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Provisional and Non Provisional Patent Applications

By Babak Akhlaghi on July 30, 2024. In the world of innovation and invention, protecting your ideas is crucial. One of the most effective ways to do this is through patents. However, understanding the types of patents and the patent process can be confusing. This article will break down the differences between provisional and non-provisional patent applications, and help you understand which might be best for your needs.

What is a Patent?

A patent is a legal document granted by the government that gives an inventor exclusive rights to their invention for a certain period. This means that the inventor has the right to exclude others from making, using, or selling the invention without permission.

The Patent Process

 

The patent process can be complex and time-consuming, but it is essential for protecting your invention. Here are the basic steps:

  1. Idea Conception: This is where your invention begins. Make sure to document everything.
  2. Research: Conduct a thorough search to confirm that your invention is new and not obvious compared to existing technology. This process is often called a patentability search.
  3. Choose the Type of Patent: Decide whether you need a provisional or non-provisional patent.
  4. Prepare and File Your Application: This involves gathering all necessary documents and submitting them to the United States Patent and Trademark Office (USPTO).
  5. Examination: If you filed a non-provisional patent application, the USPTO will review it and may request additional information or modifications. In contrast, if you filed a provisional patent application, the USPTO will not review it until you convert it into a non-provisional application. Essentially, the provisional application serves as a placeholder for the later-filed non-provisional application, as detailed below.
  6. Approval: If your non-provisional application meets all requirements, your patent will be granted.

Provisional Patent vs Non Provisional Patent Applications

Now, let’s dive into the main topic: the differences between provisional vs utility patent applications.

What is a Provisional Patent Application?

A provisional patent application is a temporary application filed with the USPTO. It allows you to secure a filing date for your invention without starting the formal patent examination process. Here are some key points:

  1. No Examination: Provisional patent applications are not examined by the USPTO.
  2. Lower Cost: Filing a provisional patent application is generally less expensive than filing a non-provisional patent application.
  3. One-Year Deadline: You have 12 months from the filing date of a provisional patent application to file a non-provisional patent application claiming the benefit of the provisional application.
  4. Patent Pending: Once filed, you can use the term “patent pending” in connection with your invention.

What is a Non-Provisional Patent Application?

A non-provisional patent application is the formal application required to obtain a patent. It begins the examination process by the USPTO. Here are some key points:

  1. Formal Examination: Non-provisional patent applications are examined by the USPTO.
  2. Higher Cost: Filing a non-provisional patent application is generally more expensive than filing a provisional patent application.
  3. Detailed Requirements: Non-provisional applications must include detailed descriptions, claims, and often drawings of the invention.
  4. Patent Grant: If approved, a non-provisional application results in a granted patent.

Comparing Provisional vs Non Provisional Patent Applications

Understanding the differences between provisional and non-provisional patents can help you decide which is right for you. Here are some key comparisons:

Cost

  • Provisional Patent : Generally less expensive to file.
  • Non-Provisional Patent: More expensive due to detailed requirements and examination fees.

Complexity

  • Provisional Patent: Simpler application process with fewer requirements.
  • Non-Provisional Patent: Requires a detailed application with descriptions, claims, and drawings.

Duration and Protection

  • Provisional Patent: Provides temporary protection for 12 months.
  • Non-Provisional Patent: Provides long-term protection if granted, typically for 20 years from the filing date.

Examination

  • Provisional Patent: Not examined by the USPTO.
  • Non-Provisional Patent: Undergoes formal examination by the USPTO.

Amending Provisional vs. Non-Provisional Patent Applications

  • Provisional Patent: Once the application is filed, you cannot make changes. You would need to file an entirely new provisional application.
  • Non-Provisional Patent: You can make changes to the application after it is filed, provided that the changes do not introduce new subject matter.

When to Use a Provisional Patent Application

A provisional patent application can be a strategic tool in several situations:

  1. Early Stage of Development: If your invention is still in development but you want to secure a filing date.
  2. Cost Constraints: If you need to delay the higher costs associated with a non-provisional application.
  3. Market Testing: If you want to gauge market interest before committing to a non-provisional application.
  4. Disclosure: If there is an imminent disclosure, such as a meeting with a potential investor or a publication, filing a quick provisional application can be helpful to avoid losing patent rights due to the disclosure.

When to Use a Non-Provisional Patent Application

A non-provisional patent application is necessary when:

  1. Ready for Examination: Your invention is fully developed and ready for the formal examination process.
  2. Long-Term Protection: You need the examination to start quickly and obtain full protection of a granted patent.
  3. Detailed Disclosure: You can provide a complete and detailed description of your invention.

Steps to File a Provisional Patent Application

  1. Document Your Invention: Include detailed descriptions, drawings, and any other relevant information. I often recommend that inventors include at least one claim in the provisional application to ensure proper support for the later-filed utility application. Consult with your patent attorney regarding drafting such a claim, as it requires the craftsmanship of a professional.
  2. Complete the Provisional Application Form: Available on the USPTO website. For more information, see here.
  3. Pay the Filing Fee: The fee varies depending on the size of the entity (individual, small business, or large corporation).
  4. Submit Your Application: This can be done online through the USPTO’s Electronic Filing System (EFS-Web).

Steps to File a Non-Provisional Patent Application

  1. Prepare Detailed Documentation: Include descriptions, claims, drawings, and any other required information. For more information, see here.
  2. Complete the Non-Provisional Application Forms:
  3. Application Transmittal Form
  4. Application Data Sheet
  5. Signed oath or declaration
  6. Pay the Filing Fee: The fee varies depending on the size of the entity and the type of patent.
  7. Submit Your Application: This can be done online through the USPTO’s Electronic Filing System (EFS-Web).

Conclusion

Innovation and patents

by Diego PH (https://unsplash.com/@jdiegoph)

Understanding the difference between non provisional vs provisional patent applications is essential for protecting your invention. While provisional patent applications offer a cost-effective and simpler way to secure a filing date, non-provisional patent applications provide the formal protection needed for long-term security.

By carefully considering your invention’s stage of development, your budget, and your long-term goals, you can make an informed decision about which type of patent application is right for you. Regardless of your choice, taking the necessary steps to protect your intellectual property is a critical part of the innovation process.

Remember, consulting with a patent attorney can provide valuable guidance and ensure that you navigate the patent process effectively. Protect your ideas and take the first step towards securing your invention today.

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About the Author

Babak Akhlaghi is an adjunct professor at University of Maryland, where he teaches legal aspects of entrepreneurship. Babak is also a registered patent attorney and the Managing Director at NovoTech Patent Firm, where he assists inventors in protecting and monetizing their inventions. He is also a co-author of the "Patent Applications Handbook," which has been updated and published annually by West Publications (Clark Boardman Division) since 1992. One of his distinguished accomplishments involves guiding a startup through the patent application process, which led to substantial licensing opportunities that significantly enhanced the company's strategic value.

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