The Provisional Specification
In the Patent Filing Process we learnt that one possible route relies on the filing of a provisional specification in the first instance.
For such routes the preparation of the provisional specification is a key step, and possibly the most important initial step apart from filing the application.
The provisional specification describes your invention. As it establishes a priority date for your patent claims, it is important that it contains a full and adequate description of your invention.
This is not merely a technical description of your prototype, but a description describing the principles of the invention, relative relationship of features, aspects which are of potential importance, and written in a way which will not legally limit the applicant's rights or options later on.
Additionally it should take into account where the invention might head as it is being developed, and foreshadow those potential improvements. Unlike a complete specification, a provisional specification is allowed to be a little speculative (as long as there is some focus to that speculation).
It should consider the position of the invention to known priort art, and include description based on strategies to address future possible objections during examination. Even though it is the complete specification which is examined, it is often useful to draw on disclosures in the provisional specification so the patent applicant can maintain the earliest possible priority date.
It should give some consideration as to vulnerabilities which could be exploited by competitors to circumvent the invention.
When you have done all of that, you have a solid foundation for a patent based on a well drafted specification. Which is also something any future purchaser of the technology, licensee, investor, or financially interested party will wish to establish before becoming involved.
As an attorney I can liken preparing a provisional specification as writing a description resulting from visualising the invention in my mind, disassembling it into key components/concepts, seeing how many ways it can be reassembled, reorganising the components in different priorities, extrapolating them to see obvious development paths by the applicant, looking for vulnerabilities, considering how a competitor might most obviously reinvent or circumvent it; considering also the business objectives of the patent applicant and then determining how best to write that without limitation and at the same time satisfying requirements for different jurisdictions where the applicant, or successors, might one day wish to obtain patent protection, and need to be able to enforce or defend it.
So yes, it is quite an important foundation document to get right, and one which requires specialist attention.
In the Patent Filing Process we learnt that one possible route relies on the filing of a provisional specification in the first instance.
For such routes the preparation of the provisional specification is a key step, and possibly the most important initial step apart from filing the application.
The provisional specification describes your invention. As it establishes a priority date for your patent claims, it is important that it contains a full and adequate description of your invention.
This is not merely a technical description of your prototype, but a description describing the principles of the invention, relative relationship of features, aspects which are of potential importance, and written in a way which will not legally limit the applicant's rights or options later on.
Additionally it should take into account where the invention might head as it is being developed, and foreshadow those potential improvements. Unlike a complete specification, a provisional specification is allowed to be a little speculative (as long as there is some focus to that speculation).
It should consider the position of the invention to known priort art, and include description based on strategies to address future possible objections during examination. Even though it is the complete specification which is examined, it is often useful to draw on disclosures in the provisional specification so the patent applicant can maintain the earliest possible priority date.
It should give some consideration as to vulnerabilities which could be exploited by competitors to circumvent the invention.
When you have done all of that, you have a solid foundation for a patent based on a well drafted specification. Which is also something any future purchaser of the technology, licensee, investor, or financially interested party will wish to establish before becoming involved.
As an attorney I can liken preparing a provisional specification as writing a description resulting from visualising the invention in my mind, disassembling it into key components/concepts, seeing how many ways it can be reassembled, reorganising the components in different priorities, extrapolating them to see obvious development paths by the applicant, looking for vulnerabilities, considering how a competitor might most obviously reinvent or circumvent it; considering also the business objectives of the patent applicant and then determining how best to write that without limitation and at the same time satisfying requirements for different jurisdictions where the applicant, or successors, might one day wish to obtain patent protection, and need to be able to enforce or defend it.
So yes, it is quite an important foundation document to get right, and one which requires specialist attention.
A provisional specification is one of the most difficult documents in a patent to get right.
It is also one of the most critical documents, and needs to be drafted correctly
It is also one of the most critical documents, and needs to be drafted correctly