You should file a provisional patent application (PPA) if your top priority is to delay the costs to getting a granted patent. On the other hand, you need to file a nonprovisional patent application (NPA) if your top priority is to get the granted patent sooner than later. Also, you should consider filing a request to expedite the examination of your nonprovisional application if you really want to get your patent as soon as possible. You can only get one of these two priorities (i.e., delay patent costs or expedite patent grant) but not both.
By the end of this article, you will know whether you ought to file the provisional or nonprovisional patent application first and why.
Top priorities
The decision to file the PPA or the NPA first depends on your top priority. To find out the differences between a PPA and NPA, read “Differences between a provisional and nonprovisional patent application.”
Is your top priority to get the patent as soon as possible?
OR
Is your top priority to delay patent legal costs?
You need to decide whether your top priority is to get the patent as soon as possible or delay patent legal costs. You might want both, but you can’t have both. Once you decide which is your top priority, then whether to file the provisional or nonprovisional patent application becomes a matter of implementing a strategy to achieve your top priority.
Sometimes, the decision is made for you. For example, if you don’t have the funds to expedite the patent grant, you have to delay patent legal costs.
Strategy when your top priority is getting a patent as soon as possible
If getting the patent as soon as possible is your top priority, the strategy would be to file the nonprovisional application first. Suppose you want to expedite the processing of your patent application. In that case, you can file a request to expedite the examination, also known as a Track 1 request. With this strategy, I’ve been able to get my clients their patents as fast as 2 to 3 months.
However, that means that they had to spend money for the novelty search, patent application, examination, and issue fee within that short timeframe.
Strategy when your top priority is delaying patent legal costs
On the other hand, if delaying patent legal costs is the priority, the strategy would be to postpone the patent application examination as much as possible. Let me explain.
I’d recommend filing the provisional patent application first. For the first 12 months, you don’t incur any substantial patent legal costs. Within 12 months, file the nonprovisional application claiming priority back to the provisional patent application. The United States Patent and Trademark Office will take about 14-18 months to examine your patent application. No significant legal costs are incurred during this period of time.
When you finally receive your first office action, don’t respond early. You can reply as late as possible. You can take extensions and file up to 6 months after the mail date of the office action. If you are successful, you will then get your patent.
With this strategy, you get your patent about three (3) years later. That is so slow. But, the benefit is that patent legal costs are delayed or spread out over three years.
The decision to file the provisional or nonprovisional patent application first depends on your top priority. Is it to get the patent as soon as possible or delay patent legal costs?
What should you do if you don’t have the money to expedite the patent grant?
Now, if your top priority is to get the patent as soon as possible, but you don’t have money to pay for the legal costs to get the patent, you need to delay patent costs. File the provisional patent application first. You have no other choice.
Once you know what your top priority is, it becomes much easier to understand what to do.
Still unsure of your top priority
Now, let’s say that you’re still unsure of your top priority. I recommend that you file the provisional patent application first.
Why?
You can change your mind. If you file the provisional patent application first and your top priority changes to getting the patent as soon as possible, that’s fine. You don’t have to wait 12 months to file the nonprovisional. You can file the nonprovisional patent application the day after filing the provisional patent application. Also, you can choose to expedite the examination with a Track 1 request if you want to speed up getting your patent as much as possible.
On the other hand, if you file the nonprovisional application first, you can’t convert it back into a provisional patent application. You’ve chosen your strategy and have to stay with it.
When should getting the patent as soon as possible be a top priority?
The next logical question is, when should getting the patent as soon as possible be a priority.
I tell my clients that they need to have a business need to justify the expenses.
A fear that someone might get a patent first is just speculation, not a well-reasoned basis for expediting the patent grant. Once you file your provisional patent application, you have priority over others that filed after you. Also, other inventors that filed before you have priority over you.
A business need might be that you need to show the patent to a potential licensee. Another business need might be that your competitor has a pattern of copying your products. In these instances, it might make sense to expedite the patent grant and incur the expenses upfront.
For a more detailed explanation, you can also read “Should you file a provisional or nonprovisional patent application?“