What is a Non-Provisional Patent Application?

Before filing a non-provisional patent application, you should first file a provisional patent application. Unlike a non-provisional patent, a provisional patent is the first step an inventor takes before he decides to apply for a non-provisional patent.

A provisional patent application establishes a “priority filing date” for one year and is an inexpensive way to start protecting the invention. It allows the inventor to do more research or finish the invention before applying for the non-provisional patent. After establishing a priority filing date, the applicant has one year to convert the provisional patent application to a non-provisional application.

Inventors who file a provisional patent have more flexibility to protect their invention. The application is informal and much cheaper to file than a non-provisional patent application. An applicant seeking to file a provisional patent will never actually be given a patent for the invention because a Patent Examiner will never examine it.

If an inventor wishes to file a provisional patent, he must provide to the United States Patent and Trademark Office the following:

  • A description of the invention in writing
  • Any drawings of the invention, if necessary
  • The names of all inventors
  • The filing fee
  • A cover sheet or an online filing that identifies the provisional patent application, the names of the inventors, their addresses, the invention’s title, the correspondence address, any applicable attorney, agent or docket number
  • Any federal agencies with an applicable property interest in the application.

The provisional patent application only applies to the invention as described in that application. If part of the non-provisional application includes a design that was not included in the provisional patent application, the inventor might lose the benefit of that provisional application. If an applicant applies for a conversion, he is actually filing a non-provisional patent application that makes reference to the provisional application.

How Do I File One?

A non-provisional patent is different than a provisional patent in that it is formally placed in a queue to then be inspected by a Patent Examiner. If the Patent Examiner determines that the application meets all of the legal requirements, the Examiner will issue a U.S. patent to the applicant.

Applying for a non-provisional patent can be multifaceted and contains many parts that an applicant must follow or else risk a penalty. If a non-provisional application is properly filed and accepted, it is worth the effort and provides the applicant with an enforceable claim against similar inventions.

To meet the legal requirements of a patent, the non-provisional patent application must contain a:

  • Title
  • Invention background
  • Invention summary
  • Details describing how the invention works
  • One or more claims or drawings.

In addition to these requirements, the applicant must pay around $530 and make an oath or declaration that he complied with all of the applicable rules.

Once an applicant receives a patent from the United States Patent and Trademark Office (USPTO), his invention will be protected. If anyone applies with a similar invention, the original patent holder may have a claim for patent infringement.

Should You File a Provisional Application or Non-Provisional Application?

It is best to file both applications. The benefit of filing a provisional patent application before filing a non-provisional application is that the inventor can file a wide array of possible ideas and include all of them in the provisional application being developed throughout the one year. During this year, the inventor can develop the invention, find a production partner, gather feedback and test the invention to see if it’s worth the cost of applying for a non-provisional application.

Anyone wishing to protect their invention have two very different tools at their disposal. When used together, an inventor is able to get the most valuable patent possible.

What Happens When the Inventor No Longer Owns the Invention?

If the inventor does not file a non-provisional patent application one year after filing a provisional application, the provisional application is declared abandoned and the filing date is lost. It is often the case that the owner of the invention is another person other than the inventor, if the inventor sold or transferred the invention, or even a business entity if the invention was created as part of one’s employment. If the inventor has assigned, or agreed to assign, the invention to a third person or business, that person or business is allowed to apply for the patent as if it were the legal owner.

If you need help with non-provisional patent applications, you can post your legal need on UpCounsel’s marketplace.