Provisional or Non-Provisional: which patent application to choose?

There are two routes to getting a patent: provisional and non-provisional patent application. To make it clearer, you can fill in these applications to legally protect your invention and receive a patent.
A provisional patent application is less formal whereas non-provisional one is an official document, which can turn into an issued patent. But is it the only difference? Let’s look into details.

Provisional patent application

Provisional patent application

A provisional patent application is relatively inexpensive mechanism to officialise the invention. It will cost you about $130 to fill it at the USPTO, when claiming a small entity status (a person, or a small business concern with the number of employees not exceeding 500 people, or a non-profit organization). Similar to non-provisional patent application, this utility patent includes the precise invention description, principles of its production and operation.

This application type does not require any claims, doesn’t issue as a granted patent and will expire in 12 months from the date when you file it. So, you get one year to analyze your idea, business prospective and decide whether you need patent protection or not. Some inventors choose to file a provisional application in order to buy time to find the investors, to secure financing and to allocate the funding for IP protection. Some need time to determine whether the manufacturing of a product is feasible or not. If you decide to proceed further, apply for a non-provisional patent application, you can claim benefit to a filing date of the provisional patent application. If you decide not to move forward, it will simply expire and you will never hear about it again.

On more advantage of the provisional patent application is that it is less expensive, since you do not need to follow precise formatting and provide fancy invention drawings. You can simply add copies of your notebook and a PowerPoint presentation, saving time on filling the non-provisional patent application. Besides, it won’t be published and will keep your product in secret, unless you decide that it is the high time to go live and present your invention to a vast public.

It is important to remember, however, that in order to get the benefit of the filing date of the provisional application, a later filed non-provisional application must contain the same subject matter as the provisional application. For example, assume an inventor files a provisional application, disclosing a device having elements A and B. Then within a 12-month period, the inventor files a non-provisional application, claiming the benefit of the filing date of the provisional application and disclosing a device having elements A, B, and C. The element C will be considered as a new matter and will not get the benefit of provisional filing. The inventor may end up in this case with some claims (directed to device AB) dating back to the filing date of the provisional application and some claims (directed to device ABC) having a non-provisional filing date.

Non-provisional patent application

Non-provisional patent application

To get a non-provisional (utility) patent application you will have to pay $730 at the US Patent and Trademark Office, when claiming a small entity status. The biggest advantage of this application type is that it can eventually become a patent, but requires at least one claim fully supported by the provisional application, in order to legally define the invention you want to protect. It should also be presented in the proper USPTO format, contain a title, background, summary and written description of your invention, along with formal drawings. In addition, you will need to sing an Oath or a Declaration to claim that you are the first and true inventor. A non-provisional patent application should be filed within the 12 months time-frame (a period during which the provisional patent application is still valid) and it will be published in 18 months from the filing date.

Finally, when all formalities are settled down, there is nothing else for you to do as to wait until the application will be reviewed by a Patent Examiner for the compliance with the stated above requirements.

Which route to choose?

Which route to choose?

You are not 100% sure which application type you should select? Your decision should be based on the business strategy you follow rather than on your need legally protect the invention. Before taking any actions, carefully consider all pros and cons of either application type or even better. Instead of spending a few months on researching all terms and conditions, preparing documents and writing the application, consult an experience patent attorney, who will be able to provide you a qualified support and help get a patent.