Menlo Park Patents Blog:

The patent process is filled with complexities that require startup founders to make the right decisions to navigate it successfully.  The more inventors know about the different types of patents and the steps needed to protect their innovation or invention, the better their decision making will be which will in turn prevent a loss of precious funds from mistakes.  Hiring an expert patent agent is key to protecting your secret sauce and ideas.  In this article we outline the main differences between provisional patent applications and nonprovisional patent applications which are two of the most popular patent applications among inventors and startup founders.

What is a Provisional Patent application?

A provisional patent application or in short PPA, or provisional is a type of patent application which is primarily used to secure a priority date for your invention which is good for 12 months from the date it is filed at the United States Patent and Trademark Office (USPTO).

Provisionals, are applications.  A common myth is that they are examined for patentability, but this is not true.  Provisionals are not examined and are also never published.  However, they do give you, the inventor, the flexibility to convert the provisional patent into a non-provisional patent within 12 months of the provisional application filing date and provides you a priority date for the non-provisional application equal to the provisional application filing date.

What is a Non-Provisional Patent application?

The non-provisional patent application, also known as the full patent application is examined and if warranted the USPTO will allow claims which will afford protection for 20 years from the filing date of the patent application.   Only after filing the non-provisional patent application and getting it allowed by the USPTO, will you have full patent rights and protection of a patent.

A nonprovisional unlike provisional patent applications are published 18 months after the filing date.  Non-provisionals can claim priority back to the provisional original filing date.  Claiming priority is a procedure to link a later-filed patent application to an earlier-filed patent application with the benefit of obtaining the earlier filing date as a priority date.

Every inventor needs to make the decision on whether or not they should start with a provisional patent application or a nonprovisional patent application.  In order to make the right decision, startup founders, innovators, and inventors must understand the patent process.

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A provisional patent application is not a patent.  It is a priority document that allows you to claim priority to the provisional and that secures the provisional patent application filing date as the priority date for your non-provisional patent application.  A non-provisional patent application when properly examined and allowed then transitions into a patent with allowed claims.  This is an important point because the only document that provides you the ability to actively defend your invention is the allowed patent claims.  Most practitioners when they refer to a non-provisional patent application  are referring to the non-provisional utility patent. A design patent is technically a non-provisional patent but you cannot file a provisional patent application for a design patent.  

A provisional patent application is a patent application that can be used by a patent applicant to secure a priority date while avoiding the costs associated with the filing and prosecution of anon-provisional patent application. More specifically, if a non-provisional application is filed within one year from the filing date of a provisional, the non-provisional application may claim the benefit of the filing date of the provisional. Because a provisional is not examined, an applicant can also avoid the costs typically associated with non-provisional patent prosecution such as patent agent fees for a year while determining whether their invention is commercially viable. Furthermore, because a provisional is not made public unless its application number is noted in a later-published application or patent, the failure by an applicant to file a non-provisional application based on their provisional will not lead to public disclosure of the invention.

Therefore, a significant benefit of a  provisional is that it provides a one-year extension as to the filing of a U.S. non-provisional patent application.  In doing so, a provisional provides an applicant with an additional year to experiment, perfect an invention, find financial backers, determine sales potential, find interested parties for licensing, etc. before filing the non-provisional application.  Because a provisional is not examined, an applicant can also avoid the costs associated with prosecuting a non-provisional application during this one-year period. 

However, there are issues to keep in mind when filing a provisional patent application.  There are no extensions on the one-year time limit for filing a non-provisional application claiming benefit of a provisional filing date.   By law, either you file a non-provisional application within a year or you lose the benefit of the filing date, the U.S. Patent and Trademark Office (USPTO ) can extend this by two months if the filing date was unintentionally delayed.  Importantly, most other countries usually base the time for filing a non-provisional application in their countries on the provisional filing date. This means that an international or foreign application may need to be filed at the same time that a non-provisional application claiming benefit of a provisional is filed in the U.S.  Further, if the provisional does not adequately describe all that is claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the PPA filing date. This could affect patentability if a reference disclosing the later-described invention is published after the filing date of the provisional but prior to the filing date of a non-provisional application.

The non-provisional patent application is the full patent application that is examined and if warranted the USPTO will allow claims  which will afford protection for 20 years from the filing date of the patent application.   Only after filing the non-provisional patent application and getting it allowed by the USPTO, will you have full patent rights and protection of a patent.

Therefore, most inventors look at two paths to secure patent protection:
1. The first is to file a provisional patent application. Then, within 12 months, convert it into a non-provisional patent application.

2. File the non-provisional patent application without filing a provisional patent application.

Summarizing the items, you need to be aware of with respect to a provisional patent application:

·       A provisional expires after one year.

·       You cannot extend a provisional.

·       You cannot renew a provisional.

·       A provisional will never become a patent.

·       You cannot file a provisional for a design patent.

·       The USPTO does not examine provisionals .

·       The USPTO does not conduct a prior art search on provisional s

·       The USPTO does review provisional s to make sure they meet minimum filing requirements.

·       Provisional s are not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application).

·       You can use the term "patent pending" for the duration of the one-year pendency of a provisional.

When considering  between filing a provisional utility patent application versus a non-provisional utility patent application there are four factors that should be considered.

1)      Cost
The non-provisional patent application costs significantly more than the provisional patent application. If you are not financially ready to file the non-provisional application at this time, you can file a provisional application. This gives you 12 months to raise funds to file the non-provisional application. However, money spent to file the provisional application is separate from the cost required to file a non-provisional application. Filing both a provisional then a non-provisional actually costs more money than just filing the non-provisional. However, if you cannot  afford a non-provisional patent application and believe that you need to get a priority date and protection for your invention then you should  file the provisional patent application and proceed to  raise funds to file the non-provisional patent application.

2)      Time
The non-provisional patent application is more intensive and therefore it requires more time to file.  If you want to protect your invention prior to a disclosure then a provisional patent application is faster and simpler to file and provides you protection so you can disclose your invention to raise money, attract customers or sell or license the invention.  

Once your provisional is filed you have 1 year to prepare the non-provisional patent application and it will be able to claim priority to the provisional.

3)     Probability that your invention changes as it is developed

Once a patent application is filed, it cannot be amended to include new material or as the USTO refers to it New matter. Therefore, if there are changes to your invention then those changes will have to be covered in a new patent application.   If you file a non-provisional application and make changes to your invention, the changes would need to be filed in a second non-provisional application to cover the changes. This is expensive and will require you to file two non-provisional patent applications. However,  if you file a provisional then make changes to your invention, you could include those changes when you file the non-provisional patent application. However, remember the changes will get the priority date of the non-provisional patent  which is it’s filing date.  Therefore, when developing a provisional itis wise to be as expansive in your disclosure as possible and include a number of alternatives to making the invention.

Abroad disclosure in a provisional patent application can be a two-edge sword if the provisional application is written too narrowly such that it does not take account of possible modifications to the invention, a corresponding non-provisional application will be weak and the resulting claims may be so narrow as to be unenforceable. However, if the provisional application is not focused enough, a corresponding non-provisional application may not be given the benefit of the filing date of the provisional application.

4)      Determining the commercial applicability of an invention

Many inventors use a provisional as a low-cost filing tool to secure a priority date which gives them 12 months to test the market. During the 12 months, the inventor can engage in numerous activities such as  raising funds, selling the product, put it on Kickstarter or Indiegogo solicit investors and customers. During the 12-month period you determine that the product has commercial viability then you can file the non-provisional patent application. However, if  during that 12 months period you discover that the product does not have the commercial viability that you originally thought then you can abandon the invention and you have limited your lost investment to the fees to file the provisional application. However certain inventors are committed to the invention even before they file their patent application and do not  file a provisional application. Many companies and inventors decide not to file a provisional patent application because they are confident, they will want to pursue the full non-provisional patent. In this situation, they have no need to buy themselves 12 months of time provided by a provisional the inventor or company goes directly to the non-provisional application  

Summarizing the items, you need to be aware of with respect to a non-provisional patent application:

·       Non-provisional patent applications are typically longer, more formal and contain particular sections that must meet the particular standards of the patent office. They are also more difficult to write and file.

·       A non-provisional patent application is examined by a patent examiner and can issue into enforceable claims for infringement.

·       Non-provisional patents provide 20 years of protection from the date of initial application.

·       It typically takes the USPTO between one and three years to rule on a non-provisional patent application, during which time the designation “patent pending” can be used in relation to the invention.

If you are looking for high quality patent services from experienced patent practitioners then Menlo Park Patents should be your first choice.  Menlo Park Patents has transparent fixed fee pricing. We do not charge for emails, telephone calls, letters and the other things which typical law firms chare their clients for.

For more information and to schedule a free 15 minute consultation visit us atwww.menloparkpatents.com.

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