Should you file a provisional application or design patent?

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.

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

For most inventors, they 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 Patent	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 the 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 in to 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 issue 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, licensee, 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.