The key distinction when deciding to file a provisional or nonprovisional patent application is whether you want to delay costs or secure your patent as soon as possible. Unfortunately, you can’t have it both ways—it’s either delay legal fees or expedite the patent process.
Option 1: Provisional Patent Application
Filing a provisional patent application allows you to delay the examination process, and thus the costs associated with the examination process. A provisional patent application will be assigned a serial number and a filing receipt will be mailed. Beyond this, nothing else happens to the provisional patent application.
The patent office won’t review or examine your idea to see if it is worthy of getting patented.
What’s the advantage of filing a provisional patent application? Why would you ever want to file a provisional application? In my point of view, the main advantage is that you can hold off spending money on legal fees, like those required for responding to office actions, filing an information disclosure statement (IDS), or paying the issue fee. You still have to spend money on the preparation of the patent application but you can delay the examination costs.
What’s the disadvantage of filing a provisional application? You have to wait till later to get your patent granted because a provisional application will never mature into a patent.
Option 2: Nonprovisional Patent Application
On the other hand, filing a nonprovisional patent application starts the examination process immediately, on a first-come, first-served basis. While you wait for examination, you’ll need to file an IDS, check your filing receipt, and eventually respond to office actions and pay the issue fee. These are all necessary examination expenses that bring you closer to getting your patent.
What’s the advantage of filing the nonprovisional patent application? You will get a patent sooner than if you had filed the provisional application.
What’s the disadvantage? You can’t delay legal expenses. You have to spend money on legal fees (i.e., examination costs) sooner than later.
The Choice between Option 1 and 2
So, the choice boils down to this: Do you want to delay legal fees and get your patent later? If so, a provisional patent application is your best option. But if you’re eager to secure your patent as soon as possible, you’ll need to be prepared for the associated costs of filing a nonprovisional patent application and all of the downstream costs associated with getting the patent.
Can't Decide? Start with a Provisional Application
If you’re still on the fence, it’s often wise to start with a provisional patent application. Why? Because you can always change your mind. You have up to one year to file a nonprovisional patent application after filing the provisional application.
Moreover, you don’t have to wait the full year—you can file the nonprovisional application one day after filing the provisional if you change your mind or circumstances change.
By filing the provisional application, you are given great flexibility on when you spend money on legal fees and when you get your patent.
The Basic Strategy
Some inventors rush to secure their patents early, concerned about potential infringers. However, this fear is often unfounded during the initial stages of most product launches. Typically, infringement doesn’t become a significant issue until you’ve demonstrated that your product has strong market demand. It’s only after your success is evident that competitors start to notice you and consider competing against you.
In the beginning, for most, the reality is that no one will be competing against you or copying your product.
Given this reality, a common strategy is to start by filing a provisional application. Launch your product and see whether it’s doing well in the market. If your product gains traction, be happy and enjoy the profits. Should competitors begin copying your product sooner than expected, you can then file a nonprovisional application to get your patent.
To secure your patent more quickly, consider expediting the examination of the nonprovisional application.
Using this basic strategy will help you to secure patent pendency and get your patent at the right time while controlling your expenses.
For more details on whether to expedite your nonprovisional patent application, check out my article: Should You Expedite Examination of Your Nonprovisional Patent Application?
Conclusion
In the end, the decision between filing a provisional or nonprovisional patent application hinges on your priorities: delay costs or secure your patent quickly. Whichever path you choose, just remember—you can’t have both.
Need Help?
If you need help with the patent process, give me a call at (949) 433-0900. I’ve helped hundreds of clients and I’m confident that I can help you.
Answers to Your Basic Patent and Trademark Questions
This article is one article in my series titled Answers to Your Basic Patent and Trademark Questions which explains answers to the basic questions when you are seeking patent and trademark protection for your product. The articles relate to different basic issues you will encounter as you go through the patent and trademark process.
Patents
- Should I Patent My Idea?
- How to Create a Strong Patent?
- Should You File a Provisional or Nonprovisional Patent Application?
- Should you expedite your nonprovisional patent application?
- Strategies for Cost-Effective Foreign Patent Protection
- When Should You File a Patent Application?
Trademarks