What are the differences between provisional and nonprovisional patent applications?
A nonprovisional patent application is normally considered the regular utility patent application. It is what you file to get a granted utility patent. The USPTO will examine your utility nonprovisional patent application and send you their decision on your claims. A provisional patent application, on the other hand, does not get reviewed. Let’s explore how provisional and nonprovisional applications differ in key aspects of patent protection.
Need help filing a utility patent application? Call US patent and trademakr attorney Vic Lin at 949-223-9623 or email firstname.lastname@example.org to obtain a flat rate quote for filing your provisional or nonprovisional patent application.
Provisional vs. Nonprovisional Patent: Which is the utility patent application?
Both provisionals and nonprovisionals are utility patent applications. Don’t think of them as two separate filings with separate processes. One is simply a placeholder for the other. A provisional patent application (PPA) gives you a patent filing date and a 1-year deadline to upgrade to a nonprovisional patent application.
When can you say patent-pending?
You can say patent-pending as soon as either a provisional or nonprovisional application is filed. See this post on what rights you get from being patent-pending.
Does a provisional patent application get granted?
No, there is no such thing as a granted provisional patent or an approved provisional patent. Again, the PPA merely serves as a placeholder for filing a subsequent nonprovisional application.
Only a nonprovisional patent application can be allowed. After allowance and payment of the issue fee, a nonprovisional application will become a granted utility patent.
A provisional application becomes worthless if you fail to follow up with a nonprovisional within one year of the provisional filing date. A PPA will also have little value if it contains scant details or a bare-bones disclosure. To provide value, a provisional must contain sufficient details to support the subsequent nonprovisional application.
Why file a provisional patent application?
If done correctly, however, a provisional patent application can be a useful and cost-effective tool in obtaining “patent pending” status for a functional invention. Keep in mind that we’re talking about utility patents, not design patents.
So why file a provisional patent application? The decision often boils down to cost and timing. Since provisionals need not adhere to a strict format (and, thus, do not require the expensive fees of a patent attorney or agent), they enable applicants to obtain patent pending status more quickly with less cost. Provisional applications essentially expire in one year. Therefore, a nonprovisional application must be filed by the 1-year anniversary of the provisional filing date.
A provisional application may be advantageous when certain details of the invention need to be further developed or refined. By filing a provisional sooner, an earlier filing date is secured for whatever invention details currently exist. Any new subject matter can be added to a non-provisional application that will claim priority back to the provisional application.
What are risks of filing a provisional patent application?
There are several risks if inventors choose to draft the provisional application themselves. One significant risk relates to the level of detail in the disclosure filed, or more precisely, the lack thereof. If you file a nonprovisional within 1 year of the filing date of the provisional, the disclosure in your provisional must adequately support the subject matter claimed in the nonprovisional application. The disclosure includes the written description and any drawings.
You will be able to benefit from the earlier provisional priority date if the claims in subsequent nonprovisional are sufficiently disclosed in the earlier provisional filing. If you add new subject matter that is unsupported by the provisional, then that new matter does not get the earlier provisional filing date, but rather the later nonprovisional filing date.
The PTO does a good job of providing some cautions concerning provisionals. If you’re serious about filing a provisional, make sure to elaborate and expand upon your descriptions and drawings, and include as many alternative approaches as possible to accomplishing the same results.
What are the differences in costs between a provisional and nonprovisional application?
A provisional patent application starts at $3,900 at our firm. Our flat rate for the regular utility patent application, known as the nonprovisional application, starts at $6,600, not including USPTO and illustrator fees. Contact us to request a flat rate estimate for your provisional or nonprovisional application.
Patent examination timelines
Since provisional applications are not reviewed by the USPTO, you will not have your place in line until you file the nonprovisional application. If getting a patent sooner is important to you, then you will want to file your nonprovisional application earlier. Keep in mind that it can take about 16 months to 2 years to receive the patent examiner’s first review of your nonprovisional application. So delaying the initial filing of nonprovisional will also defer examination.
Why not skip the provisional and go straight to filing a nonprovisional patent application?
This is certainly a valid and commonly used strategy. The sooner you file your nonprovisional application, the earlier your utility patent application will be placed in the queue for examination.
Strict format vs. Loose format
Nonprovisional patent applications must follow a certain format and include, among other things, at least one claim. These are the applications that PTO examiners review and are typically written by patent attorneys. Provisional patent applications, on the other hand, need not follow a strict format. Since their primary purpose is to allow the applicant to get a filing date and patent pending status with respect to what is disclosed, provisional patent applications offer a great deal of flexibility to applicants in disclosing inventions. See this brief explanation of provisional by the PTO.
Should you file a provisional or nonprovisional patent application?
Valid arguments can be made for both options. You will want to factor your stage in the product development to determine which utility patent filing makes the most sense for you at this point in time.
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