Provisional Vs Non Provisional Patent

Rich Goldstein

Founder & Principal Patent Attorney
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PROVISIONAL VS NON PROVISIONAL PATENT

In deciding whether to file a provisional vs patent application, it’s important to consider both your short term goals and long term strategy. That is, you might want to file a provisional first, and then file a non provisional (also known as a “utility patent application”) next. You’ll want to consider your current access to finances and the current state of your idea or invention in terms of both development and marketability.

Provisional Vs Non Provisional Patent

A provisional patent is an informal patent application filed with the United States Patent Office, whereas a non provisional patent application – also known as a utility patent application – is the formal patent application submitted to the United States Patent and Trademark Office for your invention.

Eventually, all roads lead to filing a non provisional patent application, but filing a provisional patent application first can be a helpful initial step in the process.

What Is a Provisional Patent?

In the U.S., it is possible to file a provisional patent application to ‘get your foot in the door’ with your invention at the Patent Office. The emphasis in filing a provisional is providing a full description of your invention. Certain formal requirements, like filing an oath or declaration are not required in a provisional patent application. Keep in mind that a provisional patent application expires one year after it is filed. That is to say, you can only use the provisional application as priority if the later filed non-provisional patent application is filed no more than one year after the provisional patent application filing date. More on that later.

Four businessmen debating at a table

Benefits of Filing a Provisional Patent Application

While you might be tempted to jump to file a non provisional application to remove a step in the patent prosecution process, a provisional patent application could actually provide numerous benefits for you.

Preserve Your Filing Date

Most importantly, a provisional patent application reserves what is referred to as your “filing date.” This date reserves your priority over the patent. Having the earliest possible filing date is important because the United States operates under a “first-to-file” system. Keep in mind that this priority is given to the subject matter contained in your provisional – the invention that is fully explained in the provisional. So the priority you get is only as good as your invention is well explained in your provisional.

First-to-file System

The U.S. is now a first-to-file system. A first-to-file system means that the first inventor to file for a patent has priority toward getting the patent. This is a change from the historical practice in the United States to grant patent rights to the first inventor under the previous first-to-invent system.

Under a first-to-file system, your filing date is more important than ever. So you must make sure to stake your claim to your idea and preserve your patent rights.

Avoids Review by the Patent Office

A provisional patent application is not reviewed by the United States Patent Office on its merits. This means a patent examiner will not be assigned to your provisional patent application. It also means you won’t have to respond to Office Actions from the Patent Office about your application. Office Actions raise issues about a patent application and can require lengthy responses that include amendments, requirements for additional documentation, arguments, and explanations.

Uses an Informal Format

Provisional patent applications are also helpful because they allow you to use an informal application format. You can provide hand sketches or even photographs to show your invention – as long as they clearly illustrate the features. The description doesn’t need to follow any specific format. You do not need to sign any type of oath or declaration for a provisional patent application. Claims are also not required within your provisional patent application. Essentially, the main focus is on providing enough information to fully explain your invention and preserve your patent rights.

Spreads Out Patent Costs

Another great benefit of a provisional patent application is it allows you to spread out what can sometimes be there are upfront costs associated with drafting and filing both a provisional or non provisional patent application, but preparing a provisional definitely costs less. So filing a provisional patent application first, spreads the patent prosecution costs by delaying the cost of preparing the more expensive non-provisional / utility patent application by up to a year. Also by delaying the filing of the non-provisional patent application, examination by the Patent Office will happen later, and so you will also delay the cost of responding to Office Actions, and other patent prosecution costs.

Filing Costs

The attorney’s fees for drafting both provisional and non provisional patent applications depend on how detailed your provisional patent application is. However, you can lower the costs of a provisional patent application by taking a less detailed approach. Then you can build off of that application with additional detail, improvements that come to light after filing your provisional, and patent claims when it comes time to submit your non provisional application.

There are also fees associated with filing both applications with the Patent Office apart from the attorney’s fees necessary to draft the application. A provisional patent application filing fee will vary, but typically costs about $70-280.

Patent Prosecution Costs

Importantly, by filing a provisional patent application, you delay the costs associated with the patent prosecution phase of obtaining your patent. Costs during the patent prosecution phase can range, depending on the Patent Office’s review of your patent application. Your patent attorney will be responding to Office Actions issued by the Patent Office and other inquiries posed by your patent examiner as the Patent Office evaluates whether or not to approve your patent.

By filing a provisional patent application, you delay the costs associated with responding to these inquiries by at least one year.

Provides More Time to Refine Your Invention

Filing a provisional patent application preserves your filing date while giving you one year more to further refine and improve your invention. This additional time can be integral for testing and tweaking your invention so that you can create the best invention possible.

Man signing a written document

Gives Additional Time to Test the Market

Filing a provisional patent application can also be beneficial because it gives you one year more to test your invention in the market. Making your invention public without filing a patent application can cause you to lose your domestic and foreign patent rights. Filing a provisional patent application, when done correctly, can prevent your marketing or other public disclosure of your invention from being a bar to your patent rights. By conducting additional market tests, you can potentially make changes to your invention that will help increase your market share, and include those changes in your non provisional application.

More time testing the market can also provide you with more data on how marketable your invention really is. This can help inform whether you want to continue down the costly road of patent prosecution.

Downsides to Filing a Provisional Patent Application

While filing a provisional patent application has numerous advantages, there are also some downsides you will want to consider when choosing between a provisional patent application vs non provisional patent application.

Delay the Date a Patent Is Granted

Filing a provisional patent application first will delay the date a patent is officially granted. This is because you would file your non provisional patent application at a later date than you otherwise would. The process of reviewing your patent application and granting a patent does not begin until you file the non provisional patent application.

If the most important thing to you is to get your patent application granted as quickly as possible, then a provisional patent application may not be the best idea for you. Keep in mind that it can take the Patent Office around a year and a half before it even begins reviewing your non provisional patent application. From there, the patent prosecution phase can take additional months or years. This will depend on the extent of the back and forth inquiries and submissions between your attorney and the patent examiner.

Non provisional patent applications enter into a queue when they are submitted to the Patent Office. The applications are typically reviewed in the order they were received. If you want to get into this queue as quickly as possible, skip the provisional patent application and go straight for the non provisional patent application.

Risk Not Filing a Complete Application

Another downside to filing a provisional patent application first is that you risk not filing an application that completely covers all aspects of your invention. Provisional patent applications still need to be sufficiently detailed, even if they need not be as formal as non provisional patent applications.

If your invention is not adequately described in the provisional patent application, then you won’t be able to rely on its filing date when claiming priority in the first-to-file environment. The standard here is whether a person of ordinary skill in the field would be able to recognize the invention in the nonprovisional application that would be filed later on.

Because of this, it’s important to make sure the written description in your provisional patent application is sufficiently detailed. It can be helpful to include charts, diagrams, and other images to more fully explain your idea.

The problem that arises is that since the provisional is not reviewed by the Patent Office, no one will tell you if your description is inadequate. Thus, there is a risk that your provisional application will be incomplete and will give you a false sense of security about your priority for a patent.

What Should Be Included in a Provisional Patent Application?

The requirements for a provisional patent application are set out in 35 U.S.C. section 111. Essentially, your provisional patent application must include:

  • Cover sheet;
  • Written description;
  • Drawings (if necessary);
  • Fees.

35 U.S.C. 112 sets forth the requirements for the written description, which is also called a specification. This statute requires a clear and concise description of the invention and the manner and process of making and using it. Remember that a person of ordinary skill in your field must be able “practice” (reproduce or recreate) your invention from your description.

What Is a Non Provisional Patent Application?

A non provisional patent application (or “utility patent application”) is the formal patent application that you need to submit to the Patent and Trademark Office to seek a patent for your functional invention. You will always need to file a non provisional patent application if you want to obtain patent approval.

Files stacked against each other

A non provisional patent application must be filed within one year after filing your provisional patent application. The filing of this application will place you into the Patent Office’s queue to have your patent application officially examined by a patent examiner from the Patent Office.

What Are the Patent Examination Timelines?

The United States Patent Office is extremely busy and overburdened with patent applications. This means it typically often takes one to two years before an examiner even starts reviewing your application.

Art Unit Placement

Initially your application will be reviewed by multiple individuals who assess your application’s written description and diagrams to determine the specific “art unit” within the Patent Office to send your application. Art units are divided by technology areas that mirror the various classes and subclasses the Patent Office uses established to classify patents by technology.

First Review by Patent Examiner

Once your application is placed in an art unit, it will be assigned to a specific patent examiner. This patent examiner will then review your application in detail and issue various Office Actions to you. The examiner may initially issue a “restriction” – pointing to the presence of more than one possible invention in your patent application, and require you to pick one for examination. After you pick the invention to pursue, the examiner will do a thorough search for “prior art” (previous inventions by others), and make a determination of patentability. This culminates in the examiner issuing a First Official Action on the Merits. The Examiner may either approve the application and issue a “Notice of Allowance”, or reject some or all of the patent claims.

Applicant Response and Examiner’s Second Review

Once you have received the examiner’s First Official Action on the Merits, you will have the opportunity to respond.  Keep in mind an examiner often rejects some or all claims in this initial stage. You will then need to respond to any rejections or objections. From there, it might take a few months for the examiner to review your response and issue a Second Action on the Merits.

Appeals Process

Ideally, your Second Action will grant you patent rights. Unfortunately, this isn’t always the case and you might get what’s called a “Final Rejection”. One option then would be to appeal the examiner’s decision to a panel of experience patent examiners. This appeal process will tack on even more time for you to get patent approval.

Keep this timeline in mind as you assess which type of application to file, and know that it is a lengthy process to getting to the finish line.

What Should Your Default Strategy Be?

Still on the fence between provisional patent application vs non provisional patent application? As you can see, there are certain benefits and costs associated with filing a provisional vs non provisional patent application.

If you are looking to save money in the short run, your default strategy maybe to file a provisional patent application first to preserve your priority as you pursue further development of your product or idea. If you do pursue a provisional, it is important that it is prepared with care to make sure the priority you obtain will be useful later.  Remember – the priority you get is only as good as the application is well written.

A provisional patent application can provide more breathing room for you to refine your invention. It can give you an additional year to test your product in the market so you can be better informed with how your invention will fare, and whether it is worthy of continuing to invest in the patent process.

A final note: these articles are intended to help you better understand the legal principles involved in the patent process and are not intended to be legal advice. Your specific situation may call for a very different pathway than discussed above. Legal advice should be from someone who fully understands the facts and circumstances of your situation. Feel free to contact us about the possibility of working together with us to get direct advice that is suitable for your goals and situation.

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