Provisional Patent Applications,The Good, The Bad, and the Ugly

Provisional Patent
Applications,
The Good,
The Bad, and the Ugly.
Copyright FLYNN IP LAW 2017 1

Provisional Patent Applications,
The Good, The Bad, and the Ugly
SBTDC Webinar
April 26, 2017
By Kevin E Flynn

Provisional Patent
Applications,
The Good,
The Bad, and the Ugly.

Disclaimer
• To have the best chance of good results, it is
ideal that you work from the start with a
patent attorney.
• However, some people are not ready or able
to do that.
• So I am giving you pointers on how to do a
better job of creating a draft provisional
application for review by a patent attorney.

Disclaimer
• Each invention benefits from a slightly
different approach in drafting the patent
application.
• Generic guidelines here are not tailored to
specific inventions.
• Filing a provisional patent application without
getting a review and guidance by a patent
attorney is a REALLY BAD IDEA.

Patent Attorney as Editor
Some of my clients that have budget constraints
so that they cannot afford to have me write
their provisional application – write a draft and
then….
• Pay for my time to review and provide a
heavily annotated draft with suggestions for
changes or expansions.
• This can be a cost effective way to infuse
quality at a reduced cost.

Provisional Patent
Applications
The Good

Why consider a
Provisional Patent Application?
• A provisional patent application is an
alternative to a regular utility application
(sometimes called a non-provisional
application).
• A provisional application can be less
expensive to draft than a regular (non-
provisional) application.

Why consider a Provisional?
• You can claim the benefit of the
provisional application if you file a
non-provisional application within a
year.
• The provisional patent application
expires after a year.

Secret
• A provisional application is never
published.
• A provisional application becomes
available to the public ONLY after a
non-provisional application that claims
the provisional application becomes
available to the public (as a published
application or an issued patent)

Provisional Helps With
Chicken & Egg Problem
• Want to raise money, discuss with potential
clients, compete for grants, do extensive testing
in public…
• But need a patent application on
file….
• But before you file a patent application you want
to raise money, discuss with potential clients,
compete for grants, do extensive testing in
public…

Opportunities for Cost Savings

Drawings
• Formal drawings take time to create
and to label with all the element
numbers.
• Then more time is used getting those
element numbers into the
specification each time each noun is
used.

Provisional Application Drawings
ANYTHING GOES
• Can be hand drawn.
• Can be a photograph.
• Can be in color.
• Can skip (for now) the element
numbers.
• Can embed in the specification (like a
magazine article).

Photos are your Friends
• Take lots of photos.
• Take photos from different viewpoints.
• Zoom in, zoom out.
• Take photos of each component.
• Take photos after each step of assembly.
• Small downside is that lots of photos may mean
you have to divide the file up when you upload.

More Cost Savings
•Can skip redundant parts
required in a non-
provisional application.

Skip (for now)
• SUMMARY OF THE DISCLOSURE
(SOMETIMES CALLED SUMMARY OF THE
INVENTION)
• One way to summarize some of the many teachings of the present disclosure is a method for
production of sterile surgical slush outside of a sterile field and subsequent delivery of sterile
surgical slush to the sterile field. The method may be described as:
• placing a quantity of sterile saline into a non-sterile slush making device located outside of the
sterile field, the sterile saline contained in a slush container, a set of interior and exterior surfaces
of the slush container starting as sterile;
• the slush container enveloped by a sleeve assembly comprising a container sleeve that covers at
least a portion of the slush container and a sleeve cap engaged with the container sleeve, the
sleeve assembly is initially sterile but an exterior of the sleeve assembly is deemed not sterile not
later than once the sleeve assembly with slush container is placed into the slush making device;
• removing the slush container enveloped by the sleeve assembly from the slush making device after
conversion of the sterile saline to sterile surgical slush;
• separating the sleeve cap from the container sleeve to expose a portion of the slush container; and

Skip (for now)
• Brief Description of the Figures.
• Sort of a bill of materials/table of
contents that explains what each
figure shows.

Example
• FIG. 1 shows a slush
container 100 with a slush
bottle 110 and a lid 104.
• FIG. 2 shows a front plan view
of a slush making
machine 130.

Can skip the Abstract
• Don’t worry about the abstract
unless you want to share with
your VC folks an abstract of what
was in the provisional application
you filed.

Example
• ABSTRACT OF THE DISCLOSURE
•
• Production of sterile therapeutic medium
such as sterile surgical slush for use in surgery. A
sterile slush container with a sterile sleeve
assembly so that the outside of the sterile slush
container remains sterile after placement in a
non-sterile slush making machine so that the
sterile slush container may be returned to the
sterile field after removal of the sterile slush
container from the sleeve assembly.

Claims can be omitted
• A patent claim is a legal right to prohibit
others from making a product or
providing a service covered by the claim.
• This is why you work so hard to get a
patent.

Claim Drafting is Expensive
• A patent claim is a cross between a technical
disclosure and a poem.
• The claim must describe how your invention is
new and different but ideally uses abstractions
where possible to provide broad coverage.
• A great deal of time goes into picking the right
words.
• Claim set includes claims of different scope.

NOTE
•While the fine tuning of
language for the claims can
be put off until you draft
the non-provisional
application—

NOTE – part 2
It is really smart to at least
make a wish list of what you
hope to get out of the claims so
that you can focus the
provisional application to
support that wish list.

Background
• The background information is technically not
required as it does not describe your
invention.
• It is frequently useful, even in a provisional
application to introduce the environment
where your invention is used and to introduce
relevant concepts so you don’t have to do this
in the detailed description section of the
patent application

Discussion of Prior Art
• This can feel productive to write lots of
text discussing prior art patents or
devices.
• But there are many ways that this
material can come back and cause
problems. Many patent attorneys have a
default rule of no discussion of the prior
art within the patent application.

Discussion of Prior Art
• You may want to prepare a
summary of how your invention
differs from the prior art as a
separate document to be shared
with the patent attorney.

More Good
• The end date for an issued patent is
20 years from the filing date of the first
non-provisional application in the family.
• So filing a provisional application and
then waiting a year to file the non-
provisional application slides your patent
term out so your patent expires later.

Sliding Out the Term
• Sliding out a year is usually not on the
minds of entrepreneurs, but it can be
important if the bulk of the value from
the patent comes from the later years.
(
).

Another GOOD reason to consider a
When you have
a need for
Speed.

Provisional Applications
Can recycle text that you have
from:
• A technical article about to publish,
• A grant application you are about to file
• A PowerPoint slide set that you are going
to give next week.

This is SUB-OPTIMAL
• Using text from documents intended for
other purposes is NOT the best way of
drafting any sort of patent application.
• But if it is a question of recycling or
letting rights lapse – you do the best
you can.

Provisional Patent
Applications
The Bad

That bit about cost savings…
• The only savings come when the idea
is a dud and you do not file a non-
• If the idea is good and you file a non-
provisional application, then the
total cost is more.

More More More
• More filing receipts.
• More assignments.
• More reminders.
• Costs to write the non-provisional may
still be substantive. Everything you
skipped in the provisional must
eventually be done.

Cost Savings
• To the extent that you have the time and
budget to write a provisional application that
is essentially an initial draft of a non-
provisional application, then there is less
waste.
• If your provisional application is nothing
like a non-provisional application, then the
patent attorney will essentially start over.

Provisional Patent
Applications
The UGLY

YOU MAY LOSE IT ALL
• A poorly written provisional
application coupled with a lack of
understanding of the process can
lead to a situation that CANNOT be
fixed when you finally call in a patent
attorney to write the non-provisional
application.

THERE IS NO “Placeholder”

Provisional Application
File a Substantive Provisional Application
Or DO NOT File a Substantive
Provisional Application
There is no provisional
application.

To Understand
I need to explain what MUST be present
in a non-provisional application
beyond.
the required sections (title, brief
description of the figures, specification,
claims, abstract, drawings where
needed….)

• Enough detail to explain to a person
of ordinary skill in the relevant field –
• HOW TO MAKE and USE the
invention.
• This includes what you think is the
best way of doing it, if there are
several ways.

You cannot seek a patent
by giving an inferior way
to do your invention
while withholding the
best way to do your
invention.

• You need to show that you are
in possession of the invention.
• A patent application is not a
lottery ticket where you try to
guess what people may
someday invent.

You need support for your claims
• If your patent application does NOT
meet the various tests for supporting
the language of the claims – then the
claim will not be allowed or if
allowed, may be invalidated when
you try to assert the claim against a
competitor.

But what about for a
Provisional Application?
• How are the rules more
relaxed for a provisional
application versus those strict
requirements for substance for a
non-provisional application?

But what about for a Provisional
Application?
• How are the rules more relaxed for a provisional
application versus those strict requirements for
substance for a non-provisional application?
NOT RELAXED
AT ALL

LACK OF SUBSTANCE
EQUALS FAILURE
By the Time you Realize that you
have a lack of substance…
it is often TOO LATE TO FIX.

How does this Happen?
• Folks assume that if a
provisional patent application
can be less formal then it must
be OK to be less substantive.
WRONG.

If a non-provisional application is a
campground fully set up…

Then a provisional application is the
SUV loaded for the camping trip.
The SUV can have the camp
stove broken down for transport
with the fuel canisters in
another part of the SUV
At the camp site, the stove is
assembled and connected to the
fuel.
The fishing poles do not have
the hooks and bobbers
connected. The artificial bait is
packed in the tackle box.
The fishing pole is prepped for
use just before fishing.
The tent is folded and stored
with the stakes, the hammer for
the tent stakes and the ground
tarp are in the SUV but not near
The tent is fully assembled.

You can rearrange and add focus
• So one can make substantial changes from the
provisional application to the non-provisional
application.
• BUT – the essential elements (stove and fuel),
(poles and hooks), tent, stakes, ground tarp, and
hammer must all be present.
• If some important elements do not get into the
SUV, you don’t have them at the campsite and
this may have serious consequences.

Provisional Applications that lack
essential elements …
• If a provisional application does not have all
the required material for a non-provisional
patent application including support for all
the desired claims then there may be a fatal
problem.
• The material may be added in the non-
provisional application but then the claims
are judged against the date that the non-
provisional application is filed. THIS MAY BE
TOO LATE.

Why TOO LATE?
• You need to have the substance
in a patent application that is on
file before certain milestones.
• Folks with a non-substantive
provisional application do not
know what they do not know.

Milestones
• BEFORE A PUBLIC USE INCLUDING A
USE AT A TRADE SHOW OR A BUSINESS
PLAN COMPETITION.
• USE UNDER AN NDA WOULD BE OK –
so you can demonstrate to a potential
customer who has signed an NDA.

Milestones
• BEFORE A PUBLIC SALE.
• SALE UNDER AN NDA WOULD BE
OK (we think)

We think a non-public sale is OK
• Here is a portion of 35 USC 102
• Novelty; Prior Art.—A person shall be entitled to a patent unless—
• (1)
• the claimed invention was patented, described in a printed publication, or in
public use,
• on sale, or otherwise available to the
public before the effective filing date of the claimed invention
• Most people, including the United States Patent and Trademark
Office read “On Sale” as On public Sale. So a sale under
a non-disclosure agreement would not count. This will not be
100% known until it is ruled upon by the Federal Circuit or the US
Supreme court but for now, most people feel safe making sales
under an NDA.

Public Disclosure
• US Rules allow you to file a patent application
within a year of your own public disclosure.
• BUT Many Other Countries want ABSOLUTE
NOVELTY so a public disclosure
terminates your options for those
countries
• (And makes things more complicated in
the US)

Guide to Producing
A less bad,
DIY draft provisional
patent application.

Step 1
Do some patent
searching to find
relevant patents to
use as examples.

Patent Searching Tips
• See slide set on patent searching found at
• http://www.slideshare.net/search/slideshow?
searchfrom=header&q=%22Kevin+E+Flynn%2
2&ud=any&ft=all&lang=en&sort=

Why Search?
• Searching provides you with examples of the
level of detail that is useful.
• You may find prior art that is close to some
aspects of your invention. It may be time to
put focus on the parts of your invention that
are not found in prior art patents.

Step 2.
• Create a Wish List of what you hope that
the patent will prohibit your competitors from
doing.
• Be reasonable do not try to claim something
that was not commonly done in your
field. If it has been done at all, then it
would be difficult to patent.

Use the Wish List as your Compass
• The Wish List does not have to be in the
patent application. (May be best if it is not
there).
• But USE the Wish List to guide what gets
emphasized in the patent application.
• Use the Wish List as a check list at the end to
ensure that you have adequately supported
what is on the Wish List.

Step 3
• Get a proposed sequence of images first,
then work on the text.
• A patent application should be driven by the
images.
• You can do your first draft in PowerPoint using
the speaker notes function.
• Feel free to add images if needed to make a
transitional point.

Do not Worry About FIG Numbers
• You will add and delete Figures during the
process.
• So Start with FIG. A, then FIG B, but feel free
to add FIG. A1 between them.
• And then feel free to Add FIG. C and drop
FIG. B so that there is a gap in the sequence.

Step 4
Describe the images.
• Start with big picture concepts where
relevant.
• Wa l l o w in the details.
(Boring or slow moving is not a sin in this
domain).

Step 5
Maintain a list of nouns.
• As you add a noun, add it to the list.
– List can be a spreadsheet or Word Table so you
can sort.
Noun Name Element Number (if
used)
Figure where Best
seen
Slush container 100 A1
Slush bottle 110 A1
Lid 104 A1

Step 5
Noun Name Element
Number (if
used)
Figure where Best
seen
Slush
container
100 A1
Slush bottle 110 A1
Lid 104 A1

Step 5 - ALT
Instead of a list,
you can annotate the
drawings with your
names

This is tedious
• But using nouns consistently is part of writing
a patent application and removes ambiguity.
• A variation of a part used in a new
embodiment can get an alternative name and
should get a new number if you are using
numbers.

Use Longer Names
• Some systems have lots of components.
• So do not shy away from
–Master Arbiter West Port.
–Can assign a shorted
abbreviation.
EX. FIG. A6 contains Master Arbiter West Port
(“MAWP”). The MAWP receives incoming Hello
messages…

Step 6
• Focus on a first embodiment
then handle variations and alternative
embodiments.
• This is a rule of thumb and can be violated
when appropriate.
• Goal is to be clear on a first embodiment
without confusing reader by discussing
alternatives before the first embodiment is
clear.

Step 7
• Add a section where you go through
the sequence to
make/assemble/configure/customize
the item or process.
• Add a section where you go through
a sequence where an end user uses
the device or service.

More than one Use Case
For a device or service that may have more than
one use case, feel free to have an additional
use sequence for each major use case.
• Ratchet Wrench use case to drive hex bolt
head.
• Ratchet Wrench use case with adapter to drive
Phillips head screw.

The Sequences
In the non-provisional patent
application, these sequences may
be dressed up as flow charts but
that is not required now as long as
you put the details into words.

The Sequences
The sequence exercise
seems juvenile, redundant,
and not helpful.
TRUST ME.
This extra step usually captures at least one
noun or process step that was not in the draft
before these sequences.

Step 7
Describe a Second Embodiment
• Normally this can be done after a complete
discussion of the first embodiment, including the
sequences.
• Usually the Second Embodiment has some
overlapping nouns or process steps so you can
focus just on what is new.

Repeat with More Embodiments
• Each successive embodiment is
apt to take less work as there will
be more and more in common
with at least portions of earlier
embodiments.

Favorite Embodiment
• Your favorite embodiment does NOT have to
be the first embodiment.
• I sometimes describe the most simple
embodiment first and then describe the
favorite but more complicated embodiment
later.
• You do not have to officially declare which
embodiment is your favorite.

Variations
• Sometimes you have alternatives that do not need a
detailed description.
The disclosure shows a power supply
connected to an AC power source. Those
of skill in the art will appreciate that a DC
battery may be used as well as AC power
operated at something other than 60 Hz.

Goal of Alternatives and Variations.
Showing the favorite
embodiment is not enough.
Think of the favorite
embodiment as the bull’s eye
of the target.
It would not be a total success
if you allowed a competitor to
make a product in the inner
red ring.

Goal of Alternatives and Variations.
Goal of describing
alternatives and variations
is to try to take off the
table the next several
rings of alternative
solutions that are still
viable.
Want any design around
solutions to be as far from
the optimal as possible.

Step 8
Bill of Material or Vendor List
• This is not required but can fill in
gaps.
• Akin to … a picture speaks a
thousand words.

Example
• A suitable controller for use as
described in this document is the
Productivity3000 (Modular
Programmable Controller) as
described at
http://www.aboutplcs.com/p3000/

Example
• The sleeve 200 may be made of a
polyethylene such as Linear Low Density
Polyethylene (LLDPE). The sleeve 200
may be relatively thin such as between
0.010 inches thick to 0.025 inches thick.
Sleeves may be made from other
materials such as polypropylene,
polyolefin, or analogous materials.

Step 9
• Review your Wish List.
• Did you support each of the
desired Claims?
• Go back and augment if
necessary.

Look for Gaps in Enablement
• Can someone of ordinary skill in the
art make and use each of the
embodiments you presented?
• You do not need to explain how to
weld two pieces of steel together as
that is conventional.

But….
• If your process calls for something that
has never been done before –
welding a glass rod to
a steel rod –
then you need to explain in enough detail
to be enabling just how that is done.

Step 10
• Search for the word “it” and replace the
word “it” with the actual noun so that the
meaning is clear.
• Search for the word “invention” and strip it
out. Use something like “teachings of the
disclosure”.

Step 11
• Get a patent attorney to review the draft
application and provided detailed comments
and suggestions.
• This slide set is NOT a valid substitute for
judgment and experience of someone that has
written lots of patent applications and seen
how others try to attack the patent
application for sufficiency.

NOTE
DO NOT
SEND THE DRAFT PROVISIONAL TO A PATENT
ATTORNEY
UNTIL AFTER YOU HAVE SPOKEN TO THE PATENT
ATTORNEY
AND THE PATENT ATTORNEY AGREES THAT
THERE IS NOT A CONFLICT WITH OTHER CLIENTS
OF THE PATENT ATTORNEY.

Step 12
• Make revisions based on input
from the patent attorney.
• It may be wise to repeat the
cycle of review and revise one
or more times.

Step 13
File the provisional patent application.
• Inventor can do so by mail or by electronic
filing – lots of specifics here so get help.
• Inventor can pay for the patent attorney to
electronically file the application.
(Relatively low cost for this last step and it
reduces the risk of an error).

Provisional Patent
Applications
After Filing

Docket the Dates
• The provisional application lapses a
year after the official filing date.
• Ensure that you have this date
marked and pick a date two months
ahead of that date to start work on a
non-provisional application.

Why start 2 months early?
• You may need to file patent applications in
other countries beyond the US or file a Patent
Cooperation Treaty application. The deadline
for these filings is also 12 months from the
filing date of the provisional application.
• There may be a lot of heavy lifting to
draft claims, create proper drawings, and lift
application to non-provisional standards.

May need to file the provisional
application more than once
Beyond the scope of this webinar but you need
to talk to your patent attorney if
• Your fundraising or testing is going slowly and
you won’t be ready to file the non-provisional
by 12 months. May be advisable to refile the
same provisional to restart the clock.

THIS IS TRICKY
• Refiling the provisional application
without talking to patent attorney is
not a good idea as you may need the
filing date of the first filing of the
provisional as you have subsequently
done things that count as a public
sale, public use or public disclosure.

A provisional patent application
is a just a snapshot.

The filed provisional patent
application does not expand…
as you and your team add:
–new embodiments,
–new features, or
–new use cases.

A provisional patent application is
just a snapshot.
• If your development leads to new
embodiments or improved feature set after
filing of the first provisional application –
these new innovations ARE NOT PROTECTED
BY THE EARLY PROVISIONAL APPLICATION.
• You may need to file updated provisional
applications to protect these innovations
BEFORE Public Use, Public Sale, or Public
Disclosure.

REVIEW --- Provisional Application
is start of process not the end.
• Need to file an updated provisional before public
sale or public use (or even a publication) to add
any evolving details of the product not already
protected in a pending provisional application.
• Really early stage company without funds may
want to refile a provisional every three months to
have an option to use one of these staggered
provisional filings if money raising takes too long
for the first provisional application to be
converted.

107
Kevin E. Flynn is a hybrid -- part engineer, part lawyer, part advocate, and part coach. He uses
all these skills to be a patent attorney. Initially trained in both Biomedical Engineering and
Mechanical Engineering, he later obtained a Master's Degree in Industrial & Systems
Engineering. After working as an engineer and earning a Professional Engineering license from
the State of North Carolina, he went back to school and earned his law degree with honors
from Duke Law School. After a few years in patent litigation, including time spent with Fish &
Neave in New York City, he moved to helping companies protect their ideas and avoid legal
problems.
With a broad engineering background, Kevin works with companies with a range of
technologies including: A) medical devices & methods; B) Internet of things (IoT); C) Clean
energy/green technology; and D) Consumer Goods. He helps clients decide where to spend
their money to get the most value while seeking patents in the United States and abroad. Then
he works collaboratively with the clients to create patent applications that are part required
technical disclosure and part sales pitch. In addition to helping companies obtain protection,
he works with companies to help them avoid trouble with patents owned by others.
After working at a firm that specialized in assisting start-up companies, Kevin is very
comfortable working directly with CTOs and CEOs in companies that do not have in-house
lawyers.
Kevin is a frequent speaker and commentator on intellectual property issues, especially those
issues of particular relevance to entrepreneurial companies. He has been named repeatedly to
the legal Elite for the category of Intellectual Property/Patent attorneys.

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