Provisional Patent Application vs. Nonprovisional Patent Application

Thoughts to Paper - September 20, 2023

Provisional or nonprovisional? That is the question. But it’s not an “A or B” question. It’s actually a question of “A then B” or “just B”. When you file a provisional patent application, you eventually need to file a nonprovisional patent application within 12 months. The provisional patent application just buys you 12 months of time to later file the nonprovisional patent application. So the question is, do you need the 12 months of time that a provisional patent application buys you? Or, are you ready to go nonprovisional right now?

Provisional Patent Application is a Type of Utility Patent Application

First, understand that a provisional patent application is a type of utility patent application. So, when you are deciding between provisional versus nonprovisional, you are actually deciding between (provisional utility patent application) or (nonprovisional utility patent application).

You need to first decide whether you need a utility patent application or a design patent application, or both. Once you’ve determined you need a utility patent application, you then decide whether you should file a provisional utility patent application or a nonprovisional utility patent application.

Provisional Patent Application: Temporary for 12 Months

Temporary patent application for 12 months: a provisional patent application lasts for 12 months then it’s gone. It’s a way for you to get your foot in the door with the Patent Office and temporarily save a spot with them. It’s like saying, “Hey Patent Office, I’ve invented an invention, and this is what it is. I want to eventually ask you to give me a 20 year patent but I’m not quite ready yet. Please save my place in line for 12 months and I’ll get back to you”
Not a patent yet: a provisional patent application is not a patent yet so you cannot use it to stop others from making your invention. To stop others from making your invention, you need to file the nonprovisional patent application and get that approved. The provisional patent application is a placeholder for you to later file the nonprovisional patent application so you are first in line to get a patent with the Patent Office.
Lower cost: a provisional patent application has fewer requirements than a nonprovisional patent application, so the attorney fees and Patent Office fees are lower. This makes it more assessable to startups which may not yet have the money to file a nonprovisional patent application. A provisional patent application can temporarily protect the invention for 12 months while the startup raises funds or crowdfunds.
Convert to a nonprovisional within 12 months: Before your provisional patent application expires, it’s important to file a nonprovisional patent application which is linked to the provisional patent application. This is known as filing a nonprovisional patent application to “claim priority” to the provisional patent application. You “claim” the date saved by the provisional patent application so the nonprovisional patent application essentially backdates to the date you filed the provisional patent application. The Patent Office gives patents to whoever comes first, that’s why having an earlier date is important. You saved your date with the provisional patent application for 12 months. Now, to keep that earlier date, you must file a nonprovisional patent application before the provisional patent application expires. If you don’t, the date saved by the provisional patent application date will be lost and you lose your place in line. If you lose your place in line, someone else who filed a patent application after you will become ahead of you and they will be eligible to get a patent before you.

Nonprovisional Patent Application: Asking for a 20 Year Patent

Ask the US Patent Office for 20 years exclusive right to the invention: The nonprovisional patent application is when you actually ask the Patent Office to look at your invention and decide whether you deserve the right to stop anyone from making your invention for 20 years. With a provisional patent application, you just saved the date. Now, with a nonprovisional patent application, you’re ready to have the Patent Office evaluate whether you deserve a patent.
Patent rights for 20 years: If you convince the Patent Office that your invention is novel, nonobvious, and useful, the Patent Office will grant you the right to stop others from making your invention for 20 years.
Higher cost: When compared to the provisional patent application, the nonprovisional patent application will cost you more in legal fees. This is because a nonprovisional patent application has more requirements set by the Patent Office, such as patent claims and labeled patent drawings.

Deciding Provisional Patent Application versus Nonprovisional Patent Application

Money: If you have the money to file a nonprovisional patent application, you could file it and skip the provisional patent application. The provisional patent application buys you time to raise money to file the more expensive nonprovisional patent application. If you don’t need the time to raise money, you can skip the provisional patent application and go straight to the nonprovisional patent application.
Time: If you need to quickly file a patent application because you need to show your invention at a trade show next week, provisional patent application will be the best choice. It takes more time to prepare a nonprovisional patent application so if you need to quickly protect your invention, file a provisional patent application first before showing your invention to the public, then follow up with a nonprovisional patent application later.
Changes to the Invention: If you plan to make changes to your invention, you may want to file a provisional patent application first. Once a patent application is filed, you cannot make changes. So, if you file a provisional patent application first, you can make changes to your invention and incorporate those changes into the nonprovisional patent application. You can add new information to your nonprovisional patent application that was not in your provisional patent application.
Confidence in Invention: If you aren’t sure about whether your invention will be successful, you could start with a provisional patent application first while you test the market. File a provisional patent application and start selling your invention, seek investors, or crowdfund. If your invention does well, you have the confidence to go all the way, apply for a nonprovisional patent application before the provisional patent application expires. If your invention doesn’t do well in the market and doesn’t get the traction you were hoping for, your loss is just the lower cost of the provisional patent application. On the other hand, if you’ve spent the time and money to develop an invention and you know you’re going to go all the way, you may not need the time to test the market. Go ahead and skip the provisional patent application and go for the gold by applying for the nonprovisional patent.

Conclusion

A provisional patent application buys you 12 months of time to decide whether to file the nonprovisional patent application. If you need the time, buy it, but you’ll eventually need to file the nonprovisional patent application down the road. If you don’t need the time, skip the provisional patent application, and go for the goal, the nonprovisional patent application. The nonprovisional patent is your endgame, only with a nonprovisional patent approved can you stop others from making your invention.