Non Provisional Patent: Everything You Need to KnowStartup Law ResourcesIntellectual Property
A non-provisional patent application requests the United States Patent and Trademark Office (USPTO) to issue a utility patent9 min read
A non-provisional patent application requests the United States Patent and Trademark Office (USPTO) to issue a utility patent.
What Is a Patent?
Before we discuss how to complete your non-provisional patent applications, it's important to spend some time discussing a few basic facts about patents. Essentially, a patent is a type of intellectual property protection. With a patent, you can protect a new discovery or an invention.
Inventions can either be a process or a product, and for an invention to be patentable, it must meet certain qualifications, such as:
- The invention must be useful.
- The invention must be novel.
- The invention must be non-obvious.
Patents will fall into one of three categories:
- Design patents
- Utility patents
- Plant patents
The type of patent for which you apply will depend on the nature of your invention, but no matter the patent that you need, you will submit your application with the USPTO. To understand the patent application process, you need to know the difference between a provisional patent and a non-provisional patent.
A provisional patent application and a non-provisional patent application are two different tools you can use to secure a patent for your invention. Starting with a provisional patent is the longer route to obtaining your patent but does provide several benefits.
What Is a Non-Provisional Patent?
A non-provisional patent application requests the United States Patent and Trademark Office (USPTO) to issue a utility patent. This type of patent protects intellectual property rights for anything novel, useful, and non-obvious:
- Processes and systems
- Chemical compounds or compositions of matter
- Improvements on pre-existing patents
What is a Provisional Patent?
Inventors in the United States can also file an application for a provisional patent. The benefit of a provisional patent application is that it allows you to protect your invention while you are still working on your idea. Filing a provisional patent application will also give you the time to decide if your invention is original enough to warrant undertaking the time-consuming and expensive process of filing for a non-provisional patent.
Provisional patent applications are much more affordable than non-provisional applications. The application for a provisional patent is also very simple and can be completed without much difficulty.
Once your application has been filed with the USPTO, you will have a period of one year to convert your provisional patent to a non-provisional patent. You can convert your provisional patent by filing a non-provisional patent application. In this application, you must reference your provisional patent.
The benefit of a provisional patent is that it stakes your claim to your invention, allowing you to later file for a full non-provisional patent after your idea has been refined. When filing your provisional patent application, however, you must be very careful about how you describe your invention. If you add something to your non-provisional application that you did not include in your provisional application, you will likely lose all patent protections.
To make sure you are able to file for a non-provisional patent, you should make sure that you describe your invention in as many ways as possible in your provisional application. Using broad descriptions will help you avoid losing out on your full patent because your application includes new information not found in your provisional patent application.
Non-Provisional Patents: What Are They?
Also known as a utility patent application, a non-provisional patent application leads the way to a utility patent issue. This type of patent:
- Can cover electrical, mechanical, or chemical inventions.
- Can protect an inventor's rights to make, use, and sell an invention.
- Can serve as public notice of innovation and intellectual property ownership.
The USPTO also grants design and plant patents. The former cover an invention's appearance, and the latter covers discovery and asexual reproduction of new plants. Utility patents are the most common of the three available types.
Application Requirements for a Non-Provisional Patent
If you're interested in applying for a non-provisional patent, you must be sure that your application includes the correct information. Failing to include the proper information will result in a rejected application, meaning you will need to start the patent process over again.
First and foremost, your application should include a detailed description of your invention, as well as a claim related to your invention. If needed to clarify your invention, you may also need to include drawings. You should include an oath or a declaration that you are the original inventor of your product, and you will also need to include several fees. These fees cover filing your patent, a patent search, and an application examination.
Your non-provisional patent application should be written in English. If you are not a native English speaker, you can include an English translation with your application and a statement that verifies the accuracy of the translation.
To successfully complete your application, make sure that it includes the following information in this exact order:
- A Transmittal Letter, which is also called a Utility Patent Application Transmittal Form.
- Your required fees and a Fee Transmittal Form.
- An Application Data Sheet.
- One or more claims and a specification sheet.
- Any drawings necessary to describe your invention.
- Your inventor's oath or declaration.
- An Amino Acid Sequence Listing, if necessary.
How Are Applications Reviewed?
Basically, a non-provisional patent application is the same thing as a utility patent application. When you file for a non-provisional patent, you are requesting that the USPTO review your application with the hope that the organization will issue your full patent.
While provisional patents do afford you certain protections for your invention, provisional patent applications are not reviewed by the USPTO. If you properly fill out and file your provisional patent application, however, you will be well on your way to receiving ‘patent pending' status for your invention.
Why Are Non-Provisional Patents Important?
A non-provisional patent differs from a provisional patent application, which the USPTO introduced in 1995. For some inventors, a provisional patent application offers a head start on filing. However, this patent does not guarantee that the USPTO will accept your non-provisional application.
A provisional patent application:
- Gives inventors limited protection for one year and grants a "patent pending" status, which can be used with the invention's description.
- Must be submitted within a year of disclosing the invention to the public.
- Is easy to file, since the application needs a short description and a simple sketch of your idea.
- Must include all the basic elements that you plan to include in the non-provisional patent. Make it as flexible as possible so that you don't have to add more information later. This information can include potential variations and materials.
- Is not available to the public.
- Can be cost-effective. A standard provisional patent application costs $260. Small entities pay $130, and micro-entities pay $65.
- Is a placeholder for your non-provisional patent application, but may delay your patent issue up to one year. If the inventor later submits a non-provisional patent application and the USPTO issues the patent, its term will start from the date of the non-provisional patent application.
- Doesn't grant a patent or exclusive rights to your invention.
In contrast, a non-provisional patent application:
- Offers long-term and wide-ranging protection for an invention.
- Requires significant detail, has many rules, and requires time to file.
- Has enforceable claims that protect your intellectual property.
- Gives you exclusive rights to profit from your invention.
- Allows you to file a lawsuit against any infringer.
Reasons to Consider Getting a Non-Provisional Patent
- You filed a provisional patent application. When your provisional patent application expires, you have to take action. If you allow it to lapse, you could lose your ability to file a non-provisional patent.
- A non-provisional patent creates licensing opportunities. You don't have to make your invention yourself. Instead, you can license your patent rights to manufacturers you trust. This licensing allows you to use your rights while making money.
- A non-provisional patent notifies the public of your invention or design. The USPTO publishes all new and pending patents in its Official Gazette. This publication notifies the public of innovations and allows people to oppose your patent if it infringes upon their patents.
Reasons to Consider Not Getting a Non-Provisional Patent
- The invention doesn't belong to you. If you didn't invent the process or a product, you shouldn't apply for a patent.
- You can't justify the cost. The USPTO patent filing fees include the following:
|Fee Description||Standard Fee||Small Entity Fee||Micro-entity Fee|
|Utility Paper Filing Fee||$280||$140||$70|
|Non-Electronic Filing Fee||$400||$200||$200|
|Utility Electronic Filing Fee||$280||$70||$70|
|Utility Search Fee||$600||$300||$150|
|Utility Examination Fee||$720||$360||$180|
|Utility Issue Fee||$960||$480||$240|
|3 1/2-Year Maintenance Fee||$1,600||$800||$400|
|7 1/2-Year Maintenance Fee||$3,600||$1,800||$900|
|11 1/2-Year Maintenance Fee||$7,400||$3,700||$1,850|
- Not filing a provisional patent application first. Many inventors file a provisional application first. This filing holds their place in the USPTO's line and allows them to defer the higher cost of a non-provisional application. This filing also allows them to test the invention and find out if manufacturers want to make the product and enables inventors to show the invention to the public while still claiming rights. The application also helps them decide if the cost is worthwhile, and before the provisional application expires, they can file a non-provisional application with all the necessary details.
- Not filing an international patent application. If you want to protect your intellectual property rights around the world, you also need to file a patent application with individual nations or groups of countries. A non-provisional patent application gives you exclusive rights only in the United States.
If you filed a provisional patent application, you must file a non-provisional patent application within one year. If you didn't, no firm deadline for filing exists. However, you should always file your application as early as possible to protect your intellectual property.
Frequently Asked Questions
- What is a hybrid patent? A hybrid patent situation occurs when you file a provisional patent application, but you include new elements in your non-provisional application. Some elements will bear an invention date that aligns with the provisional application. Others will feature an invention date that aligns with the non-provisional application.
- How long does a non-provisional patent last? Utility and plant patents last for 20 years, and design patents last for 15 years.
- How long does it take to file a non-provisional patent application? Filing the application takes a few days. The USPTO usually issues patents within three years, but the process can take up to five years.
- Can I file a disclosure document instead of a provisional patent application? The USPTO ended its Disclosure Document Program on Feb. 1, 2007. This program kept invention disclosures on file for two years and helped inventors place an early claim on inventions. Now, those who want to file early must submit a provisional patent application.
- Should I hire a patent attorney? Most intellectual property experts recommend hiring an attorney to apply for a patent. Even though the provisional application is simpler, the application still requires an attorney's experience. Filing either patent application incorrectly can cost you more money. Making a mistake can also prevent you from claiming your rights.
- How much does it cost to hire a patent attorney? The cost usually depends on your case's complexity. Provisional patent applications may cost only $2,000. Simple non-provisional patent applications average $3,000 to $5,000. Complex non-provisional patent applications can cost more than $15,000 in attorney fees.
Steps to File a Non-Provisional Patent
- Do a patent search. Use Google Patents or Google Scholar to learn more about pre-existing patents like yours. You should also use the USPTO's patent databases. In addition, a lawyer can do a professional patent search.
- Decide whether to file a provisional patent application. If you opt to make this choice, make sure to do it before filing a non-provisional patent application.
- Create a non-provisional patent application. Gather your application materials and use the USPTO's online patent application system to file. Include the following important parts:
- Title of Invention: The title should be short and to the point.
- Invention Background: The background information should offer context for your invention. Include prior art or related inventions that preceded your invention.
- Specification: This specification should feature a written description of your invention. Make sure that this part has enough detail that a skilled person could build and use the invention after reading your description.
- Claims: Claims must be as specific as possible. You must state them in a certain way. Make sure you follow the USPTO's guidelines for language and phrasing.
- Drawings: Drawings should include as much detail as possible. Include several drawings showing the invention from different perspectives. Commission a professional artist if you can't make the drawings yourself.
- Communicate with the patent examiner. You will probably need to amend or change your application. Respond to the examiner as quickly as possible and note deadlines.
- Receive a notice of allowance. This notice of allowance indicates that the examiner accepted your non-provisional patent application.
- Pay the issue fee. The USPTO requires issue fee payment before issuing the patent.
- Receive your patent. You will receive the issued utility patent an average of three months after paying the issue fee.
If you need help filing a non-provisional patent application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Stripe, and Twilio.