The Patent Office gives inventors so many different options for filing a patent application that it confuses inventors. In this article, we will discuss the choice between a provisional patent application or a nonprovisional patent application.
So, should you file a provisional or nonprovisional patent application? In general, if you need to delay patent costs, you should submit a provisional patent application. If you need to get the patent as soon as possible, then you should file a nonprovisional patent application first. If you are unsure, then you should submit the provisional patent application first.
Let me explain.
I. File a provisional patent application to delay patent costs
So, how does filing a provisional patent application delay costs?
In summary, filing a provisional patent application delays costs because it delays the time when the Patent Office examines the patent application. This delay, in turn, delays the costs related to the examination of the patent application.
As shown in Figure 1, the USPTO does not examine provisional patent applications (PPAs). PPAs merely stay pending at the United States Patent and Trademark Office (USPTO) for one year. After one year, the Patent Office abandons PPAs.\
If you want to get a patent after you file the PPA, then you must file a corresponding upgraded nonprovisional patent application (NPA) within one year, as shown in Figure 2. If not, the invention is no longer patent pending, as shown in Figure 1 above. Once the NPA is submitted with the USPTO, the NPA enters the queue for examination. The Patent Office works off its backlog of NPAs for examination on a first-come-first-served basis. It takes about 18 months for the Patent Office to work off its backlog before they examine your NPA.
When the Patent Office examines the patent application, you have to respond to the office action, and the response will cost you money. For example, your patent attorney will reply to the office action, call the examiner, etc. and guide you through the process. These activities related to examination cost money and generally occur 18 months after filing, as shown in Figure 3.
By filing the PPA first, your patent application does not get in line for examination until you submit the NPA. By doing this, you can delay the costs related to examination for up to about 30 months (12 + 18 months). During this time, you can test market your product.
If you want to read more about patent cost timing, read: Patent Cost Framework.
Both the PPA and the NPA gives you patent pendency. However, the PPA also delays when your patent application will be in line for examination for up to one year. Hence, you can delay patent costs for one additional year. Otherwise, if you file the NPA first and bypass the PPA, the timeline will look like the timeline below. The NPA enters the queue for examination immediately, and examination costs will be incurred 18 months after you file the NPA.
The purpose of provisional patent applications is used to establish patent pendency and to delay patent costs. Provisional patent applications are not quick and cheap.
Patent myth: Provisional patent applications are quick and cheap
Many inventors believe that PPAs are fast and cheap. This perspective is a lie. On the internet, patent attorneys and patent agents advertise provisional patent applications as quick and cheap. However, inventors don’t realize that provisional patent applications when written properly, are only slightly less expensive than a non-provisional patent application. PPAs are by no means cheap and quick compared to an NPA.
The time required to write the provisional patent application is slightly less than the time that it takes to write the non-provisional patent application. But, it is by no means lightning fast.
Since time is money for attorneys, the cost for the provisional patent application is only slightly less than the nonprovisional patent application. That is if the provisional patent application provides the same level of patent-pendency type patent protection as a non-provisional application. If not, then the provisional patent application can be as cheap as you want it to be.
If you want to know more, read: Provisional patent applications: Cheap Alternative?
II. File a nonprovisional patent application to get a patent
When you file a non-provisional patent application, the patent application enters the queue for examination. Unless you enter the line for examination, the Patent Office will never grant a patent. Once you submit the NPA, the Patent Office will work through its backlog and in about 18 months, examine your patent application.
If you file the PPA first and wait 12 months to submit the corresponding NPA, then the NPA won’t be examined until 30 months after submitting the PPA, as shown in Figure 3 above.
Alternatively, if you want the patent sooner than later, you can bypass the PPA and file NPA. Your NPA will get examined. If successful, you will get a patent, as shown in Figure 4.
You can expedite the patent grant by filing a request for prioritized examination. In my experience, the Patent Office will examine your patent application in about four to six months after filing the NPA, as shown in Figure 5. You won’t have to wait 18 months for the Patent Office to examine your patent application.
Depending on your desired goal, you can choose to delay patent costs. It wasn’t always like this. Previously, the Patent Office used to examine all NPAs on a first-come-first-served basis. Now, you can request prioritization of your NPA by filing a request for prioritized examination. Your patent application would be brought from the back of the line to the front of the line for examination.
Alternatively, you can choose to get your patent sooner than later by filing the NPA first.
III. File a provisional patent application if unsure
If you are uncertain whether you want to delay patent costs or get your patent sooner than later, then my recommendation is to file the provisional patent application.
If you file a PPA to delay patent costs, you can change your mind the next day. You don’t have to wait 12 months, as shown in Figures 2 and 3 above. You can file the NPA the day after. You don’t have to wait one year to file the NPA.
However, if you file the NPA, then the NPA will enter the queue for examination. You cannot take it out of the line for examination unless you abandon your patent application, which I do not recommend. If you want the patent even faster, then all you need to do is file the NPA with a request for prioritized examination.
IV. Related questions
What are the legal differences between a PPA and NPA?
A non-provisional patent application has various sections. For example, the non-provisional application has the following sections:
- Brief description of the drawings
- Detailed description of the invention
- Claim section
A provisional patent application does not require all of these sections. You can prepare the provisional patent application with all of these sections, but it is not required.
The provisional patent application only requires a detailed description of the invention section and the drawings. As you can see, both the provisional application and the non-provisional application must include a detailed description of the invention section. If this section does not fully explain the invention, then whatever you leave out does not enjoy priority or patent pendency. You don’t have patent pendency for things that you left out.
The other sections are generally easy to complete. The most time-consuming part of the patent application is a detailed description section of the invention. Because both the provisional and non-provisional application requires the detailed description section of the invention, the costs associated with both the provisional and non-provisional patent application are similar. The provisional patent application is only a lower-cost option. It is not cheap. The cost of the PPA is slightly lower than the cost of the NPA if the PPA is prepared to give you the same level of patent-pendency type patent protection as the NPA.
What are the cost differences between provisional and nonprovisional patent applications?
The cost difference between a provisional patent application and a nonprovisional application is about $2,000. Why? The parts which are not required in the provisional patent application are generally easy to prepare. The background section should be short and state the problem in a generic and nonspecific way. The summary can be a one-paragraph summary of the invention. The claims section is difficult and hyper-technical to prepare. However, it is not very time-consuming. Lastly, the abstract is no more than 150 words and briefly describes the invention. These sections are not time-consuming to fill in.
For this reason, the cost for the provisional patent application is only a lower cost option, not a cheap alternative to the non-provisional patent application.
If you want to understand more, read: Provisional patent applications: Cheap Alternative?
If the provisional patent application is prepared correctly and to the same extent as the non-provisional application, then the cost of the provisional patent application will be slightly less (e.g., about $2,000) than the cost of a non-provisional application.
For example, let’s say that the cost for the provisional patent application would be $8,000. When you file the non-provisional application, then the cost to upgrade the provisional patent application to the non-provisional application would be about $2,000. The total cost to get to the nonprovisional patent application is $10,000. If you don’t file the PPA but file the nonprovisional patent application first, then the cost will be $10,000. So, either way if you file the PPA then the NPA, you’ll spend $10,000. If you file the NPA and bypass the PPA, you will spend $10,000.
How long do PPA and NPA last?
The provisional patent application will remain pending for up to 12 months. After 12 months, the Patent Office will abandon the provisional patent application.
Within the 12 months, the non-provisional patent application must be filed and refer back to the provisional patent application. By referring back to the provisional patent application, the common things that are included in both the provisional and non-provisional applications are considered as being filed as of the filing date of the provisional patent application. Even though you filed the non-provisional application after the filing of the provisional patent application, the disclosure or the explanation in the non-provisional application is given the filing date of the provisional patent application.
The non-provisional application can remain pending for 20 years. You can file continuing applications (e.g., continuation, divisional, continuation in part applications) serially for 20 years if one of those applications mature into a patent, then great. Before the maturation of the patent, you must file the next continuing application. To maintain dependency of the invention at the Patent Office.
What does a provisional patent application do?
The provisional patent application was designed to be a lower-cost option. Unfortunately, patent attorneys and patent agents have advertised provisional patent applications as a cheap, and quick alternative to the non-provisional application. However, the Patent Office never considered the provisional as a cheap and quick option. Rather, the Patent Office described PPAs as a lower-cost option which it is as I’ve discussed above.
The primary purpose of the provisional patent application is to delay the examination of the patent application, which in turn delays the patent costs. That, to me, is the primary benefit of filing the provisional application.
Can you amend a provisional patent application?
No, you cannot amend a provisional application after you file it. Once you file the provisional application, whatever the provisional application remains fixed. You cannot add or subtract from the patent application.
For laypeople, patent attorneys may describe the provisional as something that you can amend. However, this is untrue. The reason that they are saying this is that you can file a series of provisional patent applications for up to one year then submit one non-provisional application that incorporates all prior-filed provisional patent applications. By doing this, you don’t have multiple non-provisional applications which will be examined, which would be for most cost-prohibitive. Instead, by using this strategy, the Patent Office will only examine one non-provisional application that you have to deal with.
However, because you have the option to file multiple provisional applications within the year, this is loosely understood to mean that you can add information which will ultimately be included in your non-provisional application. However, as you add or file new provisional patent applications, the new information does not enjoy the earlier filing dates of the earlier provisional patent applications. The new information gets a filing date when the provisional application is filed.