Top Provisional Mistakes

00:00
Samar Shah
Hello, and welcome to the patent pending Made Simple podcast. I'm your host, Samar Shah, and with me is Jamie Brophy. Jamie, how are you?

00:07
Jamie Brophy
Hi, Samar, I'm good. How are you?

00:10
Samar Shah
I am doing all right. Are you almost ready for Thanksgiving?

00:14
Jamie Brophy
Yeah, getting there. We've got a bunch of house guests coming, so yeah, it's exciting.

00:19
Samar Shah
How about yeah, my parents are coming in town, which is nice, so it's good to be able to hang out with them.

00:29
Jamie Brophy
All right. Hopefully we'll release this episode before Thanksgiving.

00:34
Samar Shah
That's right. So, yeah, if we do, happy Thanksgiving to all the listeners. I'm sure we'll get it out before then. Awesome. Yeah, I am looking forward to taking some time off, and my Thanksgiving, I think, hopefully will be low key relative to yours. We only have two house guests this time.

00:54
Jamie Brophy
Nice. Yeah, we'll have a house full. I'm going to have 14 people for dinner.

00:59
Samar Shah
Oh, wow. Good.

01:00
Jamie Brophy
Yeah, I know. Thank you.

01:02
Samar Shah
Well, it's a lot of cooking.

01:04
Jamie Brophy
Yeah.

01:07
Samar Shah
Very good. Well, today's topic is diving into the world of provisionals a little bit more. I know we've talked about it on many of the past episodes, but many of the listeners who are listening to this podcast are maybe thinking about writing their own provisional patent application, or they've hired an attorney to write the provisional application. And I'm sure they're wondering, what are some of the mistakes that I can make or you can make in that patent application? Or what are some of the mistakes they should avoid and why? So, Jamie, do you think we can talk about that today?

01:42
Jamie Brophy
Yeah, I think this is a great topic. I mean, as we've talked about, I think in previous episodes, I think the provisional is a helpful first step in the patent journey. And, yeah, there are some things you want to avoid and some things you want to make sure that you include in your application. So, yeah, I think this will be a really helpful topic.

02:02
Samar Shah
Okay, very good. So I'll kick us off here in terms of the first mistake, or maybe, in my opinion, maybe the biggest mistake that somebody can make is insufficient disclosure. So maybe we should step back and talk about what the provisional is and the job that it performs. And in technical terms or maybe legal terms, a provisional is a placeholder application. It says that I invented this on this filing date because we in the US. Are in a first to file system. So whoever files a patent on something, they are considered to have invented it on the date of their filing. So you want to essentially establish a record that you invented something and place it in the record database of the patent office with a provisional application, and you want to describe the invention in as much detail as possible.

02:57
Samar Shah
For one, you one need to meet the enablement requirement, which says that you have disclosed the invention in enough detail to enable a person of ornate skill in the art to make the invention based by just reading your disclosure documents. And two, you want to cover enough ground, right? So you don't want to just describe one aspect of your invention and then somebody else can come in and invent a different part of it or practice a different part of it without potentially infringing on your patent. Yeah, I think I've covered a bunch of different kind of bases here.

03:28
Samar Shah
But Jamie, the big one is you want to describe your invention in enough detail so that you can meet the legal requirements of enablement, you can establish your priority day with the patent office and you can create an effective envelope of protection around your invention. What do you think?

03:45
Jamie Brophy
Yeah, definitely. I think one of the issues though, with a provisional application is sometimes people are still inventing or still working on the best way to make or use their invention. So in that case, I think the best practice is just to describe it in sufficient detail the manner that you think you're going to be making it or maybe alternative ways of making it and you might land one of those eventually. So yeah, I think just describing it in enough detail that like you said, a person of ordinary skill in the art would be able to read that application and be able to make the invention just through reading your application.

04:27
Jamie Brophy
But yeah, even if you don't know the best mode yet, you just do your best and describe what you think the best mode is and maybe some alternative ways of doing it as well.

04:39
Samar Shah
Yeah, I think that's right. It is tricky because everyone I don't know of any inventor who's finished with their inventing process, right. Every invention is like a continuing work in many ways. So it is hard to kind of say, okay, I've reached enough of a spot to stop and be able to write it down. And I think this is where I think a little bit of time and effort in terms of thinking through your invention is helpful. So we do this and a lot of patent attorneys, I'm sure, do this. And in the patent pending Made Simple software, we kind of get people to do this as well, which is just think about your invention in multiple layers of abstraction, as I like to call them. So you want to write down everything you have done for sure, right? Because that's important.

05:30
Samar Shah
You've done the work, you might as well protect it and write it down. And then I would like to think about what is a broader way of saying the same thing. Right, so let's say you invented something with a Velcro system on it, right. Then there are other ways of doing this would be like a magnetic clasp or a button system or something like that. So there are other ways of accomplishing the same goal. So you want to think about those and lay them all on the table, for example, and then think of a term, an umbrella term that covers all of these different ways of accomplishing the same thing. So I would call that an attachment mechanism. Right, that's an umbrella term.

06:09
Samar Shah
And then I would try to broadly cover all attachment mechanisms, and then I would give examples of the ones that I can think of to give myself more concrete. Then, you know, your best mode, as you mentioned it, Jamie, would be the Velcro or the hook and look closure system. So that way now you have gone through two or three different layers of protection, and now you have significantly expanded the scope of coverage. So now if you come up with a new way of closing that thing, you'd still be covered theoretically or hopefully under the broader umbrella term called the attachment mechanism. Sorry if that made a lot of sense, but that's kind of how I'd want to tackle that.

06:52
Jamie Brophy
Yeah, I think that's definitely a good plan. That's a good way to do it. So, yeah, you want to make sure that you have sufficient disclosure of your invention and what you think the best mode of practicing it is going to be. Sufficient detail describing alternative embodiments. I think those are all good things to have in your provisional application. So what are some other pitfalls that inventors might come across when drafting their provisional applications?

07:23
Samar Shah
Yeah, the other thing that you want to avoid using is what I call patent profanity, and this is the term that we used to use at my old law firm. So I don't know if this is a term of art, but there are words that is going to significantly limit the scope of the invention, potentially down the road and come and bite you later. So you want to avoid profanity, and I don't have a comprehensive list in front of me or anything like that, Jamie, but words that cannot be interpreted differently would usually consider those pattern profanities. So if you say something like a critical piece of the invention, is this right? Or a special way of doing this?

08:08
Samar Shah
Or a particular way or a peculiar way of doing this is described in here, or this is how my invention works and why it's superior to something else that's out there. All of those there's only one way to interpret that, which is that is unique and required for your pan application. So if you later want to say that, well, this way is not particularly claimed in my claims, it'd be very hard for you to walk away from that interpretation. So you want to avoid words that are hyperbolic or in that vein of being superior or better or particular or critical, stuff like that.

08:49
Jamie Brophy
Yeah, critical. That one makes me cringe a little.

08:53
Samar Shah
Yeah. Or necessary. I see that sometimes clients will send us documents that they've written themselves. And I'm like, well, if you write that, then you are stuck with that forever and ever, even if your invention changes later.

09:07
Jamie Brophy
Right? Yeah. So, yeah, definitely avoid some of those things, but at the same time, you definitely want to distinguish your invention over the prior art, maybe identify some particular features that the prior art doesn't teach, and make sure that you've described those specific features in enough detail, describe them in different ways, things like that. What do you think are some other ways to distinguish your invention over the prior art?

09:38
Samar Shah
The framing that I like a lot is to just describe the problem, right. Imagine you are an inventor who saw the problem that your invention solves, but has not solved the problem yet. Right. So what are the different aspects of the problem that you saw? Describe those and you want to put them in the background section of the patent document. And the way that you want to frame it is that somebody should be able to read that section and be like, that's a really tough problem. No way how somebody's going to solve that? Right?

10:15
Samar Shah
That's how I would want to frame it because a lot of times even I see attorneys do this a lot where they will write the problems up and then they will say, well, what is needed is a way to do X, Y and Z, which is exactly what the invention does. And I'm like, well, you're kind of foreshadowing your invention at this point and does that make your invention a little bit more obvious? Right. It seems to suggest that all these problems kind of culminated into the creation of the invention. It seems very obvious solution at that point. So you don't want to do it that way.

10:48
Samar Shah
What I like to do is just describe the problem, describe how your prior art products or competing products, how they are suboptimal or inferior in some way, or they don't solve the problems the right way and just leave the impression with the reader that, hey, this is a tough problem. I don't know how somebody's going to solve that. It's kind of the impression that I want to leave with somebody after they end up reading my background section.

11:15
Jamie Brophy
Yeah, that's a good way to do it. Yeah, that's what I try to do in my background sections and I think that's a good strategy to follow. Yeah, you're kind of, in a way in the background section telling a story of kind of how you arrived at your invention without talking about your invention yet.

11:34
Samar Shah
Yeah, it's a little tough to do, but with some practice, I think it's a good storytelling tool or aid.

11:42
Jamie Brophy
Yeah. Keep in mind the audience that's going to be reading your patent application, which we've discussed in other episodes. So what else do you think that cover? I think that covers content mistakes distinguishing your invention over the prior art. What are some other problems that you've seen in provisional applications?

12:04
Samar Shah
Yeah, the other big thing, maybe I would label these as procedural mistakes. And I guess, Jamie, before I get to the procedural mistakes, are there any other kind of content related mistakes you see?

12:16
Jamie Brophy
Nothing that I think we've covered everything. I can't think of anything else. Summer, can you?

12:21
Samar Shah
Yeah, no, I think that's it. I know you talked about the best mode. It used to be that you had to specifically call out the best mode of executing your invention, but that is no longer a requirement. So you just need to describe the best mode. But you don't need to call it out as the best mode.

12:39
Jamie Brophy
Right. Yeah. Make sure it's in there. And you might not even know yet what the best mode is, but if you described enough different modes, one of them will be the best mode as you're developing your invention.

12:52
Samar Shah
Yeah, it's best mode to you as you know it, right? Yeah. That's why I think having the process of starting with describing your invention as you have it first is really important because it hits a lot of the beats. Right. It meets the best mode requirement. It meets the enablement requirement. It helps you be concrete enough in your disclosure, so it's not considered an abstract idea. So it meets a lot of the requirements, and then you can expand the envelope of protection around that core idea. The other mistake I see even attorneys make is they start with the broadest interpretation of the invention, and then they slowly narrow into what is the concrete invention, and I think that conceptually sounds like the same thing.

13:34
Samar Shah
It leads to errors, in my opinion, because when you start broad and you narrow in, I think the risk of you missing a critical piece of information for enablement purposes and things like that is much greater. So I much rather start narrow and then broaden out. Rather than broaden out and then go narrow.

13:53
Jamie Brophy
Yes, I think that's another great strategy. Yeah. Anything else you can think of, Summer?

14:00
Samar Shah
Let's see. No, I think that's it. I mean, those are the big ones. Maybe there are a lot more we can spend the rest of our day talking about it, but I think if you avoid these things, you're in pretty good shape, generally speaking.

14:13
Jamie Brophy
Yeah, I think one other minor thing that's worth mentioning is making sure that your figures are correctly labeled and that you're consistently using the reference numbers. For example, you can't use the same reference number in your application to describe two different things, even if they're in different figures, and make sure that you're kind of using sort of consistent terminology. When you give something in your figures a name, make sure you're consistently kind of using that name. You can offer other alternative ways of describing it, but make sure you're being consistent with things like that. But yeah, I think that kind of covers it. Is there anything else?

14:59
Samar Shah
No, I think that's a good one, too. I think those are the big ones. Yeah. I guess maybe the last set of things, I would call them procedural mistakes. But I get calls, believe it or not, from pro se inventors who are like, hey, I filed my application. And now it's got all sorts of informality rejections. And the patent office won't give me a filing date because I didn't meet all the requirements. So I would say we have some resources on our website, and we can certainly link them here in the show notes, but there's also our episode on the Patent Office resources. Right. So call the Patent Office, they have a pro se assistance center, and ask them, what do I need to put in my filing papers?

15:46
Samar Shah
And what are some things that I definitely cannot leave blank in those forms, there are a lot of values. Many of them are blank. So it's easy to miss something if you're not used to it or if you don't know what you're doing. But call them, ask them for help. They're usually very helpful. You'd hate to not get a filing date just because you didn't fill out a box in a 20 page form or something like that.

16:11
Jamie Brophy
Yes. Another great tip. Yeah, I think that covers everything. Summer well, I mean, the major things that we've seen for inventors to avoid when writing their provisional applications, or to make sure that they include when writing their provisional applications, I can't think of anything else. So unless you have something to add, I think that covers it for this episode.

16:34
Samar Shah
Yeah, I think so, too. I think if you avoid these mistakes, you're more than well on your way. So, yeah, I think this is a good summary or encapsulation of the biggest problems.

16:45
Jamie Brophy
Yes, absolutely. Okay, summer well, Happy Thanksgiving, and I will talk to you next time.

16:51
Samar Shah
Yes, happy Thanksgiving to you as well. And, yes, we'll see you on the next one.

16:55
Jamie Brophy
All right, bye.

16:58
Samar Shah
Thank you for joining us on the Patent Pending Made Simple Podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the episodes page on https://outlierpatentattorneys.com/patent-pending-made-simple/podcast/episodes.

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