• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent Prosecution Services
    • Patent Defense Services
    • Patent Enforcement Services
    • Trademark Search Services
    • Trademark Prosecution Services
    • Trademark Enforcement Services
    • Trademark Defense Services
    • Patent and Trademark Licensing Services
    • Worldwide Patent and Trademark Services
    • Business Risk Management
    • Mergers and Acquisition Consulting
  • Industries
    • Automotive Patents
    • Consumer Products Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • See Patents in More Industries
  • Learning Resources
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Comprehensive)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • Continuation patent application and related divisional and continuation in part
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent application process / Before filing a patent application / Types of Patents / Should you file a provisional application or design patent?

Should you file a provisional application or design patent?

August 20, 2019 by James Yang

The process of applying for a patent is confusing because the Patent Office gives you four different options for filing a patent application.  Among the various choices, the most common question is whether you should file a design patent application or a provisional patent application.

So, should you file a provisional patent application or a design patent application? You should submit a design patent application if your invention is related to the looks of the product.  You should file a provisional patent application if the invention is associated with the function of the product.  You should not submit a design patent application just because it is cheaper than a provisional patent application.

Let’s dive in.

Patent Application Filing Options

Table Of Contents
    • Different types of patent applications
    • Which type of application should you file?
      • Design vs. Utility patent application
      • Option: File both design and utility patent applications
      • Provisional vs. Nonprovisional patent application
    • Should you request expedited examination?
      • When to request expedited processing

Different types of patent applications

The Patent Office allows you to file four different types of patent applications.  These types of applications are:

  1. Provisional patent application,
  2. Nonprovisional patent application,
  3. Design patent application, and
  4. Plant patent application.

Which type of application should you file?

Design vs. Utility patent application

Most inventors can cross off plant patent applications as one of the options.  You will know if you need to file a plant patent.  The name says it all.

Now, you have three different types of patent applications you can submit.  Of these three types of patent applications, the provisional patent application and the nonprovisional patent applications are different types of utility patent applications.  So, the real difference at this point is whether you should file a:

  1. Design patent application; or
  2. Utility patent application (e.g., provisional or nonprovisional patent application).

After we decide between 1 or 2 above, we can determine if you should file a:

  1. Provisional patent application; or
  2. Nonprovisional patent application.

We will discuss each decision below.

You should file a design patent application if the invention is related to the looks (i.e., ornamentation) of the product.  You should submit a provisional or nonprovisional patent application if the invention is associated with the function (i.e., usefulness) of the product.  You can tell if the invention is related to the looks or the function by the words you use when you describe your invention.  If you use words of aesthetics (e.g., shape, beautiful, sleek) to describe your invention, then your invention is connected to the looks of the product.  If you describe your invention in terms of function (e.g., fast, easy, less effort), then your invention is related to the function of the product.

It is that simple.

Option: File both design and utility patent applications

Sometimes, you might have something that straddles the line between looks and function.  For example, you might describe a Lego set in terms of the function and the looks.  In this case, you would need help in deciding which one to get.  You may have to get both.  For example, Lego has both a utility patent and a design patent.

Design PatentUtility Patent
legoLego Utility Patent

If you’ve decided that you need to file a design patent application, then you don’t have to submit a provisional or nonprovisional patent application and vice versa.  If you’ve decided that you need to file a provisional or nonprovisional patent application, then you don’t need to submit the design patent application.  You cannot use a design to protect the function of the product.  Conversely, you cannot use a utility patent to protect the aesthetics of the product.

Provisional vs. Nonprovisional patent application

Now, if you need to get a utility patent, you need to decide whether to file a:

  1. Provisional patent application; or
  2. Nonprovisional patent application.

If you are reading this article, then you’ve done some research on provisional and nonprovisional patent applications.  Simply put, patent attorneys advertise provisional patent applications as being cheap or very low cost.

A provisional patent application is certainly a lower-cost option.  However, a provisional patent application is not a cheap option. It is not cheap if it is to give you the same type of patent-pendency type patent protection as a nonprovisional patent application.  You can read my explanation here in this article: Provisional Patent Application: A Cheap Alternative?

After you put away all of the salesmanships behind provisional patent applications, here is the purpose of the provisional patent application.

The bottom line is that a provisional patent application delays examination cost, whereas a nonprovisional patent application gets you your patent faster.  Both have different goals.  You cannot defer costs and get your patent faster at the same time.  If you want to get your patent more quickly, you have to speed up expenses.  If you’re going to slow down your expense burn rate, then you need to be okay with getting your patent later.

Let me explain.

You first need to have an understanding of the overall patent process.

Here goes.

When you want to get a patent, you need to file a patent application.  The patent application eventually needs to be placed in the queue for examination.  Your patent application, by default, will get examined on a first-come, first-served basis.   Once examined, a response has to be filed.  If successful, you will have to pay an issue fee.  You will then get your patent.

The patent process has two big costs.  The first big cost is the cost to prepare and submit your patent application which will be about $7k to $15k.  Read more here about Cost for a quality patent.  The second big cost is in responding to the office action and paying the issue fee which will be around $2k to $10k.  Schedule a consultation if you would like to know the cost to get a patent for your invention.

As I mentioned, the provisional patent application delays costs.

Here is how.

When you file the PPA, the PPA does not get into the line for examination.  It merely remains pending with the Patent Office.  It just gives you a priority date for what you disclosed to the Patent Office.  That is it.  The PPA remains pending for one year and one year only. Before the one-year is up, you have to file an NPA.  Otherwise, the priority date that the PPA gave you is lost.  When you file the NPA, your patent application is in a queue or in line for examination.

In other words, by filing the provisional patent application, you can delay the time when your patent application goes in the line or queue for examination for up to one year.  The delay in entering the queue for examination, in turn, defers the examination because the examination is taken up on a first-come, first-served basis.

The bottom line is that you should file a provisional patent application to delay the examination costs or file a nonprovisional patent application to get the patent sooner than later.

To get more information on the purpose of the provisional vs. nonprovisional patent application, read: Differences between a provisional and nonprovisional patent application

Should you request expedited examination?

The Patent Office, when you file the nonprovisional patent application, gives you the option to expedite the examination of the patent application.  The cost is generally in the thousands of dollars range.  So, you can ask for it just because you want expedited processing.  You have to pay for it.  If you file the nonprovisional patent application without an expedite request, then the examination of your patent application will occur about 18 months later.  That is just an estimate and the actual time is based on the specific art unit your invention fits into and the backlog in that art unit.

However, if you file the nonprovisional patent application with an expedite request, then the examination of your patent application will occur in about 4-6 months.  The expedite request brings your patent application to the front of the line.  Hence, the shorter time to examination.

I’ve seen patents issued in as little as 4-6 months based on the expedited processing.  If you need your patent faster, I suggest that you request expedited processing.

When to request expedited processing

In my experience, clients request expedited processing when they want to know as fast as possible if they will get a patent and not waste time waiting.  Eighteen (18) months is a long time to wait to find out if you are going to get your patent.  Also, sometimes, investors, licensees, and buyers want to know if you are going to get your patent.  If a deal hinges on whether you will get your patent, then expedited processing should be considered.

  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Professional Profile

James Yang Business Patent Attorney

James Yang, Patent Attorney

James Yang is a patent attorney whose practice encompasses all area of intellectual law including patents, trademarks, copyrights and trade secrets. He serves clients within Orange County and Los Angeles County, California.

About James Yang

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?

New Book Release

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

Peer Recognition

top attorney patent application
client choice patent application
Rated by Super Lawyers
AV Preeminent rating

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

  • Patent Prosecution Services
    Patent Defense Services
    Trademark Prosecution Services
    See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2022 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney