|Provisional Utility Patent Application
A Provisional Utility Application is a valuable but preliminary step toward obtaining a Utility Patent to protect how your invention works or is made. Once filed, you will be able to mark your invention as “Patent Pending.” However, as the name implies, a “Provisional” Application must always be converted to a Non-Provisional Application for patent to eventually issue. This aspect of Provisional Applications creates the situation whereby (when compared to filing a Non-Provisional Application at the onset) a Provisional is generally less expensive to get to the patent pending stage, but more expensive in the long run to get a patent when you consider you would not need this additional step if you were to file a Non-Provisional Utility Application to begin with.
A Provisional Application, however, is a good way to go if you want to get to the patent pending stage for less of an upfront investment and then take some time to determine if your invention is marketable before committing the additional funds necessary to file the Non-Provisional Application. You have 12 months to make that determination. Meaning, you need to file a Non-Provisional Application 12 months from the filing date of the Provisional Application to eventually obtain a patent. When you do file the Non-Provisional Application within the 12 months, it’s as if you filed it on the day you file the Provisional Application. And this is a huge benefit if someone has filed an application between your two applications.
- Say you file a well drafted Provisional Application for an invention on January 1, 2008.
- A competitor discovers the same invention and files a Provisional or Non-Provisional Application on January 31, 2008.
- You then file your Non-Provisional Application for the invention, which is fully supported by the earlier filed Provisional Application, on December 31, 2008.
Based on this scenario, you win the priority contest and would have the right to the patent. This is because the Non-Provisional Application that you filed received the benefit of the earlier filed Provisional Application’s filing date, which is before the competitor initially filed their application.
You received this benefit because you met TWO requirements:
- You filed the Non-Provisional Application within 12 months of the Provisional’s filing date (barely); AND,
- The original Provisional Application was well drafted and the later filed Non-Provisional Application was fully supported by the earlier filed Provisional Application.
We already discussed the first requirement, and it is really just a matter of timing. The second requirement is possibly more important and we will discuss that now.
Information on the differences between Provisional and Non-Provisional Applications at the onset would be helpful.
Here at The Patent Office, a Provisional Application is generally half the price to file when compared to filing a Non-Provisional Application. This is because a Provisional Application does not include any claims. A Non-Provisional Application does include claims. Claims form the meets and bounds of the invention and are the most technical portion of the application to draft. With a Provisional Application, they simply are not required, hence the savings.
In fact, there are no technical requirements on the form and content of a Provisional Application for it to be accepted, because it never gets examined in the USPTO. That being said, major problems can arise when Provisional Applications are not drafted with the same concern for completeness as Non-Provisional Applications. Taking a Provisional Application too lightly and treating it more on par with a disclosure document rather than a patent application will lead to problems down the road. This is because when the claims are added as part of the conversion of the Provisional to the Non-Provisional Application, they must be fully supported by the earlier filed Provisional Application.
If those later filed claims are not supported because the earlier filed application was drafted incompletely, the claims will not obtain the benefit of the earlier filing date of the Provisional Application and all that time will be lost. And in our example above, you would now lose in a priority contest to the competitor and the right to patent the invention.
At The Patent Office, we draft Provisional Applications that are on the same level of completeness as our Non-Provisional Applications. In fact, they include all the specific sections required in a Non-Provisional Application except for the claims. In addition, they are drafted with a clear foresight and understanding as to what the eventual claims will be so that we ensure that when the Non-Provisional Application is filed with the subsequent claims, they will be fully supported and you will receive the benefit of the Provisional Application's filing date as intended.
Price Range for Complete Preparation and Filing: $1500 - $3000. This price includes the government filing fee and the required drawings.
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 a Provisional Patent Application is $500. 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 $250.
- 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.
What is a Provisional Patent Application?
As described more fully in the Overview section above, a Provisional Application is a preliminary step toward obtaining a Utility Patent. A Provisional Application will never mature into a Utility Patent application; it must always be converted to a Non-Provisional Application for a utility patent to issue. The period of time to make this conversion is 12 months from the filing date of your Provisional Application.
What does a Provisional Patent Application Protect?
Since a Provisional Application is a preliminary step in obtaining a Utility Patent, a Utility Patent provides an enforceable legal right to prevent others from exploiting the way your invention is made or works.
How long does a Utility Patent last?
A Utility Patent has a term of approximately 17-18 years from the issue date.