What is a Non-Provisional Patent?

There is no such thing as a non-provisional patent, however, there is a non-provisional patent application. The first step in getting a Patent Examiner with the US Patent & Trademark Office to review your invention for patent protection is to file a non-provisional patent application which, if approved will give the invention valuable protections including enforceable claims for patent infringement.

Because of these valuable protections, the complex and lengthy application process is well worth the trouble. Be careful though that the rules for each part of the complicated application process are followed as breaking just one may result in the refusal to grant a patent. Your invention, with its specific design and function is protected only after a patent is issued. Once the application is reviewed and approved a U.S. Patent will be issued.

The non-provisional patent application must include:

  • Title of the invention
  • A background explanation
  • A summary and a detailed description of what the invention is and does.
  • At least one claim
  • Patent drawings
  • An oath or declaration by the applicant that he has complied with all rules and requirements

Fees of approximately $530 must be paid when submitting the application.

What is a Provisional Patent?

There is no provisional patent. There is a provisional patent application, but no patent will ever be issued based solely on that application. The provisional patent application is merely a bookmark to establish an early date for eventual protection by a patent issued after examination of a non-provisional patent application. Unlike the non-provisional patent application, there is no examination of the provisional patent application. The concept of a provisional patent application was born in 1995 to align US Patent Law and procedures with international treaties. Compared to the full patent application, the provisional application is more flexible, less formal, and much less expensive to file. It is designed to give inventors a low-cost method for establishing a start date and protect their inventions while researching, finishing up the details and shopping it to potential manufacturers. Inventors must convert their application within one-year to maintain protection for their invention. Conversion requires filing a nonprovisional patent application referencing the earlier filing. 

Because the provisional patent application is so flexible and less formal, inventors should include as many variations as thought possible so as to maintain protection upon filing the full application. Even a small addition or variation not contained in the provisional application could cause a loss of the earlier date for protection. 

The provisional patent application should include:

  • Title of the invention
  • A description of the invention
  • Drawings that illustrate the invention
  • Inventor’s name(s) and addresses
  • Identification of an attorney or agent assisting with the application
  • As applicable, identification of any government agencies who may claim an ownership interest in the invention

Having knowledge of the uses, requirements and costs of the different types of patent applications help investors decide which is best for them in protecting their invention.

Which Patent Application Should You File?

Although similar, provisional and non-provisional patent applications differ in very important ways. When used in conjunction with one another they are valuable tools for inventors to obtain the most protection possible for their invention.

A non-provisional patent application is not required for issuance of a patent, but it is beneficial to the inventor. During the final planning and testing stages it preserves protection for several variations of the invention until the final design is settled. The provisional patent application affords inventors a 12-month period to test, further develop, cultivate investors, and shop the invention around to potential manufacturers. This gives the inventor freedom to see how the invention may need to be tweaked to its final form based on review and feedback from others while still enjoying protection from theft of the invention. If the non-provisional patent application is not filed within 12 months, it can still be filed later, but the benefit of the earlier filing date is gone.

What if the Inventor Does Not Own the Invention?

It is not uncommon for the inventor to not own his invention. Many new discoveries and breakthroughs which lead to patentable inventions originate through a scientist’s employment with a large company. Most always, the employment agreement provides that any such discoveries and inventions made in the course of employment belong to the employer. 

Also, some inventors, rather than pursuing the hassle and expense of getting patent protection, sell or assign the rights to another.

In those cases, the owner rather than the inventor would file the patent applications.

How do I File a Provisional Application for Patent?

The provisional patent application is filed either in paper form or online with the U.S. Patent & Trademark Office.  Attention should be paid to include all items required and complying with all guidance set forth by the USPTO.

Subsequent provisional patent applications can be filed but the earlier filing date will be lost.

What if There are Multiple Inventors for an Item in the Patent Application?

Applications are per invention and not per inventor. The application should identify each inventor who will be equal owners of any patent issued.

How do I Turn my Provisional Application for Patent into a Non-Provisional Application?

To save time and money, an inventory may convert his provisional patent application into a non-provisional patent application. However, in that case, the filing date moves forward to the date of conversion and thus the earlier filing date is lost.

To preserve earlier protection, the better course would be to file a separate non-provisional patent application within 12 months of filing the provisional application and specifically referencing the earlier filing in the full patent application. Upon filing both a provision and non-provisional application, the USPTO will compare the two and if substantially similar descriptions are in both, then the earlier date of filing the provisional application will be used for issuance of the patent.

Description Guidelines for a Provisional Application for Patent

There are no strict guidelines for the form of the description of the invention but it should sufficiently describe how the invention is to be used and contain enough detail for the patent examiner to match it to your later filed non-provisional patent application. Otherwise you may lose the priority benefit of the earlier filing date.

Like descriptions, drawings illustrating your invention have no formal requirements.  However, the drawings should contain detailed illustrations sufficient for the patent examiner to compare and match to the non-provisional patent application to be filed in the future or else risk not having the earlier filing priority.

Under the U.S. “first-to-file” rule, the inventor wants to file the provisional patent application at the earliest time possible.  This is especially important if you plan on disclosing your invention. If an invention is disclosed publicly prior to submitting a provisional patent application and the application does not contain adequate descriptions or depictions of a feature evident from the disclosure, then the 12-month period to file the non-provisional application begins on the date of disclosure and not the date of filing the provisional application.

Advantage of Filing for Provisional Application for Patent Over Document Disclosure Program (DDP)

In 1969, the Document Disclosure Program (DDP) was initiated as a replacement for the sketchy procedure of mailing evidence of your invention to yourself. It was designed as a place to file your conception of a future invention and establishes a point in time which may be evidence in any future dispute over who truly invented a thing. However, additional evidence of completion of the invention and initiating use may be required.

The provisional patent application enjoys many advantages over the DDP:

  • Priority filing date in a later submitted non-provisional patent
  • Patent pending label
  •  Better protection in foreign countries
  • Avoidance of “absolute novelty” restrictions

What is a Patent's Filing Date?

If completed correctly, a patent’s filing date will relate back to the date of filing the provisional patent application and offers protection against adverse claims after that date.

When Should I File My Provisional Application for Patent?

As soon as your invention is at a stage of development at which you can sufficiently describe it and its intended uses, the provisional patent application should be filed.

Ideally the application should be made prior to disclosing the invention to the public. A provisional application may be filed afterward, but the 12-month period to file the full patent application will begin to run on the date of disclosure versus the date of filing the provisional application. Some types of public disclosures include showing the invention to investors, potential manufactures, or offering to sale the invention, or advertising the existence of the invention.

Provisional + Non-Provisional Within One Year Route

Typically, procedures to protect your invention start when a provisional patent application is filed that includes a detailed description of the invention and a fee of $125 to file the application. An oath, declaration, and claims do not have to be provided at this stage. The next step is to file a non-provisional patent application within one year of filing the provisional application. This non-provisional application should reference the earlier provisional application.

Provisional patent applications are not examined by the patent examiner at the USPTO. Therefore, it takes longer to ultimately receive a patent using the provisional plus non-provisional method, as only the non-provisional patent application is placed in a queue for review.

Reasons to Choose the Two-Step Provisional Route

If disclosure is needed prior to completion of the invention for purposes of deadlines or showing to customers or potential manufacturers for feedback, a two-step provisional route can be used to offer maximum protection.

If additional features are contemplated after disclosing the invention, you can file a provisional patent application before showing the invention and upon further development within the year, file an additional provisional application incorporating the changes. Then when the non-provisional patent application is filed within 12 months of the first provisional patent application, the patent filing date will relate back to the initial provisional application filing date and will include all changes made. 

Since new developments are made over time, filing multiple provisional patent applications provide protection at a lower cost than starting the process over each time. Further, the costs of the patent are spread out over the entire year and not required all at one time.

Advantages of Non-Provisional Patent Application

A patent issued as a result of the non-provisional patent application is effective for 20 years and prohibits anyone other than the inventor and those the inventor licenses from manufacturing, selling or making use of an invention. Beyond the value of this protection is the rights to license the use of your invention for a fee.

After expiration of the patent, anyone is free to manufacture and sell a previously protected product.

Disadvantages of Non-Provisional Patent Application

Non-provisional patent applications take a long time to complete with the time of application to the time of issuing the patent exceeding two years in most cases. The filing fee of $400 is more than five times the costs of a provisional patent application. In addition to the cost, the work involved in the non-provisional patent application is complex and strictly reviewed so that it is time-consuming and may require the assistance of a patent attorney or agent at even greater expense.

To ensure that you get the best help at the most advantageous cost to insure patent protection for your inventions, contact the lawyers at UpCounsel Marketplace. A wealth of experienced, brilliant attorneys is available to assist you with your needs.