Provisional Patents & Utility Patents – Advantages and Disadvantages
Provisional Patents: Advantages and Disadvantages
Provisional patent applications generally work well for inventors who currently don’t have the money for a utility patent application, and would like to get “patent pending” before they try to raise money from investors, venture capitalists, hedge funds, etc.
For an inventor wants to become “patent pending” ASAP and do not want to wait for the 2-4 weeks it usually takes to have a quality utility patent application prepared.
Or for an inventor who would like to do a bit more R&D, prototyping, market testing, etc. before they commit to a final version of the invention for the utility patent application.
The main disadvantages of relying on provisional applications would include:
A years time goes by fairly quickly and if the inventor is not motivated, organized and self-directed, they would probably have been better off filing the utility patent application in the first place. (as now they will have to wait until the utility patent is examined, and the inventor does not “move to the head of the examination line” just because the utility relied on a provisional filing date).
The provisional has to provide “support” for what is being claimed in the utility patent, so if the inventor changes the invention so much that it is not reasonably related to the contents of the provisional application from which it claims a filing date, that earlier filing date can be denied by USPTO.
If the inventor, during the year of patent pending status, decides to file a utility patent application based on the provisional, he/she will pay additionally for the utility patent application (we usually take ½ of the cost of the provisional off the cost of the utility patent application).
Utility Patents – Advantages and Disadvantages
With the utility patent application, the main advantage is that you get in line to have your patent examined by the USPTO, and you don’t delay the examination by first filing a provisional, waiting up to a year, and then filing the utility. Other inventors may prefer to drag out their patent pending status as long as possible before examination, and so they would rather tack a utility onto the end of a provisional.
Our inventors are usually taken more seriously by venture capitalists, investors, prospective licensees, etc., with a pending utility patent rather than a pending provisional patent.
Many inventors are extremely eager to see their patent applications examined. In other cases, it is very important for the commercial success of a company to know as soon as possible whether or not their patent will be approved. Inventors in either of these positions should consider an Accelerated Examination Application. Accelerated Examination is a program that tries to give the inventor either a patent or a final rejection within a year of the filing date. The main disadvantage? Cost. You need to begin an Accelerated Examination application by having an extensive prior art search performed, which usually runs $3,000 to $8,000. Drafting the application is also considerably more expensive (usually double the normal rate) as we have to prepare a support documents that can go well over 100 pages in length.
Other intellectual property to consider. No matter what an inventor decides regarding the filing of patents, he/she should also consider the role that Trademark and Copyright protection may offer. For more on Trademarks and Copyrights, you can look at our website.