How Do You Prepare and File a Provisional Patent Application?

[0:00] hey there startup people today I'm going

[0:03] to teach you how to file a provisional

[0:06] Utility Patent

[0:07] application which if you get micro

[0:10] energy status will only cost you about

[0:12] $65 so I'll step you through the process

[0:15] of writing up the specifications doing

[0:18] the

[0:18] drawings and then also how to file it

[0:22] with the patent office it's not as hard

[0:24] as it seems and you can totally do it at

[0:27] home so first things up got to say uh

[0:31] this episode is sponsored by Chuck rack

[0:34] hitch Mount ski rack just in time for

[0:36] winter right now and then if it's summer

[0:38] when you're looking at this we also make

[0:40] a bike

[0:42] rack so with that in mind let's talk

[0:47] about patents so one of the first books

[0:50] I read was called from patent to profit

[0:54] and it made me think that I could make a

[0:56] ton of money by patenting things and

[0:58] well you might be able to actually do

[1:00] that but in this book this guy's claim

[1:04] to fame Bob ma de mati medy anyways Bob

[1:11] Bob wrote about uh how he had come up

[1:14] with the little tab that's on plastic

[1:17] grocery bags that allowed you to then

[1:20] pull one side of the bag and it would

[1:21] open to put groceries in and so his

[1:24] whole book is about talking how he would

[1:27] come up with a better product and and

[1:30] then file a provisional patent and then

[1:32] as quick as he could while he still had

[1:34] provisional status try and license the

[1:37] idea and was Bob successful yes a few

[1:41] times but this is because if you read

[1:43] the book you realize Bob is a sales guy

[1:45] really yes he's an inventor but he's a

[1:48] better sales guy and able to get his

[1:50] ideas to the people who find it valuable

[1:54] who then want to pay him money for those

[1:56] ideas so if you read the rest of the

[1:59] book there's times where he had little

[2:02] products that were uh less

[2:05] successful um for example I think he had

[2:07] like a pizza slicer or something of that

[2:11] nature and he's having a hard time hard

[2:14] time trying to sell the last 2,000 units

[2:17] or whatever he had of a 10,000 or plus

[2:19] unit run and so either way even you know

[2:24] this gentleman who wrote This Book he

[2:26] had his own fair share of problems

[2:27] trying to sell merchandise that they're

[2:29] just really may not have been much of a

[2:30] solid market for but the book talks a

[2:34] great deal about the patent system and

[2:37] how to file patents and really kind of

[2:38] made it easier for me to then go about

[2:41] trying to file provisional patents and

[2:43] then maybe try and see if I could

[2:45] license them what I'm going to step you

[2:47] through right now so with that let's

[2:51] look at uh an

[2:53] example so a great example I have here

[2:58] is if I go go to drawings and I'm going

[3:01] to

[3:02] hide me so we just see

[3:05] this uh I had at one point really wanted

[3:09] to make a individual single cookie oven

[3:12] so that you could cook a cookie at your

[3:16] desk and I actually made one of these

[3:18] and it made a delicious cookie at my

[3:20] desk and it made my whole desk area

[3:21] smell like chocolate chip cookies and

[3:23] drove all my co-workers insane and it

[3:26] was pretty awesome basically the size of

[3:28] a CD ROM drive an old one even if you

[3:31] know what an old one looks like guess

[3:34] that's super dated but um kind of like

[3:37] half a pack of Oreos that's a better

[3:39] size description so either way uh it had

[3:44] a little

[3:46] arm that you could pull out a little

[3:49] tray that was like Teflon coated or

[3:51] something like that and then the outside

[3:53] was cool and then the inside was at like

[3:56] a constant temperature that would cook a

[3:58] cookie at about 300

[4:00] 10° or so and it would just sit there

[4:03] and whenever it was clicked on it would

[4:06] bake and it would self-regulate its

[4:07] temperature and whatnot so in order to

[4:11] file provisional patent first thing I

[4:13] like to do is make up drawings for

[4:16] whatever it is I'm trying to file and

[4:18] label them in this instance every single

[4:21] drawing you have you want to have a

[4:22] figure number with it so I have figure

[4:26] one and then you want to point out every

[4:29] single possible element that you in in

[4:33] your diagram and give them each unique

[4:37] numbers unless it's the same thing so

[4:39] for example here uh you know this might

[4:43] say 15 is 15 anywhere up here yes right

[4:47] there 15 so those are the same items

[4:50] that's a hinge right and so you would

[4:54] basically go through label everything

[4:56] that somebody would need to know in

[4:58] order to recreate your

[5:00] device uh and

[5:02] then basically this is good to do it

[5:05] early because then you can go and write

[5:07] your specifications which is your

[5:09] description of

[5:10] everything and you can reference these

[5:13] numbers as you do it and it'll save you

[5:14] a lot of time now something people don't

[5:17] realize is that provisional patents

[5:20] actually can have more than one idea in

[5:21] them you can have multiple ideas so

[5:24] luckily I found this old provisional I

[5:26] had filed and looked through and I had

[5:28] lots of ideas is in here because why not

[5:31] save money so here's the side view of

[5:34] the oven and then what's this this was

[5:37] actually my photo crop sharing app

[5:41] called Snicker where you would take a

[5:44] photo of something and then you would

[5:46] crop it down and then you would share

[5:50] that cropped image and then if you

[5:53] clicked on the shared cropped image it

[5:56] would then blow up and show you the full

[5:58] one that was neat here's another one I

[6:01] had which was

[6:04] a uh basically a little thermometer with

[6:07] an indicator

[6:10] light uh and it would get tossed into a

[6:14] cup of coffee and then when the coffee

[6:16] reached the perfect temperature and it

[6:18] could use for tea also coffee tea hot

[6:20] cocoa whatever but you would toss it in

[6:23] and then when it reached the preferred

[6:26] temperature to drink it would then up

[6:29] and or beep and then you would just pull

[6:33] it out and drink from your cup it also

[6:35] cooled your drink down a little bit

[6:36] quicker because it was a heat sink of

[6:39] source just because it was metal same

[6:42] reason why you put a spoon into tea is

[6:44] actually because that cools down the tea

[6:46] quicker so anyways um in this basically

[6:50] I had a uh

[6:52] diagram um of the outside and then a

[6:56] simple diagram showing the different

[6:58] components

[7:00] and then another one showing uh

[7:04] alternating

[7:06] components or an alternate version of

[7:08] the components and so all of these have

[7:11] unique numbers none of them overlap

[7:13] unless it's the same thing and these

[7:16] figures are all three different items um

[7:20] so you want to

[7:22] have your figures numbered so that you

[7:24] can reference them like I had stated and

[7:27] if you do cutaways uh having shaded

[7:30] regions is very good you don't want to

[7:32] have anything in your diagrams that

[7:35] isn't in your written

[7:38] specifications

[7:40] because then it confuses whoever is

[7:42] looking at it they'll wonder what that

[7:44] extra part is or whatnot and is it

[7:46] important is it not important especially

[7:47] if it's important you don't want to miss

[7:50] labeling it so with that in mind I wrote

[7:53] all of this and then you would go

[7:55] through and you would write your

[7:57] specifications so I put put in here the

[8:00] items and then my name and address and

[8:03] then uh here I have the first thing

[8:06] which is the single size oven and like I

[8:08] had stated in the patent search episode

[8:10] you want to put in all your relevant

[8:12] patent documents that you had found so

[8:14] these are the ones that I had found that

[8:16] were relevant at the time and then here

[8:20] is an abstract and it's very simply what

[8:23] is this uh

[8:25] then the figure list showing the

[8:29] different figures and Views so figure

[8:32] one is an isometric view of the front

[8:33] side back side uh oven with the spatula

[8:37] displaced Etc and then this is where it

[8:39] really comes in handy to have all of the

[8:41] numbers in place and by the way so those

[8:43] drawings I just took my CAD program and

[8:46] told it to do simple line drawings with

[8:49] a white background you have to have a

[8:51] white background with no

[8:54] gradient you're not even supposed to

[8:56] have color so this this image with color

[9:01] is not great now you can still submit it

[9:03] but it's not ideal ideal you have black

[9:06] and white drawings so you go back

[9:09] through here and this is where you'll

[9:11] say things like the oven as drawn in

[9:14] figure one consists of a main outer body

[9:16] 14 primarily of a low thermally

[9:19] conductive material such that it allows

[9:21] that it prevents burning of the user and

[9:24] you want to try and make this

[9:28] understandable so that anybody reading

[9:30] this will understand it and you've

[9:31] explained each one of the figures and

[9:34] numbers that you have in your drawing so

[9:37] this is nice because you can go through

[9:38] literally numerically and make sure that

[9:40] you've talked about every single one and

[9:43] the important aspects of everyone and so

[9:46] then here's the big deal at the

[9:48] end you want your claim to be as broad

[9:53] as possible and I guess I didn't bring

[9:56] up earlier on I'm not a patent attorney

[9:59] I'm not a patent lawyer and of any

[10:03] sorts do your own research in this

[10:08] and don't hold me liable for any

[10:10] mistakes you made and definitely seek

[10:12] out legal advice from a patent attorney

[10:15] prior to filing your provisional patent

[10:17] if you have any concerns about this but

[10:20] you want your claim to be extremely

[10:22] broad because the patent office their

[10:24] goal is to narrow your claims down as

[10:26] much as they possibly can which means

[10:29] that when you go to file your

[10:30] non-provisional application that is

[10:32] where you will want to narrow down to

[10:36] the specifics of what you are trying to

[10:40] patent so for

[10:44] example

[10:46] if you don't include a claim or if what

[10:51] you're trying to claim later on in your

[10:52] non-provisional application is not

[10:55] included in your claim and your

[10:56] provisional then you cannot include it

[10:58] so that's the problem with having overly

[11:02] conservative claims in your provisional

[11:04] is it limits you from having broader

[11:06] claims or other items if you change

[11:09] something a little bit in your

[11:11] provisional your non-provisional

[11:13] application so here again super broad

[11:17] what I claim is an oven which is sized

[11:19] to cook an individual baked good and

[11:22] that is all I need because it's super

[11:25] Broad and can easily be reduced finer

[11:28] and finer and finer because I'm sure by

[11:31] the time I got something written that

[11:33] the patent office would actually want to

[11:37] allow they would have narrowed it down

[11:40] to basically what would look almost

[11:43] exactly like my device and be configured

[11:46] only to cook a cookie of a specific mass

[11:49] with a specific Ratio or something to

[11:51] something which you can do in patents is

[11:53] you can specify all of that and get your

[11:56] very very narrow window

[11:59] of what is patented which is another

[12:02] reason why a lot of times patents while

[12:05] you intend them to be very valuable a

[12:07] lot of times end up extremely useless

[12:09] because they end up being very narrow in

[12:13] their claims and they're not able to

[12:16] protect anything other than exactly

[12:18] copying your specific

[12:22] design which might have been better

[12:24] protected by a design patent just C you

[12:28] know for the outside of it um but so

[12:33] then again image crop application here

[12:35] cited ones I go through abstract which

[12:39] is really just it's the abstract is the

[12:43] general as if you're conversationally

[12:45] telling somebody about it and why it's

[12:47] important it is just a summary of

[12:50] everything and then the specifications

[12:53] are the nitty-gritty of what everything

[12:55] does every

[12:57] component and again I claim is a process

[13:01] for transferring a sectionally displayed

[13:03] image to a remote

[13:04] user very simply worded and would be

[13:08] narrowed down a whole lot more and then

[13:11] same thing here for this pen I don't

[13:13] even want to get into this but so with

[13:17] that

[13:18] now you need to file this I actually

[13:21] would do all of these

[13:23] in paint in terms of adding these lines

[13:27] it's super easy and out old Ms paint um

[13:30] you can use whatever you want and then I

[13:33] copy and paste that into word and then I

[13:37] export save as PDF and then this gets me

[13:40] a nice

[13:41] PDF and sometimes you have to do like a

[13:44] print to PDF either way the patent

[13:47] office likes uh specific formats and it

[13:52] can yell at you if it is not quite the

[13:55] right PDF format which I didn't even

[13:56] know there could be slightly different

[13:58] ones until I started doing this

[14:00] so with that in

[14:02] mind um few forms that you're going to

[14:04] need you're going to need your

[14:07] application provisional cover sheet s

[14:10] sp16 and you going to have to basically

[14:12] enter in all your info here uh the name

[14:16] of the invention which is the title that

[14:18] you

[14:19] had uh um a firm or an individual name

[14:23] mailing addresses is this a

[14:27] government uh was this created under a

[14:29] government contract because if it was

[14:32] then basically the government has some

[14:34] claim to it so you'd put in here if it

[14:36] was or wasn't invented under a

[14:38] government contract because then the

[14:40] government can use it free of

[14:42] charge and uh let's see here applicant

[14:47] and oh this is another important section

[14:49] small claim or Micro Entity small entity

[14:52] or Micro Entity status so if you are a

[14:56] small entity you will pay less than a

[14:58] large corporation for example and I mean

[15:01] large like 500 employees or more is a

[15:04] large

[15:05] corporation uh less than that you can

[15:07] pay a uh small entity status there's

[15:10] also uh limitations

[15:13] on um income and things like that

[15:16] especially for Micro Entity status so

[15:18] for Micro Entity status there's a few

[15:21] limitations here so let me go to

[15:27] them

[15:31] here we go micro enti status how can you

[15:35] establish it so you can just search

[15:37] USPTO Micro Entity and will come up and

[15:41] basically uh you can come down here to

[15:44] gross income basis and it's something

[15:46] like you earn less than three times the

[15:49] medium household income in the United

[15:52] States or if you are a student or

[15:55] working for a

[15:57] university uh and then also you don't

[15:59] have any more than

[16:01] four granted patents I

[16:05] think

[16:07] um States it somewhere in here you'd

[16:10] have to go read it again but they they

[16:12] basically are trying to incentivize

[16:16] people who want to do this to be able to

[16:22] afford it and you can actually sit that

[16:23] in the fee schedule you know a

[16:26] provisional application filing fee is

[16:28] $60 for Micro Entity $1 1220 for small

[16:32] and $300 regular fee and you compare

[16:36] that to a regular basic utility

[16:39] electronic filing

[16:41] fee

[16:43] um and you basically will see you know

[16:46] all these things are $300 or less and

[16:50] then you had have

[16:52] to um for a regular non-provisional

[16:55] utility pay for like your patent search

[16:58] for through the office for the patent

[17:00] office to actually search and look for

[17:02] other patents and then evaluation of

[17:04] your patent and all things like that but

[17:06] even still alln um it doesn't get crazy

[17:11] expensive until you start submitting DNA

[17:14] sequences of 800 megabytes or more then

[17:17] they start charging you it looks like

[17:20] $10,000

[17:21] uh so either way if you ever want to

[17:24] look at this this is USPTO fee schedule

[17:27] and now onto filing so filing is super

[17:31] straightforward so you're going to go to

[17:33] the USPTO you're going to go to patents

[17:36] you're going to go to filing

[17:38] online and then you're going to come

[17:40] down here and go to open EFS web

[17:44] unregistered now if you're going to file

[17:46] a lot of patents eventually you can get

[17:48] a registration number and that can make

[17:51] it easier for you to file patents and

[17:53] also keep track of where they are in the

[17:54] status of them which I would recommend

[17:57] if you're filing after your second or

[17:59] third one go just get yourself a

[18:02] uspto.gov

[18:04] account make note that it is kind of a

[18:07] pain to get it and they require a lot of

[18:11] uh credentials in terms of like send us

[18:14] this form verify your ID a whole bunch

[18:17] of other things but once you have it

[18:18] it's nice to have it so you open EFS web

[18:21] unregistered and it's going to pull up

[18:23] this site and I already had put in some

[18:25] fake Ino info here so Jojo Joe Jefferson

[18:30] and so you sign on as an unregistered

[18:34] Eiler new application

[18:37] utility provisional and you can see you

[18:40] can do uh design and you can ask for

[18:45] supplemental exams and all sorts of

[18:47] other things I'm not going to get into

[18:49] those so you're going to hit

[18:53] continue and then this is we're going to

[18:55] enter the title of the invention so I

[18:57] would enter in some title

[19:00] here and then we don't have an attorney

[19:02] docket number because we're not an

[19:04] attorney doing this uh application data

[19:07] sheet up top so with

[19:11] this you either have your own

[19:14] application data sheet which I will show

[19:16] you what

[19:18] mine looked like so so that

[19:21] certification Micro

[19:23] Entity provisional cover sheet I think I

[19:26] had another application data sheet

[19:27] somewhere but either way so you can

[19:31] either fill out all of it in the web-

[19:33] based one which you're going to add all

[19:35] of your name and info and all that or

[19:37] you can just do the application data PDF

[19:41] which is what I did

[19:43] before you do whichever one's easier for

[19:46] you and then you just write in here

[19:50] JoJo Jo Hanson if your name's JoJo

[19:54] Johanson by the way I'm sorry um and

[19:57] then so this is where if you do have a

[19:59] customer

[20:00] number uh You' enter it there or they

[20:03] just want an address and you just put in

[20:05] your address so like one two three fake

[20:09] Street uh oh that's name Jojo

[20:14] Jojo one two three fake

[20:18] streets uh

[20:23] Chicago Illinois United States none of

[20:27] that other info next I mean you'd want

[20:29] to enter it but I'm not going to okay

[20:32] great now we add our documents and this

[20:35] is where it'll yell at you if you have

[20:36] the wrong PDF or whatever so I like to

[20:39] do is go in and oh where did I put all

[20:45] this let me look for it here it

[20:50] is so we'll go

[20:53] into select anything you want so s sp1

[20:57] 15a hit

[20:59] okay and then you're going to choose

[21:01] what it is this is the entity status

[21:06] correspondence and this is a

[21:08] certification of Micro Entity gross

[21:10] income

[21:11] basis and then you

[21:15] go does our PDF contain multiple

[21:18] documents no so then you go add file get

[21:20] your next One S

[21:22] sp16 okay what is this uh this is the

[21:30] General transmittal we have to double

[21:33] check um here it is provisional cover

[21:36] sheet SP sp16 Tada so then again add

[21:39] file choose file next

[21:45] drawings so there's

[21:47] drawings General

[21:49] transmitt and you would

[21:55] find uh nope application part

[21:58] there we go drawings only black and

[22:01] white drawings or drawings other than

[22:03] black and white line drawings so since I

[22:05] have color in there I'd want to choose

[22:08] other and then I'm going to add another

[22:11] one choose

[22:13] file and then this is where I'd have the

[22:19] specification looks I do have a

[22:22] transmittal form in there so

[22:24] specification

[22:26] okay and then I come in here and I would

[22:30] choose

[22:31] specification and then add one last

[22:35] file and I'd

[22:40] say General transmitt transmitt of new

[22:44] application and I got to choose my

[22:46] transmittal

[22:48] form

[22:52] okay and then you go upload and

[22:56] validate so

[22:59] it's not going to upload and yell at me

[23:01] if any of these are

[23:06] incorrect so it is doing all of it it's

[23:09] probably going to yell at me that maybe

[23:10] none of this info here is correct which

[23:13] is

[23:14] possible um so so here we go sb16 this

[23:20] is not a USPTO supplied cover sheet

[23:23] form so you might want to remove that so

[23:26] in general though what you might want to

[23:28] do is I like to click on each one of

[23:31] these and open it up and see if it has

[23:34] all the info and if it does then you

[23:38] want to go through until you have no

[23:39] more errors and if you look this isn't

[23:43] um this isn't an error because it's not

[23:45] red it'll actually allow me to continue

[23:47] which I'll do just for the sake of

[23:49] moving this video along it's just a

[23:50] warning saying that this isn't correct

[23:53] so you just want to make sure you

[23:54] correct that item so you click through

[23:56] all of these corre correct them and then

[23:59] you go to the next section continue and

[24:01] this is where you want to calculate your

[24:03] fees so here I'm going to click on Micro

[24:07] Entity and it's a

[24:10] provisional and now it's saying

[24:13] $60 was this application originally

[24:16] filed on paper no number of

[24:20] pages

[24:24] um I don't know I think it's like five

[24:27] you can calculate however many pages you

[24:29] think it

[24:30] is

[24:32] um you don't even have to really enter

[24:34] that because it's not over the amount

[24:38] and then you just hit

[24:41] calculate and so it comes out to $60 is

[24:46] what we owe for our provisional Micro

[24:48] Entity and so you would go over here to

[24:53] continue and then you would look over

[24:56] everything here here and I'm going to

[24:59] just make this wide and when you're done

[25:01] you would click submit and then after

[25:04] that you come up and you would pay your

[25:08] fee um which is yelling at me it hasn't

[25:11] been submitted so I can't but you pay a

[25:13] fee so it submits it and then asks you

[25:16] to pay you can actually submit it and

[25:18] then not pay uh which I won't get into

[25:21] right now but in theory you can do that

[25:24] but then they can actually come after

[25:26] you and try and get a whole bunch of um

[25:30] late fees and whatnot with that

[25:32] potentially and then you get a receipt

[25:35] and the receipt will basically give you

[25:37] tracking on this so that if you ever

[25:39] want to look it up and specifically if

[25:41] you want

[25:43] to uh later on include it with your

[25:47] non-provisional patent application

[25:49] stating that it has priority over your

[25:53] non-provisional application meaning it

[25:55] is your stake in the sand

[25:59] then you'd want that information so that

[26:04] is basically all I have for filing your

[26:08] provisional patent application it's not

[26:10] that hard it really can take you know an

[26:14] hour from making the drawings up and

[26:17] writing your specs and submitting it and

[26:21] $60 so when somebody says Hey I want to

[26:25] charge you $3,000 to write up a

[26:27] provision application which is what

[26:29] happened to me on one of my first

[26:31] projects then uh just realize that you

[26:35] probably can save yourself that $33,000

[26:38] and do it

[26:39] yourself so I'm going to do another

[26:43] video on kind

[26:46] of I guess trying to sell your idea a

[26:50] bit more once you've got your

[26:51] provisional um but the big thing

[26:53] actually now is you have your

[26:55] provisional patent application so so you

[26:57] should be able to take that knowing that

[26:59] your idea is protected and start trying

[27:02] to sell your idea try and get funding

[27:07] without any fear of anybody taking it

[27:09] because you've got a one-year clock

[27:12] before you have to file a more expensive

[27:15] utility non-provisional

[27:17] application and so this is your time to

[27:21] really prove out whether or not your

[27:22] idea has you know can pass muster and if

[27:27] it can

[27:28] then great you know then you probably

[27:30] can move forward on that project but if

[27:32] it doesn't then you only spent $60 and

[27:35] all your time and you can do another

[27:38] thing so I hope this was interesting if

[27:41] you like what you saw please like And

[27:44] subscribe and I will keep providing more

[27:46] of this content

[27:48] thanks