An often asked question by inventors is “should I get a provisional or directly file a non-provisional?”. Once you have an idea worth protecting, one of the first strategy questions is whether you should file a provisional application or a non-provisional (or utility) patent application. To decide which one would work best for your particular invention, let’s look at the difference between a provisional and a non-provisional patent application. While a provisional application has many benefits, it is not always necessarily the best or cheapest option.
What is a Provisional Application?
First of all, there is no such thing as a provisional patent. A provisional application is an application that gives you a priority filing date. If done properly, a provisional application gives you proof that you came up with an idea or process on a certain date, and before others who might apply for a patent or provisional after you. Unlike a regular utility patent application, a provisional application on its own will never mature into a patent. In fact, after you file for a provisional application, you have 12 months from the date of filing to file for a regular utility patent and claim priority to the provisional’s date.
The U.S. Patent and Trademark Office (USPTO) does not look at provisional applications in substance. The provisional does not become a patent on its own and does not start a 20-year patent term running. The only times the USPTO will look into a provisional for substance is if you file for a non-provisional and claim priority to your provisional application, and if during the examination prior art is found and you can show that you came up with the invention first by going back to your provisional date.
It’s worth mentioning that you cannot file a provisional application for a design patent. You can only do that for a utility patent application. To learn the difference between a utility and design patent, check out our earlier post. Also, if your invention is best protected by a design patent rather than a utility, then you’re better off filing a design patent instead. If you are trying to protect both the look and appearance of an invention and the way it works but you’re not sure you’re ready to file a utility application, then maybe look into filing both a design and provisional utility application.
Benefits of a provisional application
A provisional application has a few benefits which are worth looking into. It can help you make the most of a limited budget, especially at the beginning of the invention stages. It’s an excellent tool to test the market while knowing that your invention is protected during the 12- month life of the provisional application. Moreover, as soon as you file a provisional application, you can start using the terms “Patent Pending” to stop others from pursuing the same invention. Even though a provisional application does not require many of the formalities of a non-provisional utility application, it is not an excuse to cut corners and risk not protecting the crux of your invention.
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You get a priority date with the USPTO
In 2013, the U.S. moved from a first-to-invent to a first-to-file system. Essentially, it is now a race to the Patent Office after you’ve come up with a new protectable idea. I sometimes get clients who are in the “idea” phase and who are trying to protect the idea. Usually, at that stage, it’s too early to get meaningful protection or even a priority date on your invention. It is always best to have enough details and be able to describe how to make your invention in enough words and drawings before filing a provisional. And while you don’t need a completely working prototype to file a provisional, it’s good to have enough details on your invention to be able to explain it to someone skilled in that field and include all those details in your provisional application.
2. You want to protect your idea but still need more time to perfect it
Once you file your provisional application, the clock starts ticking and you have 12 months from that date to file a non-provisional utility application. One of the main concerns I hear from clients and inventors is “what if I continue refining and changing my invention during that year?”. If your invention continues developing majorly and becomes different than what you first filed, then you can file other provisional applications to cover those major changes. You can then have all those provisional applications details in one non-provisional application, but you would have to calculate the 12 months from the oldest provisional you would like to include.
3. If you don’t have time
Another reason a provisional application might be the right call for you is if you are about to share your invention with the public (maybe at a conference or seminar) or need to share it with possible investors and don’t have time to file an appropriate utility patent application. This goes for publications as well as sales. So if your invention is about to be published somewhere (that’s including the internet) or if you are going to start selling your invention and you don’t have enough time to get a formal application, then you should definitely file a provisional application to protect your idea.
4. If you need time to do some market research
I personally think that a provisional application is a very powerful tool if you want to test the marketability of your invention. Getting a patent is great, but it’s a business decision at the end of the day and if you can’t sell your invention or monetize it, maybe it’s not worth investing the time and money to file a non-provisional patent application. The provisional application gets you a solid filing date at a cost lower than the non-provisional while you test the market and see if you want to proceed with the invention. During that one year, you might come up with improvements which can be added to your formal patent application. But you should know that any important information which is not included in the provisional application will not be given the same priority date.
5. Time to get a licensing deal or raise money
Filing a formal utility application is costly and takes a long time. Filing a provision application can give you time to raise the money needed for a non-provisional. In addition, if your ultimate goal is to license your invention rather than making and selling it yourself, a provisional application might be all you need to get that licensing deal you’ve been wanting. If this is your goal, make sure you have a solid provisional application drafted with the help of a registered patent attorney. A non-disclosure agreement coupled with a provisional application might be all you need to get your licensing deal. However, your disclosure must be “enabling” or one with enough information that someone skilled in the field can read it and make one.
Drawbacks of a provisional application, and why you might not want to file a provisional
1. Delay in your patent application
The USPTO does not examine provisional applications in substance. So when you do “convert” your provisional to a formal patent application, the patent examination process starts at the time you file the non-provisional. So if your goal is to get a patent as soon as possible, then filing a provisional might not be for you.
2. It’s an additional cost
While some attorneys will credit your non-provisional with the fee you paid for the provisional, (and the rationale for that being that a lot of the work used for the provisional will be used in the non-provisional if done correctly) that is usually not the norm. Most attorneys will charge for a provisional and a separate non-provisional drafting fee. In addition, if a lot has changed from your provisional application to your non-provisional, then the work might need to be redone as well.
The other consideration is if you are ready to proceed with a formal application, then why spend the extra time and money on a provisional application?
3. If you’re in the very early stages of the invention
If your provisional application is very incomplete, you can’t really rely on that for a priority date. Sometimes, if you’re in the early stages of the invention, it might be best to have most details of the invention hammered out and just file a non-provisional patent application directly.
4. Foreign Filings
For a utility application, you have one year from the time of filing in the US to file in other countries and claim priority to your US application. If you are going to use the provisional’s date as a filing date, that means you would have to file your foreign patents or PCT at the same time as the US one. The other option would be to use the US non-provisional filing date as the priority date for your foreign applications.
So what do you need to include in a provisional application?
As far as how the provisional application disclosure is written, there are no formal requirements unlike a non-provisional patent application.
You need:
- A specification (in no particular format),
- Drawings,
- A certification of status (to determine which fees you need to pay – this is not needed for a large entity),
- No claims are required, although some foreign countries state that an application with no claims is not complete, so it’s always best to include a few general claims.
Just because there are no formal requirements does not mean you should just jot down notes and whatever drawings you can gather and file a provisional. Your provision needs to be “enabling”. This means it needs to include enough details so that someone skilled in the field of its use could make the invention just by reading your application. I highly recommend working with a registered patent attorney to do this properly and have some sort of protection in place.
A provisional application on its own will never become a patent, and here is how you can convert your provisional into a patent:
Within the 12 months of filing a provisional, you have to file a non-provisional application claiming priority to the provisional to “convert” the provisional into a non-provisional utility patent. The filing date of the provisional application will be transferred to the new application, giving an earlier filing date for priority purposes but not reducing the 20-year term of the utility patent.
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