The Difference Between Provisional and Non Provisional Patent Applications

A patent is a legal document that grants the creator of an invention exclusive rights to use or sell it for a specified period.

When an inventor has a breakthrough idea, they may want to consider filing for patent protection. But they may be uncertain of the process for obtaining such a permit.

Benefits

The journey from an innovative idea to a working prototype and eventually to patent can be quite lengthy. But if you need protection for your product right away, provisional applications may be the way to go. They allow time for refinement of your invention, testing its commercial viability, and validating its market potential without incurring costs associated with filing for non-provisional patent applications and seeing them through examination.

Another advantage of provisional applications is that they grant you the earliest priority date, up to one year from filing. This can give you a competitive edge against potential rivals filing in similar fields or markets where your invention already has some traction.

Your invention is continuously developing, so as it progresses, new designs and improvements can be added to the initial provisional patent application. Doing this will give the benefit of having an earlier filing date when filing for non-provisional patent protection.

Consider filing multiple provisional applications for the same invention, so that any modifications or additions you make while developing it can be included and priority can be claimed for each detail contained in a later non-provisional application (with the oldest providing the priority date).

Finally, taking a two-step provisional route can save you money compared to taking just one non-provisional step. For example, if you were to apply for both in one year, the cost of a single non-provisional would be $1905 (based on USPTO filing fees), while taking the two-step provisional route would only cost $4254.

Although this example is conservative, it demonstrates how savings can accumulate if you must file multiple applications throughout product development. Furthermore, patent protection requires investment and preparation and examination of a patent application can be costly; costs range from thousands of dollars up to tens of millions. Before making any decisions regarding which path best for your invention, consult a patent attorney first for advice.

Drawbacks

Provisional patents have been around since 1995, created to save inventors money by offering a low-cost filing option in the United States. As the USPTO has seen an upward trend in provisional applications filed over the last decade, this indicates an increasing interest in using these patents as part of an overall IP strategy.

Provisional patents provide for the benefits of an invention when filed within one year after filing and described in sufficient detail to enable anyone of ordinary skill in the art to practice or make it without needing excessive experimentation. It does not mean that applicants must include every aspect of their invention in a description; only those aspects which are widely known or understood by those with ordinary knowledge should be included.

It is essential to remember that a written description (also referred to as a specification) is essential for establishing the priority date of an invention. Without adequate disclosure in an application, inventors cannot claim priority in the first-to-file environment.

Additionally, an incomplete written description can prevent inventors from claiming priority in a first-to-file environment–even if their invention was first conceived and developed prior to filing. A common mistake when filing a provisional application is failing to fully describe the invention sufficiently in sufficient detail.

This can be a costly issue, as the inventor must pay additional fees in order to convert their provisional application into a non-provisional patent application and claim priority on their invention. For many inventors, this financial burden may not be worth it.

A provisional application’s primary drawback is that it delays examination by the patent office for up to one year. While this can be beneficial if an inventor desires to delay examination and any potential negative office actions as long as possible, this approach may not always be feasible.

Costs

Provisional patent applications are an economical and efficient way to file for a patent for your invention. This initial step in the patent process is ideal for small inventors or startups who cannot justify paying full cost of filing non-provisional patent applications.

Provisional patent fees can range depending on the invention and how detailed your patent application is. Typically, fees range between $70-280; however, if your invention requires extensive preparation or is particularly complex, fees may be higher.

Another cost associated with a provisional patent application is the time needed for preparation. This cost cannot be fixed, but rather dependent upon how much effort your attorney needs to put into creating your application.

Generally, investing time into a quality patent application is worth the effort because it can yield a significant return on your investment. The value of your patent depends on market demand for your invention and how well it’s described in the application.

If you don’t fully describe your invention in a patent specification, you’re effectively turning over your intellectual property to the competition. To avoid this issue, hire an expert to craft your patent application.

It’s essential that your patent application contains a comprehensive description of the invention and is accompanied by accurate drawings. Without this, your application could be rejected by the patent office.

Finally, it’s essential to ensure your patent claims aren’t too specific or expansive. Doing so could pose major problems in the future if you want to extend your patent coverage.

It’s wise to assess if the invention will be worthwhile in the long run. If not, a non-provisional patent application might be more suitable, especially if it takes some time for your product to gain acceptance and reach its peak demand.

Timeline

The timeframes for both provisional and non-provisional patent applications can differ due to the examination process and other factors.

One possible explanation for this variation is that each application may not be reviewed by all USPTO examiners in the queue. This can cause a delay in reviewing an applicant’s application and even result in an extended wait for patent issuance.

Another explanation for the variance in patent office processing times is that the examination process can take years to complete, depending on various factors like the complexity of the invention and how many submissions there are to the Patent Office.

Another factor that may influence the timeline for provisional and non-provisional patent applications is inventorship and ownership of an invention. Who created something is often indicative of who owns it, as well as whether the technology has potential commercial value or not.

That is why it’s essential to include inventors in a provisional application, so they can maintain their rights after the patent is granted. Doing this also helps guarantee the priority date of your invention.

It’s essential that the provisional application sufficiently describes the invention. Doing so will guarantee that any subsequent patent claims are based on what was stated in the provisional application, rather than an invalid combination of prior-art elements or steps.

If a provisional application is inadequately detailed, its validity may be challenged in court. This is especially true if the provisional was filed after public disclosure of the invention but before actual patent grant.

Non-provisional applications must adhere to the same rule as provisional applications, with one exception: they must be filed within one year after filing a provisional application in order to take advantage of its earlier filing date.

Therefore, it’s essential to carefully weigh the timing of both provisional and non-provisional patent applications before making a final decision. Your ultimate decision will depend on your individual situation and goals.

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