Provisional Or Non-Provisional Patent Applications
Provisional or Non-Provisional Patent Applications
Recently a viewer of the live monthly web show ” Patents & Prototypes ” asked this question.
“Can you tell me what is a non-provisional patent application and what is a provisional patent application?”
A provisional patent application is not a “patent”, but rather you are buying yourself a year-long grace period during which you can try to attract investors, do some more R&D on your invention, or even try to sell it outright. Bottom line on provisional is that they are a good way to buy yourself a year of grace period; you are “patent pending” from the day the provisional is submitted, and if you later file a utility patent application based on the provisional within the year allotted, your utility application will claim the date of the provisional. Provisionals cost roughly half of a utility patent application (generally around $3,000 to $5,000) and can be prepared relatively quickly, usually within 1 – 2 weeks.
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.
• Need to become “patent pending” ASAP and don’t want to wait for the 2-4 weeks it usually takes to have a quality utility patent application prepared.
• Want 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 dangers of relying on provisional applications include:
• The year will fly by very 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. We often find the inventors who try to save money and write their own provisionals (or use the on-line provisional-writing websites) and prepare a provisional that is of such poor quality that it will not adequately support a utility application.
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 so long as we prepared the provisional, we offer no such discounts for provisionals prepared by other law firms, and most definitely do not offer any such discounts for inventor-prepare provisionals or on-line, fill-in-the-blanks provisionals).
There are also advantages and disadvantages to going immediately with a utility patent application.
The main advantage (for some inventors) 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. We have also found that 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 one of the USPTO’s fast-track programs such as 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 catch? 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. There is also a Track 1 program in effect at the USPTO. This also costs additional money, so contact us for details if you want.
However, before you decide which (if any) type of patent protection you may want to file for, I would highly urge you to do a prior art search first.
A Prior Art Search is an important step in helping the inventor decide whether to proceed with a provisional or utility patent application. With a Prior Art Search, you are trying to find patents, published patent applications, other publications, products being sold, and any other item that may be used to prove that either a) the inventor was not the first inventor of this particular invention, or b) that the combination of the prior art renders this particular invention a mere “obvious improvement”, and not worthy of a patent.
First and foremost, prior art searches are not perfect. Even if you hire 10 different prior art searching companies, they will probably not find everything that an examiner could use in trying to shoot down your application, but the prior art search will hopefully at least give you some idea of what else has already been invented, and from that you determine how to proceed. To repeat, just because you have done your own prior art search and found “nothing” and a professional prior art searching company did not find a patent that was, in your opinion, “not very close” to your invention, it is no guarantee that you will get a patent.
We often tell inventors to do their own prior art search first. Using a combination of the most popular patent searching programs (www.USPTO.gov, www.FreePatentsOnline.com, Google.com/patents and others), enter what you think are the “key words” for your invention and see what kind of patents and published patent applications you get. Start keeping track of them by number and “sort” by number for easy reference. Once you start getting duplicate results from all the search engines, you may have exhausted your searching abilities. You should also look for products similar to yours on the internet, and if your invention is a technical one, consult with the relevant trade, professional and scientific journals. If you found that someone beat you to inventing your invention by more than a year, perhaps you should pay for a consultation/patent assessment to confirm your suspicions and consider going with a design patent. If you think you still have a decent chance to get a utility patent, we advise you to consult a professional prior art searcher.
Turn to a professional. After you feel you have taken the prior art search to its limits, we urge you to have a professional prior art searching company do a prior art search. When you approach the company, make sure you know the price before you start, and give them all the patents, published patent applications, and other prior art you found. Most prior art searching companies budget a certain number of hours to a prior art search, and if you show them what you found, they will focus their efforts on finding additional prior art, rather than reinventing the wheel by spending time finding what you already found. If you like, you can hire two or more different companies and see what each can find.
Prior Art Searches are not perfect and in no way guarantee the success of a patent application.
You can find more information on this in our article on Prior Art Searches (www.icipLaw.com in the “Education” section). Prior art from anywhere in the world can be used against your patent application (just as your published patent application can be used against any patent application in a foreign country). Don’t rely on the prior art search as a final determination of whether you will get a patent. Instead, you should use the prior art search results as a general guide to what other inventions are out there, and proceed knowing that even if the prior art search discloses nothing, there is no guarantee that your patent application will be allowed.
read morePrior Art Search – Should A Patent Application Be Filed?
Here at ICIP Law, we often tell Inventors to do their own Prior Art Search first.
A Prior Art Search is an important step in helping the inventor decide whether to proceed with a utility patent application. With a Prior Art Search, you are trying to find patents, published
patent applications, other publications, products being sold, and any other item that may be used to prove that either a) the inventor was not the first inventor of this particular invention, or b) that
the combination of the prior art renders this particular invention a mere “obvious improvement”, and not worthy of a patent.
Using a combination of the most popular patent searching programs USPTO, Google Patents and Free Patents Online. You enter what you think are “key words” for your invention and see what patents and published patent applications come up. Start keeping track of them by number and “sort” by number for easy reference. Once you start getting duplicate results from all the search engines, you may have exhausted your searching abilities. You should also look for products similar to yours on the internet, and if your invention is a technical one, consult with the relevant trade, professional and scientific journals. If you found that someone beat you to inventing your invention by more than a year, perhaps you should pay for a consultation/patent assessement to confirm your suspicions and consider going with a design patent. If you think you still have a decent chance to get a utility patent, we advise you to consult a professional prior art searcher.
Turn to a professional. After you feel you have taken the prior art search to its limits, we urge you to have a professional prior art searching company do a prior art search. When you approach the company, make sure you know the price before you start, and give them all the patents, published patent applications, and other prior art you found. Most prior art searching companies budget a certain number of hours to a prior art search, and if you show them what you
found, they will focus their efforts on finding additional prior art, rather than reinventing the wheel by spending time finding what you already found. If you like, you can hire two different companies and see what each can find.
Prior Art Searches are not perfect and in no way guarantee the success of a patent application. Please read our article on Prior Art Searches (www.icipLaw.com in the “Education” section). Prior art from anywhere in the world can be used against your patent application (just as your published patent application can be used against any patent application in a foreign country). Don’t rely on the prior art search as a final determination of whether you will get a patent.
Instead, you should use the prior art search results as a general guide to what other inventions are out there, and proceed knowing that even if the prior art search discloses nothing, there is no guarantee that your patent application will be allowed.