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By J.D. Houvener
Patent Attorney and Founder

All right step one lighting okay two oh yeah yeah script three get the room lighting right oh perfect okay preparation comes with everything right how to get started today i’m going to talk with you about how to get ready to file a provisional patent application i’m jd hoovener uspto patent attorney and managing partner here at bold patents law firm it’s my pleasure to talk with you about these steps and how to prepare to file a provisional pad application [Music]

[Music] today so i’m going to go through a table of contents here real quickly because this video may be longer than you want to sit down for so you can forward ahead and jump to the section you’re most interested in how to prepare for your patent application filing the first steps are actually not writing at all but instead doing the research so we’re going to talk about what preparation needs to happen for your patent searching second getting a legal opinion on is it patentable thirdly you’re going to want to focus on the writing itself once you’ve gotten the green light from your patent attorney that it’s eligible and your opinion is that we should file the next step is going to be getting your written description so we’ll talk about that after that we’ll talk about the drawings and the figures that go into that last but not least of course the all-important documents the oath declaration and all the the filing documents that come with the formality of filing with the uspto so let’s take up the first one first before you start writing right do the research so what’s it going to take for you to first crack open the website called google and take a look at and see if is your invention already out there i wrote a book bold idea is the inventor’s guide to patents i want you to take a look at that this book is on our website available for free downloads a pdf it’s a quick right hour and a half read in the back i’ve got resources for you to begin doing your own search i think it’s critical for inventors just like you to start doing all this searching to make sure you get a grasp of what else is out there um you might think based on your own experience in your own life or your industry what you’ve created is first you know one-of-a-kind but you’ve got to do the research to make sure you’re not going to be spending time money right hiring professionals like us to do the work and paying too much money before you’ve done your own diligence this is the first step of making sure that you have confirmed for yourself that this is really unique and there’s nothing else out there like it once you’ve done that it’s time to seek a professional and of course patent attorneys is who i’d recommend going to the main reason why going for a patent attorney versus a patent agent is you’re looking for legal advice the critical part here is that you don’t want to just you know get mired down in the details of your invention you’ve got to think about how it’s going to be enforceable afterwards right and the legal training you get at law school will help you think about what a judge and a jury would look at in terms of enforcing an infringement action so working with an attorney to do that research with you to look at the databases they may have access to and give you their legal opinion is the best next step so step two is work with an attorney to get an opinion on whether your invention is patentable so there are three main components that go into patentability novelty non-obviousness and utility novelty is all about hey is my invention new uh third second one is is it non-obvious right is your invention different enough from other inventions out there so that it can actually be you know uh understood in the industry meaning is it something that has already been done before but slightly differently in the past and there was an obvious you know next version and your yours is that next version it’s probably not going to be patentable so those are the the two big first steps of a patentability report the third one is utility you’ve been able to demonstrate that your invention has novel functionality you have to demonstrate that it’s actually going to provide benefit to someone today in today’s technology uh today’s world all right um the last step to take and that opinion you’re getting from that attorney is eligibility right are you even going to have the ability to get a patent you’ve got to be able to fall into the four major buckets of is it an apparatus an assembly composition of matter or a method or process those are the four major types and so those types of patents are those that are eligible and are able to get a patent the problems that can come up are those that are inventing in computer space right software or developing a new type of algorithm or data structure or analytics but there’s no real tangible where you can’t touch it and grab it those are types of inventions that do have trouble getting through the patent office and examiners will look at those pretty carefully and so your your attorney will take the time right before you start drafting that provisional application to make sure it’s the it’s actually going to be able to qualify uh under that domain the high level rule on that is if you can draw it down to what’s called a practical application right you’ve got a computer implemented invention that solves some sort of a data compression uh algorithm right you’re able to put video pixels and shrink it down and then expand it back out on the other side that compression algorithm as long as you can show that what you’re what you’re doing is visible right to some human or provide some way to make the whole process more efficient save time save money right that’s all a benefit and utility to where you’re actually going to get toward eligibility but if you can’t really show that and all you’ve come up with is a new equation or an algorithm natural phenomena or it’s so abstract that it’s hard to pinpoint what exactly it is it’s not going to be eligible so getting that that knowledge up front is what’s going to set you free and get you started on the right track so let’s once you’re clear through those first two hurdles right you’ve done your own research you’ve hired an attorney to get an opinion on is it patentable is it eligible now you’re going to start writing so this is what you probably tuned in for this program for is how to get started in writing the provisional patent application real quickly a provisional application is the less formal version the more formal version is the non-provisional patent application i would encourage you to go visit our website and take a look at our blog article we’ve written articles on what’s the difference between provisional and non-provisional and i won’t get into that detail right now the key for the provisional is the written description this is where you’re actually going to spend the majority of your time working with your attorney if you’re hiring an attorney and writing what your invention is about within this there are two major steps the written description is paid writing about what your invention is so describing it in as much detail as possible um and while i could go on and on about that i want to make sure i underline this point and that as inventor you’ve probably got in your mind or maybe you even got a prototype but what your invention looks like that version is sure it’s the one you’re thinking of it’s the one that you probably are hoping will go to market and sell like crazy but i’m as in a patent attorney we’re going to be telling you that’s probably not the only version you’re going to get in fact you probably shouldn’t stop there in terms of what other alternative embodiments you will want to get rights on so we’ll work you to develop alternative embodiments so we’ll discuss the full length all the full description of your invention and then ask you what other materials could this be made of what kinds of functionality could this have in industries completely different from what you’ve brought this to us with all right so now you’ve done the hard work of the diligence doing your own search you figured out that yeah it’s time to hire a patent attorney and you’ve hired a professional to give an opinion on patentability now it’s time to write your patent application congrats you’ve got a potentially patentable invention so the written description right this is where you put pen to paper or you know keys hands to keys and start writing working with your your attorney you should be working closely with them on describing your the full version of your invention this is something that will take time and oftentimes i find that working with clients i need a way pull the invention out of them and really you know expand what they have in all the details sometimes inventors are steeped in their you know invention right they’re deep into it they’re they don’t see the forest from the trees and so taking a step back helps them to realize oh yeah i should include a description about the fender when of course their invention may be about a specific notch and the grille of the right side of it okay and so really understanding and expanding that written description can take weeks to get done right and the catches we don’t stop there you don’t just stop with a full description of what the invention is you need to then expand and talk about other alternative embodiments but that’s what the next step is is think about other types of materials different types of ways your invention could apply in industries outside of your own so we talk about the example of a fender right you come with a new style of a grill or a fender for airflow um well why wouldn’t that be applicable in let’s say aeronautics maybe that could be applied to an airplane or who knows even outer space okay we’ll get really creative because the provisional application is the basis for what will become the non-provisional and the non-provisional is what will actually put claims down right actually claim what your invention is about um beauty of having a large expansive provisional is you’ve got this palette to draw from right a painter paints a you know beautiful work of art from the palette they have that’s all they’ve got to work from in the same light when you paint your claims in the non-provisional your palette is all they can draw from is what’s in the provisional so we’ve got to lay out that palette as broadly as we can in as much detail as possible all right so having the written description complete and website you know for most simple inventions we like to get at least 10 pages of description if possible describing each element or two in a few paragraphs and to make sure we get as much there as we can the next step is to put down some drawings some figures right and so don’t get too worried about making these figures perfect and three-dimensional cat and shading and all the elements that’s for later there are formality depictions that need to be into the figures for the non-provisional but the great thing about a provisional is there’s no requirements you can put photographs hand sketched drawings really informal drawings that will help anything that’ll help the the reader the someone else in your field or the eventually the patent examiner understand your invention more fully oftentimes there are features or elements or shapes that just don’t have words and the images and figures are there to supplement to provide additional explanation for what your invention is and how it can be achieved that just can’t be done via words so don’t hold back create put as many figures as you think you need to describe your invention and yes all those wacky alternative embodiments that will help push you to write about as well so the last thing last thing we’re talking about today is the filing documents yeah this is the this is the most thrilling part right no just kidding there’s a set about five or six docs that do need to get submitted the most important in my opinion is the application data sheet and the oath and declaration as the inventor you signing out saying that you are truly the inventor of this product for this invention this system and if there are any other co-inventors this is your obligation to bring those parties in now all co-inventors must be named if there are any on the patent application the application data sheet includes the basics right your first name your last name uh where you’re from the address the correspondence address and if there are any assignments to a company or third party again there’s a big difference between an inventor and an owner if you’re an inventor you may be an employee at a company and your employer may be the assignee the owner of that invention the application data sheet is where all the information is stored last but not least you simply file it and 99.9 of all applications today are submitted electronically via efs web electronic filing system at that’s a wrapper buddy so i hope you enjoyed kind of learning about how you can prepare right get that checklist going on preparing to file your provisional patent application and don’t forget it doesn’t start with just starting writing you must start with doing the research first on your own then hiring a patent attorney to do it for you to confirm patentability on eligibility patentability and then only then if you’ve got the green light from your patent attorney to file start writing the written description form the full embodiment that you’ve created then think about alternative embodiments last but not least get those figures done and then get it filed correctly at the uspto i’m jd hoofner managing partner and owner here at bold patins law firm it’s been a pleasure talking with you about this today have a great day everybody go big go bowl

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at