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PPA Questions.

eduard's Avatar

I came up with a series of questions to help me write my provisional patent application and at the same time be thorough in writing it.  I need help in refining it and whittling it down to the core questions that need to be addressed in a ppa.  I am having a problem telling the differece between what an embodiment is and what constitute an application.  I am also having a problem distinguishing between the function of an invention and the purpose of an invention.  Maybe I am over thinking this.  Well here is a list of the questions that I came up with.

What is my invention?

What are the different applications of my invention?

What are the different embodiments of invention?

What is the purpose of my invention?

How does my invention work?

How can my invention be used?

How can it be made?

Why does my invention need to be made?

Where will my invention be used?

When will my invention be used?

Who will use my invention?

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eduard's Avatar

in a ppa do you really have to explain how an invention has to be made or manufactured?  I hope not as there are different ways that my invention could be made or manufactured.

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eduard's Avatar

if applications is the different ways that your invention could be used I would think that putting that in your provisional patent application could severely limit your invention.  Am I wrong in my assumption?

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chappy75's Avatargold

Eduardo,

Think it is important to know what a PPA is and how it effects things. 

"Who will use your invention" is a fantasy question because you really don't know until you have sales. 

The PPA is simply a marker in time to say you have an idea and you're claiming it on a certain day in history as it may be unique. The only time it is going to come into play is IF there is a challenge by yourself or another person for the same IP. The likelihood, while possible, is unlikely. The biggest advantage you have is that you can start looking for funding or licensing or manufacturing without a lot of fear people are going to "Steal" your idea. That doesn't stop them from knocking it off but they will do that anyways if that is how they do business.

The specificity of "Claims" and descriptions and the like are important only in the Utility Patent itself. Make sure you have a professional do that. 

The majority of your questions are too much thinking. What it is... how it works... the industry maybe... cite prior art and how yours is different. It is a sealed document. Easy Peezy and not a big deal. I overthought mine too. Now that I have an issued utility patent I understand really, how early it is in the game for that.

Having a patent search done so that you can properly cite prior art adn how your invention is different is probably the most important thing you can do.

Good luck.

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eduard's Avatar

I would also imagine that stating the purpose or function of your invention in your ppa would also severly limit your invention.  

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chappy75's Avatargold

yeah, That is what I consider a description.

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glenninventor's Avatargold

A really good book that will help is "Patent Pending in 24 Hours" by Attorneys Richard Stim and David Pressman. I just picked up a copy at my local library last week. It's all about doing Provisional Patent Applications.

Make sure you get the latest edition. It's up to the 7th edition and my library had to special order it from another library since they only had an older version. I'm guessing that since the laws keep changing, may as well read the latest edition. 

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vitaminguy's Avatargold

I'm no lawyer, but I think that "Who will use your invention?" is a bit more than a fantasy question. It helps to establish the area of knowledge pertinent to the invention. The term, "... known to those knowledgeable in the art ..." can allow the inventor to describe a feature without the implying that the invention is limited to only the feature as described. For example, just because she used nylon insulation in her example, it doesn't mean that nylon is the only material that can be used. Her patent application or PPA can say that the insulation on the wire may be made of any material known to those knowledgeable in the art. This have much farther reaching consequences, such as when you get into a patent dispute. Either side may claim a feature to be prior art or not prior art, depending on whether it was "known to those knowledgeable in the art." I think this can be very important in a PPA, since the person filing it is likely to leave out information that broadens the scope of what is claimed to be novel. By stating that it will be used by electrical engineers, she may be able to argue that using different insulating materials would be totally obvious to electrical engineers, and so her description, while limited, actually encompasses all the materials an electrical engineer would consider common or obvious.

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kabuj's Avataree_badge

James states " The only time it is going to come into play is IF there is a challenge by yourself or another person for the same IP".... It is imperative to understand that the Examiner will actually review the PPA if/when you file a RPA which claims the filing date of the PPA. The examiner will review the PPA to determine if the disclosure in the RPA introduces ANY new matter (in the broadest sense). If what you are disclosing/claiming in your RPA is inconsistent with what you disclosed in your PPA, then you will not be given the benefit of the RPA filing date.

As such, it is absolutely critical that you know what you are doing when filing a PPA (if your intent is to claim it's benefit).

There is so much more to say about PPA's because they are always underestimated. You should do a search of these forums on the subject as there has been EXTENSIVE discussion regarding the content of PPA's and there importance.

I Personally believe it is practically impossible to file an effective PPA without being able to effectively final draft the RPA.

Best of Luck!

Frank White
Jeremy C
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chappy75's Avatargold

you guys might be right... I am just going from the process I just went through and have 2 utility patents coming out of it.

When we filed the PPA the company I hired stated... " (This) product could be useful because it has (this capability) which is beneficial because of (this). (This product) contains these components in (this pattern) and achieves (These means) that compared to (these competitive products) solves (This problem) better.

When I wanted to establish how the product would be used by certain population segments and how much money it could make, the professional who was helping me struck it all saying that I don't want to include strategies in a PPA, it doesn't matter. 

Do whatever you feel though... We're good.

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chappy75's Avatargold

KJ, what is an RPA? Not familiar with that term besides being a Registered Patent Agent... I don't want to know how to fill one of those out.

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kabuj's Avataree_badge

"Regular" Patent Application (verses a PPA- Provisional Patent Application). Meaning a regular (non-provisional) patent application that is submitted for examination. Worth reviewing below link

http://patentapplication.com/Patent%20Applications.htm

Best!

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chappy75's Avatargold

A Regular Patent Application would then be a either a Utility Patent or a Design Patent. It is way different and I mean an incredibly different set of rules from a PPA. I would assert, "you don't have to file a perfect Utility Patent as a PPA".

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kabuj's Avataree_badge

PPA are only allowed for Utility patents (not Design Patents).... The basic difference between a PPA and RPA ,I would argue is "formality" (NOT substance)..

The last paragraph under section "B" of the link I referenced in my previous post is important to understand so as not to underestimate the importance of PPA substance...

Reads as follows:

One last thought to keep in mind is that a provisional patent application must not be considered to be an upgraded form of the U.S. Patent & Trademark Office Disclosure Document Program. For a provisional patent application to have any real meaning, the disclosure must be fully enabling -- you are not merely establishing priority of conception as you would with a disclosure document. With a provisional patent application your disclosure must be complete enough to literally constructively reduce to practice your invention.

END OF QUOTE...

I would also add that you must remember if there is ANY matter disclosed/claimed in the RPA which is deemed "new matter" by the examiner( was not generally disclosed in the PPA) , you will be unable to claim the filing benefit of said PPA.

I really encourage you to read up on PPAs. I recommend the book "Patent It Yourself" by David Pressman.

I'm not an attorney nor do I play one on T.V. :-)  My comments are based on my personal experience with developing and filing and arguing my own paten applications over the last 20 years. There are plenty others on this form with experience and insight as well.

FRANK.. if you're out there... Please chime in :-)

Charlie Lumsden
Thom C
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chappy75's Avatargold

Okay...

So the RPA is the reference to the application and Design Patent are treated the same as Utility Patent in the application process. The difference is only the final result which is determined by the examiner.

"There are two types of patent applications: Regular and Provisional. A "regular" patent application is basically any patent application filed that is not a "provisional" patent application. Only a utility patent application can be filed as either a provisional or a regular patent application (all design patent applications must be filed as a regular patent application)."


Thanks, That was a fun exercise. :-)

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let-them-fly's Avatargold

Chappy... there is a Provisional Application for Patent (PPA), and a Non-Provisional Application for Patent (NPA or RPA)

The Non-Provisional Application can be for Utility or Design

The Provisional Application can ONLY precede an NPA/RPA for a Utility Patent.

Although the PPA is not examined for merit, in order to claim the priority date of the PPA in the NPA/RPA application, the examiner confirms the PPA is within the 4-corners of the Claims/Specification of the NPA/RPA.

As Ken said, the PPA must not leave any doubt or speculation as to the MERITS of the invention, so that anyone skilled in the arts could follow the description and recreate the invention. (put it to practice) The USPTO states that: A filing date will be accorded to a provisional application only when it contains a written description of the invention, complying with all requirements of 35 U.S.C. §112(a).

--beginning of quote-- 35 U.S.C. §112(a) The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. --end of quote---

Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file with the application any drawings necessary for the understanding of the invention, complying with 35 U.S.C. 113.

--beginning of quote-- 35 U.S.C. 113 The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Director may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim. --end quote--

Now the examiners understand the Applicant will refine some parts of the invention during the pendency period, but as I said above, as long as those refinements are within the 4-corners of the Claims/Specification and do not introduce New Matter, there is not an issue.      It is after the examination, in the Publication Branch, that adjustments to the Specification can be made via the ominous "312 Admendment".

Charlie Lumsden
K J
K J
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chappy75's Avatargold

Frank,

I am familiar with Non Provisional and provisional... Never thought that a "Regular" Patent application was actually a term. Today I learned what a "Regular" Patent Application (RPA) is. I would have thought it was non-provisional. Learn something everyday.

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let-them-fly's Avatargold

It can be either, Chappy.

It's kind of like having so many people say: "I have a provisional patent", when there is no such thing, but most know what they are talking about.    

The USPTO makes reference to a "Regular Non Provisional Patent Application" a couple times in one of their articles HERE.... as well as some Patent Attorneys, such as THIS one.    NPA or RPA.. they're both correct.     PPA or PAP... they're both correct.

Most who have been around the lingo for a while have no problem interpreting what's being stated, however there could be issues arise when communicating with (1) a rank amateur with zero knowledge of the processes, or in (2) a formal/professional environment. (such as during a presentation to a company or giving testimony in court)     

#1 is what trips up a lot here who are filling out the submission form and indicate they have a patent, when they actually just have a filed application, and that's why we here on the forums should strive to be as accurate with terms as possible; for the new people's sake.

Charlie Lumsden
K J
K J
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chappy75's Avatargold

Oh, The infamous "Provisional Patent"... lol

okay. Honestly, it was purely the phrase "Regular Patent" and RPA that threw me. 

Provisional and non provisional patent is how I understand it. I learned "Regular" is actually a word that is part of an acronym to describe a patent application. It is like being part of a DND game and learning that the secret password is "Open-says-me"... you just scratch your head and say, "hmmm, really? okay" and move on.

I am not sure which of your self-proclaimed categories this situation fits and I fear your response and I mean shaking... lol :-)

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