Provisional Patent or Utility Patent Application: What to file?
How to decide between a Provisional Patent or Utility Patent Application
If you choose either of these routes, the first thing we need is a “snapshot” of the invention as of the date we begin the patent application. Many inventors want to change the invention during the time we are writing the patent application. We can accommodate changes, but please realize that we will charge hourly for any changes to the invention outside of the “snapshot” you give us to begin drafting the application. Once we have a concrete idea of the invention that you are trying to patent, we can begin.
As with a design patent application, you will need to have patent illustrations prepared. The utility patent application requires different types of illustrations from those required for design patents. For utility patent applications, the illustrations have to show how the invention works, so often we need close-up views of certain parts, cut-away views that show the internal workings of an invention, or other views not needed for design patents. The inventor generally meets in person with the patent illustrator or sends a prototype, drawings, or photographs to try to convey what the invention is all about.
It usually takes several weeks to prepare a utility patent application. We like to prepare an initial draft, then get the inventor’s comments and revise the application until everyone is satisfied with the application. We require ½ of the expected total preparation and filing costs to be paid up front, and the other ½ to be paid before filing.
Early Publication, Regular Publication or Non-Publication. Under “Regular Publication”, an application will usually be published 18 months after filing. Thus, anyone in the world with a computer and internet connection can see your application and follow its examination progress. Under “Early Publication”, you pay an extra $300 to the USPTO and the USPTO will publish your application 3 to 5 months after filing. Under “Non-Publication”, the USPTO will not publish your application unless and until it is issued as a patent. The strategies behind different publication routes are complex and should not be decided upon on a whim. As a general rule, some of our clients have used Early Publication as a way to put potential infringers on notice of their inventions. Some have selected “Non-publication” as a way to keep their inventions (and patent applications) secret. Others don’t care one way or the other and let the applications publish 18 months after filing.
We generally file our applications electronically, which means that once the application is filed, we will get a filing receipt back immediately, and you will have a serial number for your application and will be officially patent pending.
Foreign Filing. A patent (and trademark for that matter) filed in the US will only give you protection in the US. For patents, that protection is the exclusive right to “make, use, and sell” the invention. Thus, people can buy a copy of your product in China, but they can’t bring it into the US to “sell or use”. Also, no one can “make” a copy of your patented product in the US for sale to another country. However, your US patent will not protect you from a company making your invention in China and selling it into Germany. So, many inventors consider foreign filing of patents. Our website has a good explanation of foreign filing in our Education section.
