Provisional Vs. Full Utility Patent Application
Mark Levy

Contrary to common wisdom, timing isn't everything. For inventors intent on seeking a patent, knowing about patent law is everything. Or should be.

Case in point is the sometimes misunderstood legal mechanism known as the provisional patent application. Introduced in 1995 to "harmonize" U.S. and international patent treaties, the provisional patent application exists to provide a less costly, simplified alternative to filing the full utility patent application.

So far so good. And there are other benefits cited later in this article. Yet while the provisional patent application seems a simple alternative at the outset, the wise inventor must keep in mind a number of distinctions between it and the full utility, NON-provisional patent application.

The biggest difference is this: While obviously patents exist, there's no such thing as a provisional patent. As we all know, patent applications that meet stringent legal criteria eventually become patents through the U.S. Patent Office. So while you can always file a provisional patent application, it never becomes a patent. For a patent, you still must file a non-provisional patent application.

Know Thy Provisional Patent Application

While my experience generally leads me to advise people away from filing a provisional patent application, there are some advantages. According to the USPTO, "A provisional application for patent ... allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application ... "

Filing a provisional patent application allows the inventor to refer to her or his invention, and mark the product 'Patent Pending'. In addition the filing fee is substantially less -- $65 as of March 2013, for a micro entity. This compares to $400 for filing a non-provisional patent application as a micro entity.

Other provisional patent application benefits:
  • It establishes a priority date, so anyone conceiving the same invention later will not be able to obtain a patent (as long as the originator files a full, non-provisional patent application within one year of filing the provisional version).
  • Simplicity -- a written description of the invention is required, but claims and drawings are not.
  • It provides an alternative for inventors simply unprepared to file a non-provisional patent application.

Since a provisional patent application never matures into a U.S. patent, eventually a separate non-provisional patent application must be filed. Meaning what? Meaning the provisional patent application will ultimately cost the inventor two filing fees - one each for the provisional and non-provisional applications.

Other disadvantages:
  • The USPTO does not examine provisional patent applications.
  • If the inventor improves the invention and later attempts to add new matter in the non-provisional application, then the new matter will not benefit from the provisional priority filing date.
  • If the inventor publicly disclosed the invention prior to filing the provisional patent application -- but certain features of the invention were not included in the provisional application -- then the non-provisional patent application must be filed within a year of the disclosure of the features that were not described ... not within one year of the filing date of the provisional application.
  • Unless claims are included in the provisional, it may be impossible to add significant claims to the subsequent, non-provisional patent application.
  • Unless you file a non-provisional patent application between one and 364 days after the provisional filing, you'll be prevented from claiming the benefit of the original filing date.

Like a Rock: The Non-Provisional Patent Application

Tra-dition! Just as my hero Tevye from the 'Fiddler On The Roof' sings, tradition almost always wins out (for me, at least). And in our discussion, that takes the form of the ironclad, non-provisional patent application.

Small wonder I feel that way. Out of 3,500 U.S. patents awarded every week, 100 percent derive from non-provisional patent applications. How many of those 3,500 patents began as provisional patent applications? Very, very few.

Nonetheless, for the sake of being thorough, allow me to summarize the basics of the non-provisional patent application. From the USPTO: "A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office." Translated, that means an invention that came out of your head can be considered your property giving you, the inventor, an exclusive right to license it while retaining ownership, or selling it outright.

As most of us know, unlike the 1-year life of provisional patent applications, generally a patent's term is 20 years from the date the patent application was filed, as long as all fees are paid.

Upon maturation to a patent, the non-provisional patent application:
  • Excludes others from making, using, or selling the patented invention
  • Creates licensing opportunities
  • Disseminates previously unknown information to the public
  • Allows manufacturers, other than the owner of the patent, to produce and sell a product once its patent has expired

Compared with the provisional, the non-provisional patent application has few disadvantages in my view. But, there are factors to consider:
  • Preparing the non-provisional can be time-consuming. It simply takes time to do things right.
  • Rigorous requirements govern what goes into the application (yet these are advantages in my humble opinion).
  • Long lead-time -- two years or longer -- exists from application filing to patent award.
  • There's a greater initial filing expense -- $400 vs. $65.

For what it's worth, on February 1, 2007 the United States Patent and Trademark Office (USPTO) eliminated their Disclosure Document Program. This program existed to help prove an invention's conception date. Simply stated, what inventors did is write up an invention disclosure form, send it in with $10, and the Patent Office will send a receipt back acknowledging it. It was kept on file for two years, then destroyed. According to the USPTO, a provisional application for patent provides more benefits and protections to inventors than a disclosure document and can be used for the same purposes as a disclosure document if necessary.

Putting It All Together

By now you've gathered I never recommend filing a provisional patent application, or only in rare instances. When the provisional was first introduced in 1995, one audience I felt would flock to it was academia. Since many inventions are linked to Master's and Ph.D. theses, I concluded researchers wouldn't want some patent attorney like me holding them up. However, upon contacting a major research university in New York I discovered they don't bother with provisional patent applications for the same reasons I've already mentioned.

Further, I don't recommend provisionals because they can give a false hope of security. For example, a recent lawsuit decided by the Court of Appeals for the Federal Circuit took seven years to get there from the date the individual filed a provisional patent application. What happened was, an inventor subsequently filed a full non-provisional patent application after filing a provisional, then found an infringer. But the inventor had filed new information in the perfected patent application that wasn't included in the provisional. Unfortunately, the new information was disclosed more than one year prior to the non-provisional patent application filing date, so the court found the patent claims to be invalid.

Seven years is a long time to find out your invention wasn't patentable. If your motive was to try to rush the process to save time, you could be in for a rude awakening later if you didn't know the laws.

So, provisional or non-provisional?

If you don't have enough funding for the $400 non-provisional filing fee, then you might want to question whether you should be in the game at this point. On the other hand, if you're completely out of time, then that might be reason enough to file the provisional patent application. But if you do, for heaven's sake include claims, drawings, and enough detail to keep you in safe territory later.

My best advice: Aim all your research skills toward filing a full, non-provisional patent application. Create detailed drawings. Generate justly broad claims. Write well. Be happy.

Lechayim -- to life.

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