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Provisional patent process

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.

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