Patent Attorney and Founder
All right, step one, lighting. Okay, two… oh yeah, script. Three, get the room lighting right. Oh, perfect, okay. Preparation comes with everything, right? How to get started today. I’m J.D. Houvener, 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 patent application.
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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 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, 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 your invention is already out there? I wrote a book, “Bold Ideas: The Inventor’s Guide to Patents.” I want you to take a look at that. This book is on our website, available for free download as 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. You might think based on your own experience in your own life or your industry what you’ve created is first, one-of-a-kind. But you’ve got to do the research to make sure you’re not going to be spending time, money, 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 are who I’d recommend going to. The main reason for 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 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 to 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?” The second one is, “Is it non-obvious?” Right? Is your invention different enough from other inventions out there so that it can actually be 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 yours is that next version? It’s probably not going to be patentable. So those are 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, today’s world. The last step 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 attorney will take the time before you start drafting that provisional application to make sure it’s actually going to be able to qualify 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 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 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 knowledge upfront 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 patentability, 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, boldip.com, 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. And while I could go on and on about that, I want to make sure I underline this point, and that as an 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 as 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 attorney, you should be working closely with them on describing your full version of your invention. This is something that will take time, and oftentimes I find that working with clients, I need a way to pull the invention out of them and really expand what they have in all the details. Sometimes inventors are steeped in their, you know, invention, right? They’re deep into it, 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 catch is 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. The beauty of having a large expansive provisional is you’ve got this palette to draw from, right? A painter paints a 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 reader, someone else in your field, or 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. The last thing, the last thing we’re talking about today is the filing documents. Yeah, this is the most thrilling part, right? No, just kidding. There’s a set of 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’re 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 uspto.gov. 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 J.D. Houvener, managing partner and owner here at Bold Patents Law Firm. It’s been a pleasure talking with you about this today. Have a great day, everybody. Go big, go bold.