. Start by describing the invention broadly explaining what the invention is and then narrow the description to show the relationship between each element. (Make sure each and every element has been discussed!)
    • When describing physical structures, simply arrange the structures among simple lines and polygons, signifying the relationship of one structure to another. Try searching online to see how similar inventions are described in corresponding patents. (You can search using PatentFiler.com/search.)
    • If you become stuck, try imagining that you are describing the element or the relationships between the elements to someone who is not familiar with the field of your invention, such that every term you use, must be described using a more common/simple term. This is to ensure there are no problems of vagueness with your description
  4. Refer to this example template for more guidance.
What if I am unsure about pursuing Trade Secret Protection versus Patent Protection? For example, my product is in early development and it is unknown whether reverse engineering of the product will be an issue.

If the threat of Reverse engineering of a product is unknown in early development, we advise documenting your trade secret with a Provisional Patent Application (PPA).

By using a combination of PPAs and nonprovisional utility patent, in many cases an applicant can continue to maintain his application (and the underlying trade secrets covered in the application) in secrecy for several years by filing nonpublication requests.

If during the several years of exclusivity a competitor does successfully reverse engineer the underlying trade secret, the patent applicant can simply permit the patent to proceed to issuance

On the other hand, if no competitors are able to successfully reverse engineer the trade secret, an applicant following this approach maintains the option of abandoning the PPA or nonprovisional utility application and continuing on the trade secret route. By pursuing this route, the inventor may potentially maintain his or her invention in secret beyond the 20-year patent term.

Notably, on May 11, 2016, the President recently signed the Defend Trade Secrets Act (“DTSA”) into law.

PatentFiler Post-Filing Management Questions

How can I manage my portfolio of Provisional Patent Applications?

Use our Patent Management Dashboard to conveniently arrange, organize, and annotate multiple Provisional Patent Application filings.

How can I use the PatentFiler Management Dashboard?

Once you create a PatentFiler account and file your Provisional Patent Application(s), you can use your username and password to sign in and view every application you have filed. The management system features a list of your applications and shows its related information such as the Status, Serial Number, and Filing Date. You can click on each application to review the materials that were filed as well as make notes of anything you may wish to remember regarding a specific application. Your notes are saved chronologically and you can review and print them at any time.

Will I be reminded about my deadline to file a non-provisional patent application?

Our clients receive a succession of communications to help them during the 12-month period to file a non-provisional patent application. These e-mails include information regarding steps to take during your 12-month window before you file your non-provisional patent application as well as other time considerations. You need to calendar this 12-month period which begins on the "priority filing date" we send you. We will endeavor to provide you periodic reminders about the upcoming deadline, but you need to take primary responsibility for making sure this deadline is met.

How does PatentFiler’s back-end management system help me in the patenting process?

PatentFiler’s novel back-end management system gives monthly reminders and tips to help guide the applicant toward filing a non-provisional patent application. The purpose of a provisional application is to buy time to prepare and file a non-provisional. The duration of the one-year window before the provisional expires should be used to its fullest extent. There are too many times when applicants remember in the last few months that the deadline is approaching. Unfortunately, when this happens, the non-provisional that is ultimately filed may have been too hastily assembled and may be eventually rejected due to poor planning, proofreading, or lack of specificity. PatentFiler essentially provides peace of mind. An applicant that files through PatentFiler will know whether or not he or she is on track and will have the right tools at his or her fingertips.

Our back-end management system also provides a centralized portfolio for applicants to save printable notes and information regarding relevant prior art for the eventual filing of the non-provisional application. Prior art is especially important for patent prosecution because the USPTO requires all applicants to reveal a list of relevant prior art that the applicant is aware of in an Information Disclosure Statement. The USPTO does not take the duty to disclose lightly. If there is any evidence that the duty was violated through bad faith or intentional misconduct, the patent could be invalidated. Therefore, it is crucial to document all relevant prior art that an applicant comes across to avoid this form of invalidity.

How can I request a Patent Search and Opinion?

After filing through Patentfiler, a user can use their backend management system to request a search and opinion of their filed provisional patent application for $2,950. A patent search examines published documents, referred to as prior art, that are similar to your invention, such as patents, patent applications, and other related documents. By seeking a patent search from a professional, you further ensure that you are not overlooking any existing patents or prior art. The search results are then analyzed and an opinion of patentability is rendered and what expected scope of protection might be available. The opinion will also address any obvious blocking or potential infringing patents to be aware of.

Provisional Patent Application Questions

What is a Provisional Patent Application?

A Provisional Patent Application is a first step in the patent process. Provisional Patent Applications allow an inventor to document their invention or innovation and establish potential patent rights with a small monetary investment. Once filed, inventors can utilize the term “Patent Pending.” Provisional Patent Applications must be followed-up by the filing of a non-provisional, or regular, application within 12 months. See our Patent Info Page for easy-to-understand information about this process.

What is a non-provisional patent application?

A non-provisional patent application differs from a Provisional Patent Application in that a non-provisional application must contain at least one (1) claim, is subject to more extensive rules and regulations, and is fully examined. A Provisional Patent Application, by contrast, is not examined by the Patent Office and primarily serves to establish a priority date that a later non-provisional application may rely on (see below). A non-provisional application must include a specification, including a description and a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees.

Why should I file a Provisional Patent Application?

According to the United States Patent and Trademark Office (USPTO), a Provisional filing provides a simplified way to lower initial investment with 12 months to assess the invention’s commercial potential before committing to higher costs of filing and prosecuting a Non-Provisional Patent Application. The following is a list of other important benefits of filing a Provisional Patent Application:

  • Establishes an official United States patent application filing date for the invention;
  • Permits authorized use of the “Patent Pending” notice for 12 months in connection with the description of the invention;
  • Begins the Paris Convention priority year (within which a foreign patent application must be filed);
  • Allows for immediate commercial promotion of invention with greater security against having the invention stolen;
  • Permits applicant(s) to obtain USPTO certified copies of the Provisional Patent Application;
  • Allows for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition).
When should I file a non-provisional (regular) patent application?

You should file a non-provisional, or regular, patent application within 12 months of filing your Provisional Patent Application. During this time, all elements that have been described adequately and fully in the Provisional Patent Application can be claimed in the future non-provisional application.

Are Provisional Patent Applications filed prior to filing a design patent application?

Provisional patents are only filed for utility or regular patents. Design patents covering structures merely cover a product's ornamental appearance, whereas utility or regular patents cover the structure, function, and/or operation of an invention.

Do I need to speak with a patent attorney before I file my Provisional Patent Application?

Cislo & Thomas LLP offers an attorney consultation regarding your Provisional Patent Application at an additional fee of $250. The consultation is limited to one (1) hour of legal advice with a registered US patent attorney. If you wish, you may file your Provisional Patent Application without a consultation, which is not recommended.

It is important to get meaningful advice from a patent attorney to determine your best strategy, search for existing patents, file your own patent application, and then monetize your idea. You may want to file a more extensive and comprehensive Provisional Application after you file your initial application with PatentFiler. Each attorney at Cislo & Thomas LLP has a background in engineering or science and extensive training in his or her particular technical field. Therefore, we deliver intellectual property legal services of an exceptionally high caliber. In fact, Cislo & Thomas LLP has been ranked among the top 5% of all law firms in the country by Lexis-Nexis®, Martindale Hubbell®, and The Bar Register of Preeminent Lawyers. Each of Cislo & Thomas LLP's attorneys is registered to practice before the United States Patent and Trademark Office (USPTO).

How long does a Provisional Patent Application last?

If filed correctly, the term “Patent Pending” may be used for up to 12 months. Filing a Provisional Patent Application ensures a filing date to the applicant and is the first step toward filing a regular (non-provisional) patent application which in turn may result in the issuance of a U.S. patent. The Provisional will not mature into an issued patent unless the applicant files a non-provisional patent application within 12 months. The 12-month period may not be extended.

Can I extend the one-year window covered by my Provisional Patent Application?

No. Provisional Patent Applications are only effective for the year (12 months) after which they are initially filed. If one wishes to continue pursuing a utility or regular patent, a formal non-provisional patent application must be filed within the one (1) year window. A Provisional Patent Application can be re-filed after 12 months, but the earlier filing date will be lost.

Does a Provisional Patent Application ensure the issuance of a U.S. patent?

No. A non-provisional (regular) patent application is needed in order to ensure consideration by the United States Patent and Trademark Office (USPTO) for a US patent. A non-provisional patent application must be filed within one (1) year of the Provisional Patent Application filing date. We recommended applicants hire a patent attorney to assist in the preparation and filing of a non-provisional or regular patent application well in advance of the 12-month deadline.

Can a Provisional Patent Application be denied?

No. Provisional Patent Applications are not evaluated by the USPTO and thus cannot be substantively denied unless the USPTO fees are not paid, or the proper transmittal documentation is not provided.

Can I file my Provisional Patent Application if my product has been shown publicly or is already being sold?

The disclosures, sale, or public use of the invention anywhere in the world can bar patent protection in the U.S. There are limited exceptions to this rule. For example, a one (1) year grace period exists for “disclosures” by the inventor. Given the sometimes-complicated nature of this determination, it is always advisable to seek the advice of a registered patent attorney before deciding whether an event will impact the patentability of a given invention in the U.S. Note that this rule is different outside the U.S. as some countries follow an absolute novelty system where a sale or offer for sale can be a strict bar to patentability.

What happens if I do not file a non-provisional patent application within 12 months? Can I re-file my provisional patent application?

You have one (1) year from your Provisional Patent Application filing date to prepare and file your non-provisional patent application in order to claim an early priority filing date. Additionally, your Provisional Patent Application filing opens a one-year filing window to file any international patent applications. At the end of the one-year period, if you have not filed a non-provisional or international application(s), you could lose all rights to your Provisional Patent Application and your invention if proper safeguards have not been taken. The filing of a Provisional Patent Application reserves your intellectual property rights while you publish, promote, or sell your invention, allowing you to gauge the viability and marketability of your invention for a full year before making a much greater financial commitment. You need to calendar this 12-month period, which begins on the "priority filing date".

You may refile your provisional patent application subject to certain considerations. In the United States, an inventor may not file a patent application more than one year after either: (a) publicly disclosing the invention, or (b) offering the invention for sale. If you file a provisional patent application within that one year period, you get another year to file your non-provisional patent application. In other words, you may file a non-provisional patent application for the same invention up to one year after the provisional filing date. This is called “claiming priority” to the provisional filing date.

BUT, if you fail to file the non-provisional application within one year of the provisional filing date, you can no longer claim priority to the provisional filing date. It will be as if your provisional filing never occurred. At that point, you have to file another provisional patent application, but it must be within one year of either: (a) publicly disclosing the invention, or (b) offering the invention for sale. If you never discussed or offered for sale the invention described in your provisional patent application, you may refile your original provisional patent application. You may also include any new material you want to add.

For example, say that you publicly disclose your invention on June 1, 2015, and you file a provisional application on January 1, 2016. You may file your non-provisional up until January 1, 2017. But if you fail to file the non-provisional by January 1, 2017, it will have been 18 months since you publicly disclosed the invention and you will be precluded from obtaining a patent.

As another example, if you file your provisional on June 1, 2015, but do not publicly disclose or offer the invention for sale until January 1, 2016, you can still file your non-provisional after the provisional lapses on June 1, 2016. You will not be able to claim priority to the provisional after June 1, 2016, but you can still file your non-provisional application, or even another provisional application, up until January 1, 2017.

We do not advise allowing provisional applications to lapse, because we have a "first-to-file" system where the filing date is very important. So you should always file the initial patent application (provisional or non-provisional) as soon as possible. If you have filed a provisional application, you should strive to claim priority to it, however, if you cannot, and your one year time period lapses, you can refile.

All of this presumes that the provisional application sufficiently covers the invention disclosed or sold. Therefore, you should consult a patent attorney before or soon after filing a provisional application to assure proper disclosure of your invention in the provisional application.

Is there any danger that the USPTO will give others information contained in my Provisional Patent Application while it is pending?

No. Only non-provisional patent applications are examined and published. Non-provisional patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent application is published or moved to issuance. After the application has been published, however, a member of the public may request a copy of the application file. After the patent has issued, the Patent Office file containing the application and all correspondence leading up to issuance is made available in the Files Information Unit for inspection by anyone. Copies of these files may be purchased from the Patent Office.

Where can I learn more about Provisional Patent Applications?

The attorneys at Cislo & Thomas LLP have prepared a Presentation about this subject. Feel free to view the presentation here.

May I write to the United States Patent and Trademark Office (USPTO) directly about my Provisional Patent Application after it is filed?

The Office will correspond directly with your attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

What are the USPTO rules concerning the filing of Provisional Patent Applications?

The rules concerning the filing of a Provisional Patent Application are set forth in the Manual of Patent Examining Procedure (“MPEP”). See https://www.uspto.gov/web/offices/pac/mpep/

General Patent Questions

What is the difference between a patent, a copyright, and a trademark?

A patent is a grant from the federal government that gives an inventor the right to exclude others from making, using, selling, advertising, exporting or importing his/her invention.

A copyright grants a right to exclude others from copying, selling, performing, displaying, or making derivative versions of a work of authorship like music, a book, or a piece of art.

A trademark grants the right to exclusively use a brand name, design, slogan, sound, smell, or any other symbol used to identify and market goods and services.

What is the difference between a design patent and a utility patent? Can I file a design patent with PatentFiler?

Design patents cover/protect a product's ornamental appearance, whereas utility (regular) patents cover the structure, function, and/or operation of an invention. The USPTO does not allow Provisional Patent Applications for design patents. If you are seeking to file a design patent application, it is advised that you contact Cislo & Thomas since detailed drawings and strict formalities apply.

How does the America Invents Act of 2011 affect the patent process?

The Provisional Patent Application methodology began in 1995 and provided a low-cost option for initiating the patenting process. The American Invents Act (2011) has increased the importance of filing a Provisional Patent Application when seeking to ensure ownership of intellectual property. In years past, those with a proven date of invention had certain rights. The “first to file” system grants rights to those who file with the USPTO first. Thus, filing your invention as quickly as possible is key. Filing a Provisional Patent Application is the most cost-effective way to do so.

What do the terms “patent pending” and “patent applied for” mean?

These phrases are used by a manufacturer or seller of an article to inform the public that a patent application for that article has been filed with the United States Patent and Trademark Office. The law imposes fines on those who use these terms falsely in order to deceive the public.

Are there any state government agencies that can help me in developing and marketing my invention?

Yes. In order to assist manufacturers and communities, nearly all states have state planning and development agencies or departments of commerce and industry which seek new products and new process ideas. If you do not know the names or addresses of your state organizations, you can obtain this information by writing to the governor of your state.

If two or more persons work together to make an invention, to whom will the patent be granted?

If each person contributed a share of the idea(s) forming the invention as defined in the claims—even if only as to one claim—they are joint inventors and a patent will be issued to them both jointly on the basis of a proper patent application. If, on the other hand, one of these persons provided all of the ideas for the invention, and the other only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent shall be granted to him/her alone.

What is the difference between a provisional and non-provisional patent application?

A Provisional Patent Application simply allows an inventor to document their invention and establish potential patent rights by securing an early filing date. It does not secure enforceable rights and only grants permission to use the term "patent pending." It will not be examined by the Patent Office and is only valid for 12 months. Provisional Patent Applications are simple precursors to the filing of non-provisional (regular) patent applications as the time involved to prepare a provisional application is significantly less than the time involved to prepare a non-provisional application.

A non-provisional (regular) patent application goes through a long examination process at the United States Patent Office. If granted, a non-provisional patent application matures into an issued patent, which grants exclusive, enforceable rights to produce and sell the patented invention. A non-provisional patent is generally valid for 20 years (provided all USPTO maintenance fees are paid).

What is a patent search?

A common misconception is that if an invention is not on the market, then it must be patentable. Wrong. There are many ideas that are patented, yet never reach the marketplace. A patent search, also known as a patentability search, is a search for prior art similar to the invention for which you are trying to obtain a patent. Prior art references not only include issued patents and published patent applications, but also trade journals and other publicly available and searchable documents.

Why should I do a patent search?

Patentability searches are optional. However, inventors are encouraged to conduct a search for their invention as it serves at least two primary benefits. First, if the search uncovers an invention very similar to your own, you can save yourself the time and costs associated with the filing of a patent application and rethink your business strategy. Second, a patent search gives you an idea of the types of patents and patent applications already out on the market which can help you design around the prior art or even take the current state of the technology to the next level. The goal of inventing is to improve upon what already exists. Click here to learn more about professional patentability searches.

How do I go about doing a patent search?

Conducting a search can be an art form. As a rough guide, try using keywords that describe what your invention is or what your invention does. Start with the most basic, generic, and obvious description and function of your invention. Next, consider synonyms for the keywords and then think of terms that describe the keywords broadly or categorically. Now, consider the terms more specifically as in a hierarchy of terms. For example, if your invention had something to do with a "pen,” broader and categorical search terms would include a "writing implement" or a "writing instrument.” More specifically, you may be looking at a "ballpoint pen" or a "fountain pen".

Is it necessary to be physically present at the USPTO to transact business concerning patent matters?

No. Most business with the Patent Office is conducted by written correspondence.

How do I give my IP rights to another individual or company?

An inventor may give their entire interest in the invention to another by signing an Assignment. (Click here to view an example of a Patent Assignment.) Once the assignment is executed (signed and dated), the assignment should be recorded with the USPTO’s Assignment Recordation Branch. The Assignment Recordation Branch does not conduct title searches or verify the validity of the document. Therefore, the assignee, assignor, and potential buyers need to make sure that there is an accurate chain of title in place. Assignments filed with the USPTO’s Assignment Recordation Branch may be found at http://assignment.uspto.gov.

What is a design patent and can I file one with PatentFiler?

Design Patents only protect the ornamental appearance of an item. The USPTO does not accept provisional applications for design patents. Detailed drawings are required and strict formalities apply. Please call Cislo & Thomas LLP if you need assistance.

Do I need to assign my Provisional Patent Application at the time of filing or can I wait until the subsequent utility application is filed?

Provisional patent applications do not need to be assigned upon filing. However, it is a good idea to get an assignment executed by an inventor(s) sooner rather than later if another person or entity intends to own the rights to the patent. An example of this would be when there is a contractual duty to assign the rights, or in an employment situation where the inventor(s) is an employee. Generally, waiting until the non-provisional patent application is filed may be risky as in the case of an unfortunate event such as the death or disability of an inventor(s), the reluctance of an inventor to execute an assignment due to their separation from the company, or some other unforeseen circumstance.

If I do assign my Provisional Patent Application, do I need to record the assignment with the USPTO?

There is no duty or obligation to record your assignment with the USPTO, but it is a good idea to do so. You may later misplace or lose the assignment or simply forget to record the assignment later. The recordation of the assignment makes the assignment official with the U.S. government as to who actually owns the patent rights. Assignment records for provisional patent applications at the USPTO are only available for public inspection after a patent issues or an application is published. Therefore, even if you assign your provisional patent application, the assignment will not be available for public inspection, unless or until your subsequent non-provisional patent is published or issued.

Can I use Patentfiler to register a trade secret?

Yes. Patentfiler filings are kept confidential at the United States Patent Office and can be used to record and register any claimed trade secrets. If necessary, we can obtain certified copies of any filings from the U.S. Patent Office to document the trade secret and its date of filing. The certified copy is self-authenticating and can be uses as an official government record in many courts of law.

Non-U.S. Applicant Questions

Can PatentFiler provide a patent date for inventors outside of the US?

Yes. Non-U.S. inventors should strongly consider the benefits of a U.S. Provisional Patent Application, not only because it is simple and low-cost, but especially because the recent passage of the America Invents Act (AIA) introduced further benefits to foreign filers who submit a Provisional Patent Application. Before filing a Provisional Patent Application in the United States, inventors should verify that this strategy is agreeable with their own national patent laws. Some countries restrict an inventor's ability to file for a patent in a country other than their own for certain technologies, especially if the foreign filing precedes a national filing. A common restriction is one in which inventors must first file a national application in their own country or obtain a specific authorization before filing in a foreign country. This rule is usually restricted to military technology (which may threaten national security).

China and Portugal represent countries with exceptionally broad restrictions. China requires a foreign filing license before filing nearly any kind of patent in another country. Portugal imposes an across-the-board requirement that all patents must be filed nationally first. In addition to inquiring after their own country's particular national filing laws, it may also be helpful for inventors to research that particular country's definition of a national patent. In the U.S., Russia, and China, for example, the national patent for certain technologies must be filed in the country where the invention was made or conceived.

In other countries such as the UK, India, and South Korea, the application may need to be filed in the country of which the inventor is a resident, regardless of where the conception took place. Other countries such as Australia, Japan, and Indonesia, impose no such security restrictions in this matter. Once an inventor has inquired after the plausibility of filing a U.S. Provisional Patent Application based on his or her own country’s national filing laws, he/she can consider the numerous benefits of a U.S. Provisional Patent Application. Provisional Patent Applications require no claim language. Due to its low content and lack of translation requirements, as well as the small size and frequency of its fees, the U.S. Provisional Patent Application offers foreign inventors an excellent value in terms of time and financial investment.

Furthermore, applicants who face time pressure may benefit from a time-zone difference if they file from a country east of Washington, D.C. The legally valid filing date is the calendar date at the time of filing in the country receiving the filing. In other words, if a filer from Europe files an application in the U.S. at a time of day when their country is one calendar day ahead, they will secure an earlier filing date than their neighboring competitor who files at home at the same time. Lastly, by filing a Provisional Patent Application, an inventor gains an additional year of exclusive rights to their invention. In other words, regular (non-provisional) patents, if granted, entitle a patent holder to 20 years of exclusive rights beginning on the date on which their non-provisional (regular) patent application was filed. If a filer, however, first submits a Provisional Patent Application up to 12 months ahead of their non-provisional application, they will enjoy up to an additional year of exclusive rights since protection is also granted within this Provisional period. Their invention would enjoy exclusive protection for up to 21 years instead of 20. Another factor which makes the U.S. Provisional Patent Application an attractive alternative for foreign filers is that the U.S. Provisional Patent Application also offers a unique “grace period,” meaning that the invention will not be disclosed to the public during this time, which is different from the parallel European process.

(Read more at: http://digitalcommons.law.scu.edu/chtlj/vol30/iss4/1.

How long does it take from the time that I file my Provisional Patent Application with PatentFiler to the time that I receive a filing confirmation and serial number?

Generally, you will receive a confirmation e-mail enclosing the serial number and filing date within two (2) business days of your submission. You can also view this information by signing in to your PatentFiler account. It will be listed on your Patent Management Dashboard.

Where can I learn about my country's rules for filing a provisional patent application outside my home country?

Please see FAQ below: "International Applications and National Security Considerations For Different Countries."

Can I file a Provisional Patent Application from a country other than the United States?

The patent laws of the United States make no discrimination with respect to the citizenship of the inventor. Any inventor, regardless of his/her citizenship, may apply for a patent on the same basis as a U.S. citizen. However, you must supply a mailing address within the United States. If you file through PatentFiler, you have the option to request your domestic mailing address to be in care of Cislo & Thomas LLP.

Can I have a non-patent attorney file my Provisional Patent Application on my behalf regardless of whether I live in the United States or a foreign country?

Use of a patent attorney to draft and file your provisional patent application is highly advisable to ensure that the full breadth of your invention is covered in the written description. Patent attorneys may use PatentFiler to file your application on your behalf. However, non-patent attorneys may also file on your behalf. In this case if you and your non-patent attorney sign a power of attorney form, stating that you give your attorney the power to prepare and file your provisional patent application, an attorney specializing in any field may do so for you.

International Applications and National Security Considerations For Different Countries

Read more at: http://www.wipo.int/pct/en/texts/nat_sec.html

Patent Application Templates

Patent Preparation Template – Method or Process

Patent Preparation Template – Software or E-Commerce System

Patent Preparation Template – Chemical, Formulation, or Compositions

Patent Preparation Template – Equipment, Parts and Mechanical Devices