Here are some tips on whether you should file your own patent application or get professional assistance.

Here are some tips on whether you should file your own patent application or get professional assistance.

You can theoretically file this type of application yourself since the Patent Office has made it much simpler than a regular (utility) patent application. It does not require any legal language including claims that require skills aquired by 3-5 years of training of new patent attorneys and agents by experienced attorneys/agents.

However, it is advisable to use a competent patent attorney or agent to prepare and file your provisional application. This is because the application must be written with the completeness and accuracy of a utility patent application. A non-professional such as yourself would likely omit critical material (I have seen this many times) which when later supplied would be "new matter" which would not receive the filing date of the provisional application which can present SERIOUS PROBLEMS later when you go to file a utility appliction based on it.

If you have technical writing experience and feel you can do a thorough job of writing a description of your invention, including drawings or sketches of your invention, you can file a provisional application with the Patent Office with a one page cover sheet form PTO/SB/16 identifying the inventor(s) and noting that the application is a provisional application. A filing fee of $220 is required, as well. However, for independent inventors, non-profit organizations, or small businesses, this fee is reduced to only $110, provided a statement is filed to establish small entity status (simply check the small entity box on this form). See the SB16 EFS-WEB Instructions [DOC] for further instructions. You need an Acrobat Reader to view the form. The instructions require MS Word.

You can write up your provisional patent application yourself, then have a competent patent attorney or agent should be able to review a draft provisional patent application review it and and advise you as to how to improve the application and file it for you. If you are serious about pursuing patent protection, you will probably spend close to $9,000 in filing, issue and maintenance fees for a utility patent. If your invention is worth anything at all, it is worthwhile to consult with an attorney to make sure your provisional patent application provides a proper basis for your later-filed utility patent application.

Note that while provisional patent applications are, in many ways, simpler and easier to file than utility patent applications, there are some very important things you need to know about provisional patent applications. Firstly, you should understand that a provisional application does not give rise to the same substantive rights provided by utility applications. This is because a provisional application is not examined and will not issue as a patent. Instead, provisional applications provide only a right of priority, that is, an established filing date. That's not to say this isn't a very important benefit. The filing date is recognized in major countries throughout the world.

Secondly, a provisional patent application lapses after one year and you must follow up with a (utility) patent application that has formal requirements including claims and the requisite filing fee prior to the one year period of the provisional application lapsing. The utility patent application must also claim "priority" of provisional patent application to to get the filing date of the provisional patent application for commonly disclosed subject matter.

Thirdly, the invention disclosures presented in provisional applications must be just as thorough and clear as would be required in non-provisional applications. The purpose of a provisional application is to establish a recognized filing date for a subsequent utility application to be filed within 12 months. Therefore, heavy reliance will be placed on the completeness of the originally submitted invention disclosure. Claims defining the scope of applicant's invention filed in the subsequent utility application must find full and clear support in the originally-filed provisional application in order to gain full benefit of the provisional application filing date.

Finally, a provisional applications is provides no benefits of any kind if a utility application is not filed within the 12-month period that follows the filing of the provisional application. Some filers assume that there is an automatic conversion from provisional to utility application that occurs within the Patent and Trademark Office. NOT TRUE. You must take positive steps to file your utility application within the 12 month time period.

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