You should file a provisional patent application if you want to delay patent costs. On the other hand, you should file a nonprovisional patent application if you want to obtain a patent on your invention as soon as possible. Filing either the provisional or nonprovisional patent application will give you patent pendency.
If you are unsure, then you should submit the provisional patent application. You can always file the nonprovisional application later on and claim priority back to the provisional application. You can’t change a nonprovisional application to a provisional application later on.
Let me explain.
I. File a provisional patent application first to delay patent costs
A provisional patent application delays cost 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). Provisional patent applications merely stay pending at the United States Patent and Trademark Office (USPTO) for one year. After one year, all provisional patent applications are abandoned.
If you want to get a patent after you file the provisional application, 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 nonprovisional application is submitted to the USPTO, the nonprovisional application enters the queue for examination. The Patent Office works off its backlog of nonprovisional applications 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 nonprovisional application.
When the Patent Office examines the patent application, you have to respond to the office action. The response will cost you money. Click here to read more on how to respond to an office action? 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 provisional patent application first, your patent application does not get in line for examination until after you submit the nonprovisional application. By doing this, you delay the costs related to the 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 provisional and the nonprovisional patent applications give you patent pendency. However, the provisional application 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 nonprovisional application first and bypass the provisional application, the timeline will look like the timeline below. The nonprovisional application enters the queue for examination immediately, and examination costs will be incurred 18 months after you file the nonprovisional application.
The purpose of provisional patent applications is used to establish patent pendency and delay patent costs. Provisional patent applications are not quick and cheap.
Patent myth: Provisional patent applications are quick and cheap
Many inventors believe that provisional patent applications are fast and cheap. They are if you don’t do a good job. But, when you preload the provisional patent application with point of novelty, variations, options, and alternative embodiments as you are supposed to, then the cost of the provisional patent application is just slightly less than that of a nonprovisional patent application.
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. Provisional applications are by no means cheap and quick compared to nonprovisional applications when done properly.
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 first to get a patent sooner than later
When you file a non-provisional patent application, the patent application enters the queue for examination. The Patent Office will work through its backlog and in about 18 months, examine your patent application. If successful, you will get your granted patent.
If you file the provisional application first and wait 12 months to submit the corresponding nonprovisional application, then the nonprovisional application won’t be examined until 30 months after submitting the provisional application, as shown in Figure 3 above. Filing the provisional first delays the patent grant.
Alternatively, if you want the patent sooner than later, you can bypass the provisional application and file a nonprovisional application first. Your nonprovisional application will get examined on a first-come-first-served basis. 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 nonprovisional application, as shown in Figure 5. You won’t have to wait 18 months for the Patent Office to examine your patent application.
III. What is the basic strategy for filing either the provisional or nonprovisional application?
Depending on your desired goal, you can choose to delay patent costs by filing a provisional patent application first. Alternatively, if you have the funds to argue with the examiner, you can file the nonprovisional patent application first. You can also request prioritization of your nonprovisional application 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.
IV. 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 provisional application 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 nonprovisional application the day after. You don’t have to wait one year to file the nonprovisional application.
However, if you file the nonprovisional application , then the nonprovisional application 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 nonprovisional application with a request for prioritized examination.
IV. Related questions
Are you still protected if you file the provisional application instead of the nonprovisional patent application?
You are still protected when you file a provisional patent application compared to a nonprovisional patent application. Both the provisional and nonprovisional patent applications give you the same priority date for all that is disclosed in the patent application. Now, I wouldn’t skimp on the number of details you put into the provisional application. Doing that would provide insufficient patent pending type patent protection. I’d recommend preparing the patent application just like a nonprovisional application but file it as a provisional patent application.
What are the legal differences between a provisional and nonprovisional application?
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 a 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 provisional application is slightly lower than the cost of the nonprovisional application if the provisional application is prepared to give you the same level of patent-pendency type patent protection as the nonprovisional application.
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 provisional application but file the nonprovisional patent application first, then the cost will be $10,000. So, either way, if you file the provisional application and then the nonprovisional application, you’ll spend $10,000. If you file the nonprovisional application and bypass the provisional application, you will spend $10,000.
How long do provisional and nonprovisional applications 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 12 months, the non-provisional patent application must be filed and referred 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 matures into a patent, then great. Before the maturation of the patent, you must file the next continuing application to maintain dependency on the invention with 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 provisional application 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 and 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 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 that 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.