|Provisional to Non-Provisional
Utility Patent Application
This service is offered to those inventors who currently have a pending Provisional Application filed in the US Patent and Trademark Office. This step of converting the Provisional Application to a Non-Provisional Application is an absolutely necessary step in obtaining a patent. In fact, a Provisional Application alone will never mature into a patent; it must always be converted to a Non-Provisional Application. An inventor has 12 months from the filing date of his or her Provisional Application to convert it to a Non-Provisional Application. When a Non-Provisional Application is filed within 12 months of the filing date of the Provisional Application, it receives the benefit of the Provisional Application’s filing date. For example, if you file a Provisional Application on January 1, 2007 and convert it to a Non-Provisional Application on December 1, 2007, it is as if you filed a Non-Provisional Application on January 1, 2007. See more details on this under Provisional Utility Applications.
The process of converting the Provisional Application to a Non-Provisional Application can be simple or complex. A simple (and relatively less expensive) conversion only involves adding claims. This is generally the case when we have originally filed the Provisional Application on your behalf. A more complex (and relatively more expensive) conversion may require drawings, revising the description to comply with statutory requirements, and drafting the claims. No matter the case, the actual “conversion” is actually filing a completely separate Non-Provisional Application that claims the benefit of the filing date of the previously filed Provisional Application.
One major consideration when converting a Provisional Application to a Non-Provisional Application is being aware that the added claims must be supported by the original disclosure in the Provisional Application. Claims that are not supported in the original disclosure do not obtain the Provisional Application’s filing date which may have significant consequences. See more details on this under Provisional Utility Applications. Here at The Patent Office, we are aware of these consequences and do our best to make sure that the claims that are drafted as part of the conversion of a Provisional to a Non-Provisional Application are fully supported by the original disclosure.
Price Range for Complete Preparation and Filing: $2000 - $6000. This price includes the government filing fee and the required drawings. The main factor that determines the fee for the conversion is how well the original Provisional Application was drafted. If we originally filed the Provisional Application for you, you can be sure that your fees will be on the low end of the spectrum.
The place to start with any type of patent application endeavor is a Patent Search.
A Patent Search is important for at least two reasons:
The fee to conduct a Patent Search for converting a Provisional to a Non-Provisional Patent Application is $1000. However, if you elect to pursue the patent application after reviewing the search results, we will credit half of this fee to the application drafting fees. So the net cost for the benefits described above is just $500.
- A Patent Search results in a stronger patent.
A search allows the practitioner to gain the information required to draft the application according to the Patent Drafting Strategy we utilize to ensure the broadest protection possible for your invention.
- A Patent Search will save you time and money.
This is important because before you spend any money toward the application process, you should determine if protection is in fact available. Plus, it allows us to draft an application that we believe is allowable in light of the search results, which cuts down on the time and money required to prosecute your application toward a patent.
Why do I need to do this?
You only need to convert a Provisional to a Non-Provisional Application if you currently have a Provisional Application pending in the US Patent Trademark Office. If you meet this requirement, you absolutely need to make this conversion, as a Provisional Application will never mature into a patent. Only a Non-Provisional Application can result in a patent.
When do I need to do this?
You must convert your Provisional Application to a Non-Provisional Application within 12 months of the filing date of your Provisional Application.
How long does a Utility Patent last?
A Utility Patent has a term of approximately 17-18 years from the issue date.