My approach is to write the provisional patent draft myself along with the drawings, claims, detailed description, abstract, summary, etc. and then hire a US-based practicing attorney to use that as a starting point. My reasons for writing the draft provisional patent myself were two fold. First, to get a better handle of what I am building, and second, to give the patent attorney a concrete usable draft describing the invention. I also hoped to save some money along the way — which is always the case with everything entrepreneurs do — with a balance between saving money and being mindful of my time.
I selected the following patent as an example from one of my previous patents to write a new provisional patent.
US Patent: US 8,959,143 B2 Issued: February 17, 2015 Assigned to: Mastercard Authors: Dickey B. Singh, et alii Title: “Methods, systems and computer readable media for enabling a downloadable service to access components in a mobile device”
I also took help from the the internet extensively. Specifically, UpCounsel.com posts, Stanford Provisional Patent Template, PatentFile templates, and more specific google searches for each section. I deliberately ignored sites that had not been updated in over five years.
Structure of my Provisional Patent
Based on my research, here is what I am including in my provisional patent application for a software service.
I wrote the patent in Apple Pages primarily because I find working in Pages on Mac and iPad seamless. I did export the content to Microsoft Word Docx format to ensure the lawyer would not face problems. Word still has better grammar checking than Pages. I also exported sentences into the Grammarly app, but had to turn off long sentence checking.
Number all paragraphs using the “continue numbering from previous section” feature. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Do not number Paragraph or section headers or titles.
Font and size
Text should be written in font Arial, Times Roman, or Courier, preferably with a font size of 12. I prefer Arial instead of Times Roman, as serif does not work well for non-retina displays.
(ii) Text written in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6); and
(iii) Only a single column of text.
Page Header and Footer
I used the following page header and footer.
United States Patent | | Provisional Utility Patent Application
Shortened title | Page x of y | <Primary Inventor Name> and 2 more
Centered on top of first page, usually one line to a couple of lines. I made the title uppercase inline with all the patents I have seen.
SERVICE, SYSTEM, AND COMPUTER-READABLE MEDIA FOR…
Single paragraph with a couple of sentences that includes a conceptual and high-level description of the patent filing should satisfice.
Few paragraphs providing a brief overview of your invention, describing the what and how. What the invention does, and how it works.
I ended up with five numbered paragraphs with 1-3 sentences in each paragraph.
Technical Field of Invention
Ideally, include two paragraphs, describing the field in a very broad sense in first paragraph and more specifically in the second paragraph.
This is a descriptive list of artwork included in provisional filing if you have more that 2 drawings.
I ended up with five detailed drawings and included an index with five paragraphs providing an overview of each labeled figure.
The background supposedly describes the problem and how similar inventions solve the problem.
For me it served to describe the current problems with existing solutions and how they work partially. I originally wrote a longer detailed description and later upon review, divided it up into an extensive background and detailed description section.
I ended up with 11 paragraphs in this section.
This is the meat of you patent other than the substance i.e. claims. This has multiple numbered paragraphs that references artwork by block number and figure number. e.g. Block 100 in Figure 2
I included every detail of the invention and shared processes and workflow steps. since specificity matters, more information shared could mean preventing someone from copying.
I ended up with 17 paragraphs for my detailed description.
I cited similar patents in this section and for each patent I described differentiations and limitations of how they lack in solving the problem.
There are many ways to cite patents. I chose to simply write them as follows and I fully expect the lawyer to have an opinion about how to cite patents.
Author names separated by comma
Title in quotes
Patent number with issue date, e.g. US 1,234,567 B2, issued April 29, 2019
Description of patent and why it does not solve the problem my patent invention is addressing.
If the rest is sizzle, claims are the steak in the [provisional] patent filing. Claims define the invention, i.e. what it is and what it does. Claims have to be broad for wide protections and are specifically used to protect the invention.
Claims are not required in a provisional patent application, but there are strong recommendations to add claims even in provisional patent applications.
According to https://www.upcounsel.com/patent-claims this section is the hardest to write. BTW, UpCounsel owns the SEO, so look beyond the first few pages of search as always for really helpful content.
Ideally start with a broad claim and write additional claims narrowing the original one.
I ended up with 11 claims in my provisional patent and expect the patent attorney to heavily modify and or edit this section.
I included five drawings in black and white printable format, with all components labeled. I made the drawing in Keynote because I work on a Mac and iPad almost equally.
As an example of a patent drawing, this is certainly a favorite one. An exploded burger patent drawing. Source.
Colored drawings are possible but require a special petition with additional fees.
For example, this provisional patent has colored drawings at the end, but the ones in the issued patent are black and white.
Finding a lawyer
After writing the draft provisional patent, it was time to find an attorney to review and edit the document and drawings.
I posted reached out to lawyers I had worked with, posted on Fiverr and UpCounsel.
Folks I reached out to ranged from doing it for free, to writing it for a small fee and equity. None were however available to work on the provisional patent in the next few weeks.
Meanwhile, I posted on Fiverr to gauge interest. Here is my Fiverr post:
I am interested in Provisional Patent Application.
I will provide a draft that I am writing and need help on making the legalese compliant with US patent laws. I can do the drawings. I need the most help with Claims. Could you share an example patent in software service that you have filed and can share.
I got a bunch of replies with fees ranging from $350 – $700, but none of them would share a patent they had worked on. Most of the replies were from Pakistan and Philippines. What was surprising is most folks wrote I do not need claims and a provisional patent application does to need to follow a patent application style.
I figured, I needed to work with a practicing US lawyer.
Here is my UpCounsel post:
I need a practicing US lawyer to work on my provisional patent application. I will provide the drawings and a draft patent with claims written by me, an entrepreneur. I have 8 patents and have relied on professionals in the past, but I wanted to write this myself as I am doing this for a new startup. Hopefully, this will serve to jump start the application.
The provisional patent is a software service and I need the legalese to be correct, robust, and defensible in the future. The goal is to create multiple patents eventually from this if that makes sense.
I am looking for proposals for 1) reviewing, editing and updating what I have completed 2) submitting it to USPTO on my behalf.
I can get on the phone to explain the details. I’ll start reaching out to proposals shortly.
I got seven proposals in the first 24 hours, ranging from $63 for a two hour consult to $3,000 for writing the patent, with filing and patent search for an additional charge. After talking to a few people I realized, the ones offering one to two hour consult wanted to do a side business outside the UpCounsel platform.
One lawyer wrote an enormously long message, telling me why I shouldn’t write a provisional patent myself. He is probably right, but it seemed like he was interested in a side deal off the UpCounsel platform was not what I wanted to try.
A few lawyers offered a “lower” price in lieu of equity. I have considered such options in both my previous startups for creating a C-Corporation, articles of incorporation, stock issuance, bylaw creation. Even the lower price was more than what I settled for.
Hiring a lawyer
At the end I ended up selecting an actively working lawyer and law professor from Texas to work on my provisional patent for the following reasons.
The messages were concise and to the point.
He said he would work on the patent himself, when I asked him who will be working on the provisional patent.
His emails were written to me and had typos versus as canned emails that 75% of the lawyers sent.
The lawyer insisted on doing a patent search and for free.
Pricing was reasonable. He was not the cheapest or most expensive.
The business reviews on the platform were good.
He was responsive in his messages and offered a draft in 2-3 days compared to others who offered 15-30 days.
In startup life, 15 days is eternity.
I exported the draft provisional patent from Pages to Word and sent the artwork as PDFs. I also sent the original keynote file because converting it to PowerPoint made the size of file from 2MB to 12MB and the UpCounsel platform has a 5MB limit.
More to come
I’ll continue updating this post based on my experience.