Preparing Patent Applications

In the provisional application, you should include the following information:

  • Title of your Invention
  • Background of the Invention
  • Summary of the Invention
  • Advantages of the Preferred Embodiments
  • Description of Embodiments of the Invention
  • The Claims

Title of your Invention

This can be a brief title or name of your invention.

Background of the Invention

This can be a brief paragraph describing existing solutions for the problem addressed by your invention. Avoid describing your invention in the Background section, as some case law indicates that the Examiner can use those statements against the patent owner to reject the application. Also, be careful when you admit something as prior art as such admissions will be held against the application even if the prior art characterization is later found to be wrong.

Summary of the Invention

This can be a brief paragraph providing a summary or abstract of your invention. You can draft the summary/abstract first, or you can wait until the claim section below is done, and then do the summary or abstract to make the summary/abstract consistent with a high level claim such as one of the independent claims.

Advantages of the Preferred Embodiments

Next, you should describe each feature, uniqueness, differentiation, or advantage that embodiments of the invention have over the prior art. If you have a sales or marketing brochure done already, you may want to review the sales or marketing brochure to identify the important product features that you market to your customers.

Description of Embodiments of the Invention

You can generate diagram(s) that illustrate the operation of your invention and annotate these diagram(s) with reference numerals that you can use next to explain each diagram. If you are not certain about how to come up with the diagram(s), you may want to start with a top level diagram illustrating the major parts of your invention and then provide additional diagrams that progressively show more details of each major part in a top-down fashion, similar to the layers of an onion that you can peel away to show more information. There is a very good explanation on

Another approach on the diagram(s) is to think about the advantages you have listed above. For each feature, uniqueness, differentiation, or advantage, you can sketch the hardware or inventive technique that provides the feature, uniqueness, differentiation, or advantage you mentioned.

It may be useful to create a table summarizing the reference numbers, and for each reference numeral, you can enter the reference number and the descriptive text. Next you can enter text that explains the diagram in depth as part of the Description. The Description in the patent specification of the invention should be as complete as possible. This is called the “written description requirement”. The written description of the invention must contain enough detail so as to enable a person skilled in your technology area to be able to read the patent application and to be able to make and use the invention without undue experimentation. This is referred to as the “enablement requirement”. The written description of a patent must describe the best way, or mode, of making and using the invention known to the inventor at the time the application was filed. This is referred to as the “best mode requirement”. Thus, if you have specific preferred way to implement your invention, you should provide the information in the Description.

The Claims

Next, although not required in a provisional application, you may want to set out the boundary of what you consider to be your invention through a set of claims. The claims should have at least one novel feature or element that is not present in the prior art.

Although claim drafting should be done by a patent professional, one way to approach claim drafting is to select the fewest number of items that together provide the unique differentiating function described above and include at least one element that does not exist in the prior art for you to distinguish the novelty of your invention.

If applicable, you can add a description of the process of Making and Fabricating the Invention. If you have a product done already, you may want to include a user manual or Operating Instruction as an appendix to provide more information. Alternatively, if you have a specification for the product, you may want to include the specification in the application to provide back up details. Essentially, you want to provide as much relevant information as possible to support your claims when you convert the provisional application within one year from the provisional application filing date. Be aware that the content of the provisional application may be accessible by the public in the future, so you should also remove unnecessary confidential information such as supplier information or financial information or cost information from the provisional patent application.

As discussed above, a good patent application, be it provisional or non-provisional, requires a fair amount of effort at documenting your invention. However, such efforts will protect you in case third parties file conflicting applications in the interim ass you can see from this story at

When you are done, you can mail the provisional application, along with a filing fee, to the U.S. Patent and Trademark Office, or you can file online at

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