The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: October 2021

Provisional v. Non-Provisional Patent Applications: What’s the Difference?

A journey of 1,000 miles begins with the first step. So, too, does the journey of a game-changing invention. That first step is the brilliant idea, the light-bulb moment. The 1,000 miles is the long road from concept to prototype to patent. It can take a lot of time and trial and error before an inventor perfects their idea into a workable, functional product. During this time, however, the inventor can take responsible steps to protect their idea while working out their product’s kinks by filing a provisional patent application.

Buying Time, Saving Costs, and “Patent Pending”

Many inventors file a provisional application as a first step in securing patent rights because it is quicker, less expensive than filing a non-provisional application. Also, it can be submitted with basic information and images alone, as a specific format is not required.

One key benefit of a provisional patent application is that it acts as a placeholder temporarily holding an earlier filing date, up to one year, until the inventor is ready to file a non-provisional patent application. This earlier filing date can establish the non-provisional patent application’s priority date – the date used by the United States Patent and Trademark Office (USPTO) to determine if other similar written publications or filings can be considered prior art to be used against the inventor. Thus, the importance of filing quickly to secure the earliest possible priority date can be quite beneficial to beat competitors and secure rights in growing markets. The corresponding non-provisional application the inventor ultimately files will benefit from the provisional application filing date for patent protection.

Unlike a non-provisional patent application – which is the only application that can lead to issuing a patent – a provisional patent application will not be examined by the United States Patent and Trademark Office (USPTO). Instead, the provisional application gives the inventor up to 12-months to file a corresponding non-provisional application, during which time they can designate their invention as “patent pending.” The inventor can utilize this time to assess the market to determine if there is justification to move forward, continue to research, develop and refine their invention, and attempt to market and seek investors for their invention. At any time during this 12-month window, the inventor may proceed with filing the non-provisional application,

Reasons to Consider Filing a Provisional Patent Application

As noted, the requirements for filing a provisional application are much simpler and require less time and money. This is because the filing fee to be paid to the USPTO is less compared to the filing fee of a non-provisional patent application (discounted rates are available for qualifying applicants). Further, attorney fees are generally less expensive with provisional applications; because the USPTO does not examine provisional applications, they do not require extensive claims or submission in a specific format, allowing the attorney to focus their attention on disclosing the invention in as much detail as possible.

Other reasons you might file a provisional patent application include:

  • A non-provisional patent application requires an information disclosure statement, declaration, and patent claims, while a provisional application does not.
  • The USPTO never publishes provisional patent applications. After the 12-month period lapses, the provisional patent application automatically expires.
  • New matter cannot be added to a provisional application once filed. However, multiple provisional applications can be filed for the same invention to include new ideas and improvements. Thus, depending on your stage of product development, it may be wise to file a second or third provisional application to cover new subject matter not disclosed in previous applications. This allows you to benefit from the earliest possible priority date for each design and improvement when your invention isn’t ready for the full-blown non-provisional patent application. (The new subject matter will receive the priority date of the provisional application it was first described in. It is important to note that a non-provisional application is filed within 12 months of the first filed provisional application to claim priority back to each of the provisional applications).
  • An inventor could submit a provisional application on their own (but should not necessarily do so without a lawyer). A lawyer will ultimately be needed for a non-provisional application as the complexity and detail required can cause costly mistakes and delays if submitted without experienced patent counsel.

Reasons Not To File a Provisional Patent Application

While a provisional application may start the clock ticking on an invention’s patent protection, it will not get the ball rolling on the actual issuance of a patent for that invention. That is, a provisional application won’t move the patent examination and issuance process forward or get you in line for examination. If you believe that your invention is almost ready for prime time, you may want to proceed directly to filing a non-provisional application.

But if you are in the very early stages of development, it may be necessary to hold off on filing a provisional application until your invention is concrete enough to describe with adequate detail. As the USPTO recommends, the disclosure of the invention in the provisional patent application should be as complete as possible. And to receive the benefit of the filing date of a provisional application, the claimed subject matter must have support in the provisional application. Thus, a poorly drafted provisional application with little detail can be rendered useless.

These are just some issues and considerations involved in choosing between the provisional and non-provisional paths for your invention’s journey. The best way to determine how best to proceed is by consulting an experienced patent attorney. If you would like to discuss applying for a patent for your new invention, please contact the attorneys at The Dobrusin Law Firm.

Katherine Pacynski Participates in MSU Law Panel Addressing Lawyer Jobs in Intellectual Property

Dobrusin Law Firm shareholder Katie Pacynski served as a panelist for a virtual discussion – The “411” on IP-Related Jobs – coordinated by Michigan State University College of Law’s Career Services Office.

The panel addressed various career paths for the audience of first- and second-year law students. Topics included:

  • Different types of intellectual property-related law practices.
  • Working in small and midsize law firm environments.
  • Tips for choosing and pursuing a legal career in IP.

Kristina Bilowus, Assistant Director of Career Development at MSU Law, moderated the October 19, 2021, webinar, which featured Katie, Peter Keros from Burris Law, and Elizabeth Erickson of Quinn IP Law.

The USPTO’s Track One Program Offers Many Inventors a Quicker Path to Obtaining a Patent

Inspiration for a novel invention may happen in a flash, but the process for patenting that invention certainly doesn’t. In many, if not most cases, it can take two to three years or more for the United States Patent and Trademark Office (USPTO) to complete their examination of a patent application and either grant or deny the patent. For patent applicants in a hurry, the USPTO has established an expedited process known as Track One Prioritized Examination.

Established under the America Invents Act, Track One typically allows patent applicants to obtain a final disposition on their application within about 12 months. This process is not available for all types of patent applications, and the USPTO only accepts a limited number of Track One requests each fiscal year (Oct. 1 – Sept. 30). However, because Track One has been such a popular and successful avenue for processing patent applications, the USPTO recently announced that starting with the 2021 fiscal year, it will increase the limit on Track One requests from 12,000 to 15,000.

This means that more inventors will have the opportunity to take advantage of this expedited patent application program. Here is what you need to know about Track One and whether it may be right for your patent plans.

What Patents Are Eligible for Track One Examination?

As noted, Track One allows applicants to receive a final disposition on their patent applications within approximately 12 months and grants applications special status with fewer requirements and without having to perform a pre-examination search. This is a significantly shorter time frame than the normal patent examination process.

Only utility patent applications and plant patent applications are eligible for Track One; design applications are not. A utility patent protects the functional elements of an article; that is, what it does and how it works. Plant patents are granted to inventors who invent or discover and asexually reproduce “a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.” A design patent protects what an article looks like, i.e., its unique appearance, such as its shape, configuration, or ornamentation.

What Is Required for a Track One Application?

To apply for a patent through the Track One Prioritized Examination Program, the petition must include:

  • A specification including claims but no multiple-dependent claims, no more than four independent claims, and no more than 30 total claims.
  • Any required drawings.
  • An executed inventor’s oath for each inventor or a signed application data sheet with the name and address for each inventor.
  • Filing, search, and examination fees.
  • A prioritized examination fee.
  • A processing fee.

You must submit all of these required items on the same day, or the USPTO will dismiss the request.

Track One applications not only take less time for the USPTO to process, but they also have higher allowance rates than regular patent applications. The USPTO has an average allowance rate of 76 percent, but 87 percent of approved Track One applications receive a notice of allowance that a patent will be granted. While these are certainly attractive aspects of Track One, they come with a higher price since the required fees are substantially greater than for an application that is not prioritized.

To learn more about the Track One program and explore whether it is right for your invention, please contact the attorneys at The Dobrusin Law Firm.

Paul Palinski Joins the Council of the State Bar of Michigan’s Intellectual Property Law Section

Dobrusin Law Firm shareholder Paul Palinski is the newest member of the State Bar of Michigan’s Intellectual Property Law Section Council. He assumed his duties following a swearing-in ceremony on October 7, 2021, and will serve a three-year term.

The Intellectual Property Law Section provides education and information on federal and state patent, trademark, and copyright law matters through seminars, publications, and networking events.

This is the second volunteer leadership position Paul has stepped into this year. In July, he was appointed to the board of trustees of McLaren Oakland, a hospital that provides primary and specialty healthcare services to the greater Pontiac and Oakland County communities.

We congratulate Paul for taking on this new role with the Intellectual Property Law Section and representing the many IP practitioners in Michigan.

Erin Klug Voted Chair-Elect of the State Bar of Michigan’s Animal Law Section

The members of the State Bar of Michigan’s Animal Law Section voted to install Dobrusin Law Firm shareholder Erin Klug as Chair-Elect of the group’s leadership council for the 2021-2023 term. The election and took place at the section’s annual meeting in September.

The Animal Law Section provides education, information, and analysis about issues of concern through meetings, seminars, public service programs, and publications.

Besides her patent, copyright, and trademark law practice and the valuable intellectual counsel she gives to her clients, Erin is a longstanding animal advocate. In law school, she was a member of the Student Animal Legal Defense Fund and since 2018, she has served on the board of directors of Attorneys for Animals, a Michigan non-profit comprising legal professionals devoted to animal protection and providing resources for people who care about them.

We join her husband and family (Lola, Almond, and Greta, all rescue dogs) in congratulating Erin on her new leadership role!

Rebecca Wilson and Kiwanis Club of Macomb Resume Fundraising for Children’s Charities

In another act of community involvement, Dobrusin Law Firm shareholder Rebecca Wilson has been a member of the Kiwanis Club of Macomb since it was chartered. Although the pandemic halted their philanthropic activities in 2020, Becky and her Kiwanis Club colleagues resumed their fundraising efforts earlier this year, continuing their mission to support local children’s charities and give back to the community.

Recently, the Club presented a $500 check to the Parents and Friends of Glen H. Peters School. Founded 23 years ago, the Parents and Friends group acts as a parent-teacher organization for the special needs school in Macomb Township. Over the past two decades, they have raised money for playground equipment, a splash pad, and other features.

The Kiwanis Club of Macomb also presented $500 checks to Maggie’s Wigs 4 Kids, a grassroots non-profit that provides wigs and support services at no charge to children and young adults experiencing hair loss due to cancer, alopecia, trichotillomania, burns, and other disorders; and North Star Reach, Michigan’s only barrier-free, fully-accessible medical camp serving children with significant health challenges and their families at no charge.

Pictured in the photo above (left to right): Laura Austin, Kiwanis Club of Macomb; Jill Pinkston-Bonner, Glen H. Peters School parent and media relations coordinator for the Parents and Friends group; Karen Brouillard, parent,  president, and founder of the Parents and Friends group; Rebecca Wilson, parent and Kiwanis Club of Macomb member; Shelley Petty, Parents and Friends group vice-president and PTO chair; Jennifer Shelton, Glen H. Peters School principal; and Pam Loller, parent and Parents and Friends group member.

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Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
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