Drafting a Provisional Patent

(for non-commercial use at VGU campus only)

Louis WY Liu
Contents of a Specification
Depending on the countries where the patent application is filed, the
specification to be submitted should normally contain the following sections:
• Title;
You should avoid giving any details about
• Technical field; your invention in these three sections. If you
• Background; do that, you knowingly or unknowingly
admit that your invention belongs to a prior
• Object of invention; art.
• Brief description of the drawings;
• Detailed description;
• Claims
• Abstract
Patent Co‐operation Treaty (PCT)
A typical specification for an international patent application filed under
PCT normally contains the following sections:
• Technical Field; Again, you should avoid giving any details
about your invention in these sections. If
• Background Art; you do that, you knowingly or unknowingly
admit your invention is a prior art.
• Disclosure of Invention;
• Brief Description of Drawings;
• Best Mode(s) for Carrying out the Invention;
• Industrial Applicability; and
• Claims.
United States Patent & Trademark Office
(USPTO) Again, withheld any details regarding your invention in these sections. If you do that,
you knowingly or unknowingly admit that your invention belongs to a prior art.

A typical patent specification has the following sections:

• Title of invention
• Cross‐reference to related applications;
• Statement regarding federally sponsored research or development (if any);
• Reference to a Sequence Listing (if any);
• Background of the invention;
• Brief summary of the invention;
• Brief description of the several views of the drawing (if any);
• Detailed description of the invention;
• Claims; and
• Abstract of the Disclosure.
Example 1 – Utility Patent Application
• The following example shows a quick example of a provisional utility
patent application. It was taken from the following video. I have
added a couple of sentences which, I think, is useful. I suggest you
watch this video first before proceeding to the next stage:
https://www.youtube.com/watch?v=VGsBVR4YUxc
Example 1 – Utility Patent Application (Con’t)
SPOON WITH EJECTION MECHANISM
Field of Invention
This invention is related to spoons. More particularly, it is related to spoons with ejection mechanism.
Background
Using a serving spoon to serve sticky food items can be challenging and messy at times. It is
therefore desirable to have improvements in spoons for dispensing such food items.
Detailed Description
The spoon 100 of disclosed embodiments includes a first handle 102 coupled to handle 108 via
pivot point 116. Handle 102 has shaft portion 118. At the end of the shaft portion 118 is a basin
112 that is convex to contain food.
A blade 120 is connected to rod 114. Rod 114 is connected to gear 104, which engages with
toothed rail 106. Toothed rail 106 is connected to handle 108. When a user squeezes handles
108 and 102 t bring them closer together, the toothed rail 106 causes the gear 104 to spin,
causing the blade 120 to move within the basin 112, helping to free food contents from the
The illustrative
basin. embodiments
Spring 110 are described
disposed between the with respect
handles to a the
causes spoon with ejection
handles 102 andmechanism only as
108 to separate
examples.
when theSuchuser descriptions
releases theare not intended to be limiting on the invention. In an alternative
handles.
embodiment, the spring in the preferred embodiment can be configured with a plurality of elastic objects
inserted between the handles of the spoon without departing the scope and spirit of the invention.
Example 1 – Utility Patent Application (Con’t)
The preferred embodiment was chosen and described in order to best
explain the principles of the invention and the practical application, and to
enable others of ordinary skill in the art to understand the invention for
various embodiments with various modifications as are suited to the
particular use contemplated.
Example 1 – Utility Patent Application (Con’t)
What is claimed is:
A spoon, comprising:
A first handle;
A second handle rotatably joined to the first handle at a pivot point, and
wherein the second handle includes a shaft section;
A basin connected to the shaft section;
A blade disposed within the basin portion;
A rod connected to the blade;
A gear connected to the rod;
A toothed rail connected to the first handle and engaging with the gear;
and
A spring disposed between the first handle and the second handle.
Example 1 – Utility Patent Application(Con’t)
What is claimed is:
A spoon, comprising:
A first handle;
A second handle rotatably joined to the first handle at a pivot point, and
wherein the second handle includes a shaft section;
A basin connected to the shaft section;
A blade disposed within the basin portion;
A rod connected to the blade;
A gear connected to the rod;
A toothed rail connected to the first handle and engaging with the gear;
and
A spring disposed between the first handle and the second handle.
Example 1 – Utility Patent Application(Con’t)
List of Figures
FIG.1 is a perspective view of disclosed embodiments.
FIG. 2 is a front view of disclosed embodiments.
FIG. 3 is a back view of disclosed embodiments.
Example 1 – Utility Patent Application(Con’t)
So, what is utility patent?
 There are many different kinds of patents, but when we talk
about patents, we are usually referring to utility patents.
 Utility patents can be any of the following four kinds:
a) A process, which can be a combination of steps or methods.
b) An apparatus, which can be is a combination of parts.
c) A manufacture, which can be is a combination of materials to make
something new.
d) A new composition of matter, which can be a chemically new
substance, like a drug or other formula.
 Invention can be any combination of the above categories.
 Not everything is patentable. You cannot patent an idea or a
discovery.
 But you can patent an embodiment of an idea.
 If you want to know if your embodiment is patentable or not,
just check if it can be described in terms of utility patent
What follows explain how to come up with
an utility patent application.
Title
• The title should broadly capture the features of the invention. It should
not be overly specific.
• Normally, it should not be more than fifteen (15) words.
• Further, Inventor’s name, the word “patent”, words in other languages,
the abbreviation “etc” and fancy words may not be used in the title.
• For example, a title may be
1. “A system and a method for fabrication of nano- or micro-structures”;
2. “An apparatus and a method for multi-dimentional microfabrication”.
Technical Field
• The “Technical field” section will mention what field the invention
belongs to and particularly states the subject matter of the invention.
• For example, the Technical Field may state
1. “The invention generally relates to fabrication, and more
particularly, to a process for mass fabricating a plurality three
dimensional objects”.
2. “The invention generally relates to dispensing machines and more
particularly to a machine which dispenses coins”.
Background
• When drafting a patent application, you may use this section to
discuss the prior arts, the advantages and drawbacks of the prior
arts. In so doing, this section can distinguish your invention from
that of what is already being practiced.
• However, we should never mention anything related to your
invention in this section. From the patent examiner perspective,
whatever that has been discussed in this section belongs to a prior
art, i.e. a conventional method or apparatus with nothing new. He
or she may use this as a justification not to grant you a patent.
• In general, it is better to say NOTHING about your own invention.
NOW, you are ready to focus on disclosing
your invention.
Object
This section is aimed at bringing about the objectives, advantages or
solutions achieved by employing the invention at hand.
It may include statements such as
“The principle object of an embodiment of this invention is…..;
Another object of the embodiment of this invention is……;
Yet another object of the embodiment if this invention is…;
Still another object of the embodiment of this invention is…..
Detailed Description
• Ideas cannot be patented. Only embodiments of an idea can be
patented.
• All the features of the invention must be identified in reference
numerals.
• In the specification, it is important to add a warning against any
potential infringement (i.e. infringement in the manner of falling
within the spirit and scope of invention).
Claims
• Represent the heart of any patent application.
• Define the scope of protection given to an invention.
• Are usually the first and sometimes the only parts of the patent application actually reviewed
by the patent examiner.
• Should be written in one single sentence.
• Are divided into independent claim and dependent claims.
• Are formatted in a way that each claim contains three parts:
Preamble + Transitional Phrase + Body
e.g.
• a/an is the article to be used
before a noun or object that
An apparatus, comprising: has not been mentioned in
the claim section.
a pencil; • the/said is the article to be
an eraser attached to the end of the pencil; and used before a noun or object
that has been mentioned in
a light attached to the center of the pencil. the claim section.
Claims - Preamble
• Preamble
It means something that defines the category/type of invention
“A semiconductor device … “
“A composition … “
“A method of making…”
“An apparatus and method of ….”
It also identifies the type of an invention. For example,
“A method for…. “
Normally, it is consistent with the title. For example, if your patent
application is entitled “A Cooking Apparatus”, then the first
independent claim should look like “An apparatus for cooking….”
Claims – Open Transitional Phrases
• Transitions
Transitions (or transitional phrases) can be open transitions or close
transitions.
Open transitional phrases are either “comprising” or “including”
i. These phrases have been construed to mean “including the following
elements but not excluding others” in most jurisdictions;
ii. They are typically interpreted as being open-ended (allowing inclusion
of other elements/steps);
iii. However, it is important to be wary of differences across different
countries.
iv. When drafting the claim section, we should use open transitional
phrases rather than close transitional phrases.
Claims – Closed Transitional Phrases
• Closed Transition is “Consisting of”
i. Closed transitional phrase has been construed to mean that the
claim covers only the elements named with nothing more;
ii. the body of the claim following this phrase specifies “100%” of
everything protected;
iii. It confers a close-ended connotation.
iv. Normally, this phrase should be avoided when drafting the claims.
Claims – Body of A Claim
• The body of a claim follows the transitional phrase;
• It defines the limitations of the claim;
• It also explains the relationship between the different limitations.
eg. An apparatus, comprising: This phrase explains the
relationship between
part A; and parts A and B.
part B coupled with part A.
eg. The following claim directed to a bed would most likely be rejected by the
patent examiner:
An apparatus for holding a plurality of human bodies and/or animals,
comprising:
a top; and
at least one leg.
Why? The body of the claim is no more than a list of parts, with no relationship
between (or among) the recited elements.
Claims – Body (con’t)
Here is a much improved version of the body of the claim:

An apparatus for holding a plurality of human bodies and/or animals,

comprising:
a top; and
at least one leg coupled with the top to
support the top in an elevated position.
 Claims - punctuation
• A claim should be written in a single sentence, with
a comma appearing at the beginning of the transitional phrase;
a colon appearing at the end of the transitional phrase;
a semi-colon appearing between each subpart;
a period ending the claim.
• For example, the following claim is correctly formatted:
An apparatus, comprising:
part A;
part B; and
part C coupled with parts A and B.
 Claims - Reference Numerals
• In some countries, claims may need reference
numerals that match corresponding elements in the
drawings and specification of the patent application.
• Assuming Figure 1 of the application shows a
container for holding water, we may establish a claim
the following manner:
A method for making an apparatus for holding
solid substances (116), comprising:
a container (114);
a plurality of legs (110) supporting the container
in an elevated position; and
A plurality of handlers (110) attached to the top
edge of the container.
Claims - wherein/characterized in that
• The patent office may require additional words/phrases to be added to further
define or characterize a structure or to provide a function associated with a given
structure.
• The phrases that are normally used for this purpose include “wherein” or
“characterized in that”. These phrases or words are equivalent to “such that” in
ordinary English.
• For example, the claim from the previous example can be further modified or
extended in such a way to make it more specific in the following manner:
A method for making an apparatus for detecting earthquakes (116), comprising:
a container (114) holding a plurality of metal balls, wherein the metal balls
are configured to roll in all directions;
a plurality of legs (110) supporting the container in an elevated position; and
a plurality of handlers (110) attached to the top edge of the container.
 Claims – No human objects/subjects
• When drafting a patent, we should avoid using any human objects or subjects
in any claim.
• A claim should not be directed to any human objects or subjects; or else, it will
be very likely rejected by a patent examiner.
• For example, the following claim will unlikely be acceptable:
A computer-implemented method for providing weather information,
comprising: human or animal finger;
receiving a keypress from a user;
sending a weather data request to a remote server in response to the
keypress;
obtaining the weather data at the remote server from a weather database;
and a computer screen.
sending the weather data to the user.
 Claims – Dependent Claims and Independent Claims
• In almost all countries under WTC, each invention is allowed to have only one claim set only (although, in the US, a
patent with at most three claim sets are legally feasible).
• Regardless of the country where the invention originates, each patent claim set can further comprise one
Independent (main) claim and several dependent (sub) claims.
• The dependent claims depend on the independent claim or one of the dependent claims that have been added.
They should be drafted in a way to cover the things absent in the preceding claim(s).
• The Independent Claim(s) is intended to define the invention as broadly as possible. Your goal is to obtain Freedom
to Operate, with enough "white space" around your Preferred Embodiment that competitors cannot change minor
details to avoid licensing your patent.
• Dependent claims are equivalent to alternatives in laymen terms. They provide paths to multiple embodiments of
your invention, and also provide a means to establish Prior Art to prevent others in the field from seeking similar
patents. For instance, you can anticipate some refinements or other uses that solve a related problem that a
competitor might implement to work around your independent claim.
• The claims in a patent application are similar to novelties in the conclusion of a research paper. The role of the
patent examiner is similar to the reviewer of a journal. Therefore, the claims in a patent application is a starting
point for negotiation with the patent office on novelty and non-obviousness. Through a series of interaction
between the inventor (you) and the patent examiner, you and the Patent Office negotiate to (optimally) the
broadest possible coverage on the independent claims.
• Often, when an independent claim is too broad, the patent examiner has a right to ask the inventor (you) to
move dependent claims to the body of the independent claim. In so doing, you narrow the scope of your
 Claims – Dependent Claims and Independent Claims (Con’t)

• For example, an inventor might have invented a device for zapping the
bugs. He or she may draft the claim section in the following manner:
Claim 1: An apparatus for zapping flying insects, comprising:
an electric power source; and Independent
claim
a light-based flying insect zapper bug killing element
configured to receive electric power from the electric
power source.

Claim 2: The apparatus of claim 1, further comprising a cage like

frame surrounding the light-based bug killer element.
Dependent
claim
 Claims – Dependent Claims and Independent Claims (Con’t)
• In the claim section, the major parts of an apparatus claim are often referred to as
“elements.” Each major and minor requirement of a claim is referred to as a
“limitation.
• A dependent claim can only add more specifications (i.e. more limitations) but it
cannot subtract limitations from the parent claim.
For example, dependent claim 2 in the following example will very likely be rejected
by a patent examiner:
Claim 1: An apparatus for zapping flying insects killing bugs, comprising:
an electric power source; and
a light-based flying insect zapper bug killing element
configured to receive electric power from the electric
power source.
Claim 2: The apparatus of claim 1, wherein an electric power source are not required.
Claims – Dependent Claims and Independent Claims
Independent Claims
• Stand alone
• Contain all claim limitations
• Always broader than
dependent claims
• One independent claim may
be broader than another
independent claim
Dependent Claims
• Reference a specific
independent claim
• Include all limitations of the
independent claim
• Add more limitations to the
independent claim
• Immediately follow the
independent claim
Be Mindful of the Use of Adjectives
• When drafting a patent application, we should avoid using the terms like “soft”, “hard”,
“large”, “small”, “smelly”, and other adjective terms with no clear definition.
• However, we can work around the problem by adding the word “substantially” before
those adjective terms in a way to make the patent claims or the description thereof more
acceptable. In the above example, we can say “substantially soft” instead of just “soft”,
“substantially hard”, “substantially large”, “substantially small”, “substantially smelly”, and
so on.
• For the reason as stated above, the following statement is not acceptable in patenting
terms:
The product of the said method is simultaneously smelly without organic amine.
• However, this statement can be slightly modified in way to make it more acceptable:
The product of the said method is simultaneously substantially smelly without organic
amine.
 Example 2 – Process Patent Application
• A process patent is a derivative of a utility patent that covers methods of
changing the functionality or characteristics of a material during a particular
use. Here is an example:

CAKE MAKING PROCESS

Abstract
A Cake Making Process is disclosed. The disclosed process is related to creation
of a pre-filled cake without any external blemishes or apertures on its external
surface, in the absence of any step involving cutting, penetrating and/or
trenching.
 Example 2 – Process Patent Application (Con’t)
Field of Invention
This invention relates generally to bakery methodologies and, more particularly, to a process
of making a cake.
Background
Making a cake with fillings normally requires manual cutting, poking a hole or trending on
the side of the cake. The fillings can be liquid, semi-liquid such as peanut butter or any other
partially solid materials. Inserting fillings into a cake through the cutting, poked holes or
trending is a challenging and time-consuming process . In the absence of any improvement
in the conventional cake making methodology, the productivity of the cake process will not
be improved.
Detailed Description
The invention is disclosed to enable any person skilled in the art to make and/or use the
invention and sets forth the best embodiment contemplated by the inventor of carrying out
his/her invention. Many variations or modifications, however, will be apparent to those
skilled in the art without departing the scope and spirit of invention.
 Example 2 – Process Patent Application (Con’t)
The preferred embodiment of the present invention can be appreciated by those skilled in art with the accompanied
drawings.
FIG. 1 shows a flowchart depicting the process steps involved in the present invention. It should be immediately
apparent that the present invention involves much fewer steps for filling a cake with filling material as compared to
the prior art methods discussed above.
In the first step, as shown in FIG. 1 (102), the cake ingredients are mixed to form a batter. The batter 32 in liquid
state. poured into the template 26 until it is the proper level relative to the top opening 28 in such a way that a
complete cake will be created. The cake ingredients can be prepared according to a pre-mixed cake mix.
In the next step, as shown in FIG. 1 (104), the said batter is then placed into the baking template. As shown in FIG.
2A, the cake template 26 is defined by a bottom 30 and a top opening 28. In a preferred embodiment, as illustrated
in FIGS. 2A and 2B, the bottom of the form 30 will be used as the mould for the top of the cake, whilst the bottom of
the cake is the top of the cake form 26.
In the next step, as shown in FIG. 1 (104’), the batter mix is dehydrated from liquid to viscous or partially solid state.
In another preferred embodiment, such a dehydration process can be implemented at humidity of 80% by elevating
the surrounding temperature to anywhere between 40oC and 70oC for approximately 2 hours.
At some point prior to executing step 104’ in FIG. 1, as labelled as 106, a plurality of ingredients are mixed together
to a mixture or chemical compound, and frozen to a solid or partially solid form. In a preferred embodiment, the
freezing temperature is approximately 32oC, and the freezing duration is approximately 1.5 hours.
In the next step as shown in FIG. 1 (106), the filling material is submerged into the viscous and partially liquid cake
batter 106 in the baking template.
Example 2 – Process Patent Application
(Con’t)
In the next step, as shown in FIG. 1 (108), the baking template together with the
batter and the filling material is baked in the oven until the cake reaches a solidified
form. In a preferred embodiment, the temperature is anywhere between 100 and
110 degree Celsius, and the baking duration is anywhere between 1.5 hours and 6
hours.
In the next step, as shown in FIG. 1 (110), the filled and baked cake is removed from
the oven, cooled down to the room temperature and removed from the template. As
shown in FIG. 3, the finished cake should be free of any external blemishes or holes.
The description of the present invention has been presented for the purposes of
illustration and description. However, it is not intended to be exhaustive or limited to
the invention in the form disclosed. Those skilled in the art will appreciate that many
variations and/or modifications of the preferred embodiment can be configured in
said process without departing from the scope and spirit of the invention. Therefore,
it is to be understood that, within the scope of the appended claims, the invention
may be practiced other than as specifically described herein.
Example 2 – Process Patent Application (Con’t)
LIST OF DRAWING
FIG. 1 shows a flowchart depicting the process of making a cake with
filling materials in the absence of any step involving cutting, trending or
poking on the surface of the cake.
FIGS. 2A-2C depict the cake made by the method of the present invention
prior to baking; and
FIG. 3 is a perspective view of a cake made using the method of the
present invention.
Example 2 – Process Patent Application (Con’t)
What is claimed is:
1. A method and apparatus for making a cake with filling materials,
comprising the steps of
mixing cake batter ingredients to form a cake batter;
transferring said cake batter into a cake template;
dehydrating said cake batter to a viscous or partially liquid state;
freezing filling materials to a solid or partially solid form;
submerging said chilled filling materials in said cake batter;
baking said cake template together with cake batter and filling material
to form a solidified cake; and
removing said finished cake from said template.
100 Mix ingredients to form batter
102

Freeze filling materials to a

solid or partially solid state,
Pour the batter into the baking template with the temperature being
104 approximately 30 degree F.
100

Dehydrate the batter to a partially solidified state for at

least one hour, 104’

Place the frozen filling

material(s) atop batter
106

Bake batter/filling Dissemble the cake

FIG 1. material/template
together
template
110
108
FIG 2A FIG 2B

FIG 2C
FIG 3