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Should I File a Provisional or Nonprovisional Patent Application?

by Clifford D. Hyra on May 31, 2011

Perhaps the question that I address most frequently with my clients is whether to file a provisional or nonprovisional  patent application. A nonprovisional application is an ordinary patent application. A provisional patent application is a special kind of application that is not examined or published, has minimal formal requirements, and expires 12 months after filing. Before the provisional patent application expires, a full nonprovisional patent application should be filed, claiming the "priority" (filing date) of the provisional patent application. If the provisional patent application adequately describes the invention claimed in the later nonprovisional application, the nonprovisional patent application will be entitled to the same filing date as the provisional application. Thus, the applicant does not need to worry about someone duplicating his invention in the interim. So if you have to file a nonprovisional patent application eventually anyway, what is the point of filing a provisional patent application? Click below to read on...

Advantages of Provisional Patent Applications

  1. Low Up-Front Cost - Because provisional patent applications have few formal requirements, less time needs to be spent perfecting the figures, drafting the claims section (which is not even required), etc. A provisional application also has lower government fees. Therefore, a provisional patent application is typically significantly less costly than a nonprovisional patent application.

  2. Buys You Time - A provisional patent application buys you an extra 12 months before having to spend the time and money to put together a full nonprovisional patent application. During that time you can look for partners, manufacturers or distributors, funding, etc. You can even do market research or bring your product to market to help determine whether your new product idea is commercially viable.

  3. Ease of Adding New Material - Whenever you file the nonprovisional application, you can include whatever new material you like without difficulty. If you want to get the earliest possible filing date for the new material, you can even file one or more additional provisional applications for the new material and then file a single nonprovisional patent application that combines all of your provisional patent applications. In contrast, to add new subject matter to a nonprovisional patent application, a continuation-in-part application must be filed, which adds cost and delays examination of the new material.

  4. Lack of Publication - A provisional patent application can be filed at low cost and then simply be allowed to expire if for whatever reason the idea turns out to be non-viable. The application is never published and so does not become public knowledge or bar you from applying for a patent in the future.

  5. Extends Patent Protection - Patent protection lasts 20 years from the time of filing. This time runs from the date of filing of the nonprovisional application, not the provisional application. So by filing a provisional application first, a year is added to the back end of your term of patent protection.

Disadvantages of Provisional Patent Applications

  1. Higher Total Cost - Since a nonprovisional patent application must be filed in any case, ultimately the total cost to obtain a patent will be higher if you start with a provisional patent application.

  2. Delays Examination - A provisional patent application is not examined, and your application does not even "get in line" for examination until your nonprovisional patent application is filed. Thus, if you wait the full year before filing the follow-up nonprovisional, examination will be delayed by one year. With delays of up to 4 years at the time of this post, the extra delay can be a major factor.

  3. Increased Risk for Small Entities - The lack of formal requirements encourages disreputable companies and patent attorneys and agents to take advantage of the lack of sophistication of many small entities. Beware low-priced providers like Legal Zoom who promise "provisional protection" for a few hundred dollars. If your provisional application does not provide proper legal support for the claims written into your later nonprovisional patent application, you will lose your original filing date, wasting your money and opening the door for challenges to the patentability of your application and to the validity of any granted patent.

Provisional Patent Application Recommendations

For most of my small entity clients, I recommend that they start with a provisional patent application. Usually they are still developing their invention or looking to stake out their rights inexpensively before doing a thorough investigation of the feasibility of their product in the market. A provisional application gives them the flexibility, low cost, and early filing date they are looking for. On the other hand, if an invention is fully fleshed out and ready to go, and the client knows it wants to go forward with the entire patent process, a full nonprovisional patent application is the way to go. Skipping the provisional application results in lower overall costs and in a granted patent as quickly as possible. The other thing I always recommend is that, if the client opts for a provisional patent application, the provisional application be as thorough as possible in order to avoid problems down the road. I recommend a full write-up including some broad claims and decent figures, even though the cost is higher than going through Legal Zoom or a similar outfit. Bringing a new product to market is an expensive process, and the largest expenses are not generally on the patent side. It's worth the expense to do a thorough job on the provisional application and ensure adequate support for your nonprovisional.

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jeff 07.22.11 at 8:23 pm

I think you have an error in your article—–I believe you meant to say ‘provisional’ in this sentence:
3. Ease of Adding New Material – Whenever you file the nonprovisional application, you can include whatever new material you like without difficulty.
It’s actually the ‘nonprovisional’ application that is difficult to add new material to…. right? GREAT article.

Clifford D. Hyra 07.22.11 at 8:27 pm

Jeff,

Thanks for your comment. What I meant is that it is easy to add new material to your provisional application at the time you file your nonprovisional application. You can take all the new developments and just include them in the nonprovisional application, no problem (although that new stuff does not get the filing date of the provisional application).

It is hard to add any new information after the nonprovisional application is filed. So, it is difficult to add new material to a nonprovisional application, but easy to add new material at the time of filing the nonprovisional patent application.

jeff 07.23.11 at 2:13 pm

Thanks for the clarification Clifford.
Questions: Why has Google been creating a ‘social network’ website….wouldn’t Facebook be a patent holder on such an idea? Why would I want to patent my web-technology idea if someone like Google could just come in and build a bigger-better one and force me out of business ?

Clifford D. Hyra 07.25.11 at 1:56 pm

Jeff,

I am sure Facebook does not have a patent on social networks per se, as there were social networks before Facebook and there are also a very large number of social networking websites operating now. I do not know what Facebook’s patent strategy is. Maybe they have some patents on particular features that Google must design around.

Addy kulak 08.05.11 at 4:41 pm

What would be an average/fair charge for a non-provisional patent if a thorough provisional was already filed and how much time does a non-provisional take to file (when should you begin to file to beat the 12 month dead line). Thank you. Addy

Clifford D. Hyra 08.05.11 at 7:25 pm

Addy,

That is a very difficult question to answer. It really depends on how complex the technology is and how thorough the provisional application really is. I know that I personally generally have flat fees for patent applications, but when someone comes to me with a significant amount of work already done I charge an hourly rate up to that normal fee. This is because I just do not know how long it is going to take me to complete and/or reformulate the work.

The amount of time required similarly varies based on the technology. I would say one month is the minimum to ensure plenty of time for a thorough application and full vetting, although I have on occasion prepared an application within a few days of the deadline. Two months would be ideal.

jeff 08.18.11 at 8:53 pm

So, regarding my FaceBook question….. For example, being that a website like RateMyProfessors.com exists, and people on all the university blogs, forums, and boards have been discussing whether or not a ‘RateMyStudents.com’ should exist to allow teachers to rate their students, this would render the idea of such a student rating site as ‘obvious’. Thus it would not meet the ‘non-obvious’ criteria because such a site actually exists in nearly identical form—-and its opposite is ‘obvious’ from all the discussion. Would this be a good assessment? I guess I’m just trying to determine how this ‘non-obvious’ criteria is assessed….. thanks.

Clifford D. Hyra 08.18.11 at 9:34 pm

Obviousness is probably the most difficult concept in patent law. You are not going to be able to determine how it is assessed from comments on a blog post. That said, the Examiner cannot just waive his hands and say that it would be obvious to make some modification to an existing product. They have to show that the modification was already made to a similar product, or otherwise provide a reasoned explanation of why the modification would be obvious. In the case you present, the fact that others are suggesting a “ratemystudents.com” website supports the obviousness of modifying the subject of the ratings, as would the presence of numerous other ratings websites.

Jeff 10.11.11 at 5:28 pm

Clifford:
Someone makes a 3D model of a football stadium and posts it on the internet. I download it and use the software it was created in to virtually position myself in different unique orientations/vistas within the stadium, and I take ‘photos’ of these unique orientations/vistas (e.g. screenshots). Are these photos my intellectual property? I virtually visited the stadium—-If I physically visited the stadium, these photos would be my property under copyright. What does the law say about visiting a ‘virtual stadium’ and doing the same?

Clifford D. Hyra 10.25.11 at 3:25 am

Jeff,

I do not know. That is a question that would take some research for me to offer an opinion. In real life, the world was not created by some other guy from scratch- maybe you would own the copyright to your screenshots, but they would be derivative works of the person who developed the software and hence would infringe the developer’s copyright. Consult an attorney.

Phie 01.28.12 at 6:02 pm

Do I need to search if my idea is already patented or patent pending by someone else before I decide to file a provisional patent application?

Clifford D. Hyra 01.30.12 at 6:09 am

Phie,

There is no requirement that you conduct a search. It may make sense to perform a search in order to a) save you the time and money of an application if it seems unlikely that you can get a patent and b) better understand the prior art so that you can clearly distinguish your invention from things that others have already done.

Thinh Le 02.11.12 at 12:57 am

Clifford,
If I am pretty sure that my invention is good and I am confident that I can find a company to support and to build the product, should I file provisional or non-provisional? The only thing that worry me is my document/design/drawing may be about 90% completed, it may get request from USPTO for more detail later.

Clifford D. Hyra 02.12.12 at 3:33 am

Thinh,

Once a non-provisional application is filed, it is not possible to add any additional details outside the scope of the original document. To add further material, it would be necessary to file a continuation-in-part or new patent application at significant expense and with a loss of the original filing date for the additional material.

When a design is not complete, I recommend the applicant start with a provisional application. It is very easy to add material in a subsequent provisional or nonprovisional application.

Bob 02.13.12 at 5:52 pm

I have an idea that is small with three parts to it…
These are parts that are already manufactured for other uses and easy to manufacture…when I combine these parts for my invention do I need to Name these parts specifically, and who manufactures these parts…and by part numbers…also these are made by a lot of manufacturers…
Or do I need to manufacture these parts…?

Clifford D. Hyra 02.19.12 at 2:46 am

Bob,

I am not sure I follow your question exactly. If you are writing a patent application, I very strongly suggest that you enlist the services of a registered U.S. patent attorney. A patent application needs to be written with enough detail that a person skilled in the field could make and use the described invention. You are also technically required to include the details of the “Best Mode” of the invention- the intended commercial version of the product, basically, if there is one. But a patent application is a very complex undertaking and the explanation I have given is simplified. Please consult an attorney.

Olivia 02.22.12 at 6:12 pm

Hello, I have a question that has been not clearly explained and have found conflicting data. If you file a provisional application to give you time to get funds together and etc……..then someone else files a non provisional on the same product, who owns the rights to that product? Even if your application has an earlier date, since the other party filed the non provisional, on the same product, who’s product is it?

Clifford D. Hyra 02.22.12 at 8:57 pm

Olivia,

Most of the time, the patent is awarded to the person with the earliest filing date. If you file a provisional patent application and then later a nonprovisional patent application, the claims of your nonprovisional patent application will be entitled to the filing date of your provisional application, provided that they are adequately supported by that original provisional patent application. That is why it is so important to have a thorough provisional patent application prepared by a patent attorney.

So for an example, lets say you filed a provisional patent application today, February 22, 2012. Tomorrow, February 23, 2012, someone else files essentially the same application (but independently developed). On February 22, 2013 you file your nonprovisional patent application, and to make things easy, it is exactly the same as your provisional application so there is no question as to adequate support. Your nonprovisional patent application is entitled to your original February 22, 2012 filing date, so you have an earlier filing date and would get the patent. Of course, if you allowed your provisional application to expire, the other person would get the patent (this is ignoring complicating issues like prior art, which could mean that neither of you could get the patent).

Now technically, the U.S. is still a first-to-invent country for the time being. So, even if someone has a later filing date than you, they could provoke an “interference” to show that they actually conceived of the idea before you and diligently worked to reduce it to practice without abandonment. However, that is difficult and expensive, and rarely done.

Olivia 02.22.12 at 9:12 pm

Thank you for the detailed explanation. Very much appreciate it.

lynn 05.05.12 at 12:27 am

Hi, I have an invention and I also had a manufactur make my prototype. Ive checked everywhere and There is something very very similar out there already. Any advice? I am doing my provisional App now.

Clifford D. Hyra 05.06.12 at 4:38 am

Lynn,

I think you need to consult with a patent attorney to determine whether your invention is patentable. You also should use an attorney to prepare and submit your provisional patent application, if it makes sense to submit one. A provisional patent application is not a throw-away document that a person can do themselves- it is very likely if it is not done properly that you will not get to keep the filing date, which defeats the purpose. If your invention is patentable and the scope of protection you can expect would be worthwhile, the application should be tailored to clearly distinguish your invention from this similar item that you found (depending on whose idea came first).

David H 05.29.12 at 6:02 pm

Hello Mr. Clifford D. Hyra,

How are you ? I have 3 questions for you.

Question 1 :
I am looking forward to patent a few “stuffs”. The issue is that I am still programming the “stuffs” and it will take at least 6 months to be fully completed. I have gone through the pros and cons of both provisional and non-provisional patent applications. I am pretty sure non-provisional will be a better choice for me. Will it be possible for me to apply for non-provisional patent while the “stuffs” are still under construction (still programming) ?

Question 2 :
And which is normally better :
1. Filing a single patent application with multiple claims (for example – social network with messenger, photo albums, games, messaging service, news feed, e-cards etc)
2. Filing a patent for each claims (1. Patent Application 1 – Social network with messenger, 2. Patent Application 2 – Social network with photo albums, 3. Patent Application 3 – Social network with games, etc)

Question 3 :
Is it advisable to get the patents globally certified with WIPO or PCT (I am sorry, not sure of the exact term or the agency involved) ? I mean, Twitter was banned in China and later on China had their own version called Weibao. So, is it really necessary to get a patent to be globally protected. If, yes which one ?

Can you please advice me on these 3 questions ? Hope to hear from you soon.

Thank you in advance and have a nice day.

Clifford D. Hyra 05.29.12 at 6:35 pm

It is not necessary to have a working prototype to file a nonprovisional patent application. As long as you can describe how the product would function in sufficient detail for a person skilled in the field to make and use it, it should be okay.

Every patent application (other than design patent applications) should have multiple claims. However, if you are claiming essentially separate inventions, the Examiner is going to require that you divide those out into separate applications anyway. Ultimately the fees will generally be less if you file them separately from the beginning, although dividing out applications has some advantages such as delayed examination (which can also be a disadvantage depending on the situation). The decision of how many applications to file really depends on the circumstances.

There is no global patent certification. You can file an international patent application using the PCT, but you have to enter that application individually in each country you want protection in. Foreign patent protection can be quite costly. It is a cost-benefit question, again requiring a personal consultation.

David H 06.04.12 at 6:21 pm

Hi Mr. Clifford D. Hyra,

Thank you very much for replying. That was a very good and detailed explanation. I appreciate it a lot. May God Bless You.

Thank you once again.

Marcos Lopez 07.16.12 at 4:32 am

Hi Clifford,

Would the original filing date be lost if material was added to a provisional patent? At this moment, I lack the funds for my invention.I would like to secure a filing date as soon as possible. With the provisional patent, I would like to seek for investors who can help me with a non provisional patent. My invention is marketable, in the android platform alone there are 22 million users who can use my product.

Clifford D. Hyra 07.24.12 at 6:54 pm

Marcos,

New subject matter included in the nonprovisional patent application does not receive the filing date of the provisional application. The effective filing date is determined on a claim-by-claim basis. Each claim is entitled to the filing date of the provisional application only if it is fully supported by the provisional.

Dave 08.22.12 at 2:23 pm

Ive got major trust issues! Ive completed a very through provisional patent, built a good prototype and now need to take the next step. My invention is very simple like a coathanger. In order to keep costs as low as possible should i a) test the market by showing my prototype to vendors or b) contact an attorney to get my non provisional first? I really don’t want to spend over $1000 at this point until I know it’s going to be worth it but I also don’t want my idea to get stolen. What should I do?

Clifford D. Hyra 08.27.12 at 4:42 pm

Dave,

If you truly have a thorough provisional application, it usually makes sense to do as much as possible during those 12 months the provisional application lasts. That way you can figure out whether you want to proceed at all, and if so maybe you will have a better idea of the commercial implementation you will especially want to protect. Who wrote the provisional application? This is a question you should ask your patent attorney.

Alan Rudy 09.12.12 at 8:12 am

Hi Clifford,

Great article and very impressed by your credentials and the responses to the questions posed in these comments. Do you have experience with business process patents? I have an idea that is a way to do business online that I was unable to find any evidence of being done before. I’m fairly serious about obtaining a patent to protect me if I implement my idea and bigger/other companies end up copying it and are in a better position to execute it. Most of the exact business process has been done in person and sometimes done online for major companies, but the business process hasn’t been done with the likely ease and convenience of doing it for everyday consumers online. Is that patenable?

I’ve been doing some reading of the patent process online and it almost seems it is purposely made a big gray area. I’ve read that you can because a business process is able to be patened and I also read that you can’t because you can’t patent an idea and something online isn’t really a specific machine.

A common example I saw brought up is Amazon’s one click patent. I’m not 100% sure, but I believe Amazon’s one click patent case was dismissed by the supreme court and they are no longer suing people over it. I wouldn’t really call my idea a “machine invention”, more of a way of doing business with an online process/software that is clearly currently not exactly being done (online or really otherwise). What are your thoughts on being able to get a patent based on the information I gave?

Also, I’d like to discuss a concern of mine, I understand any attorney would be bound by confidentiality to their clients, but theoretically if it is a good idea, how could someone really hold an attorney accountable to that confidentiality if they told another attorney and then they told a big client about the idea. The client can just say they came up with it on their own and it seems it would be really hard to protect the idea.

Clifford D. Hyra 09.12.12 at 3:41 pm

Alan,

I do a lot of business process/ecommerce patents. Generally, such inventions are patentable if they are tied to a particular machine, such as a specially programmed computer/server. You mention a similar process has been carried out in other contexts, so it would have to be non-obvious to change it to this other context. As a whole, it would have to be novel and non-obvious in light of what other people have done.

Amazon’s 1-click patent is alive and well, having survived re-exam in modified form, and is licensed to Apple.

The problem you mention with confidentiality is true of NDAs as well- what is to stop the person signing the NDA from telling someone else, who claims to have thought of it on their own? At some point you just have to rely on a person’s professionalism. I can’t imagine a patent attorney telling confidential client information to others, and in any event there is really no way around that issue.

Patrick PK 09.23.12 at 1:54 am

Clifford,
What are reasonable range of fees for Patent Attorneys. I’m a small entity, meaning 1 person who just wants to ensure that by submitting a provisional application all bases are covered without breaking the bank…
thanks,

Clifford D. Hyra 10.03.12 at 5:12 pm

Patrick,

That is really tough to say. Typical patent attorney’s fees might range from $250/hr to $500/hr, with a few above or below that range. Many offer fixed fees. Provisional applications are difficult to shop around because it is essential to get an idea of what each attorney is promising to actually do. Provisional applications are not examined, so you won’t know if the attorney did a thorough job or not for a long time. You might expect around $1,500 for a thorough provisional application with a few claims.

Ward 11.28.12 at 3:14 am

Hello,

If their are several different “items” that are used exactly the same but have different connecting points and I make 1 universal “item” to connect to all points, how patentable do you think it would be? In other words my universal “item” would connect to all. Their would be no need to make “the several items” any longer, would only need to make my universal item. Also, none of the “several items” do not hold patents currently.

Clifford D. Hyra 12.03.12 at 8:18 pm

Ward,

That is really impossible for me to say based on the description provided. The details will be important to answering that question. I think you need to get a formal patentability opinion.

richard 03.12.13 at 4:13 pm

I filed a provisional patent last year and it’s about to be up soon. im working on a prototype for my invention and it’s going to take at least 4 weeks getting closer to that date of expiration. by reading your article are you saying I can extend my provisional patent for another year instead of filing for a non provisional patent? I have been invited to attent the Inpex in June so my provisional patent expires on 5/3/13. any suggestion please? should I do a DIY non provisional patent, or extent the provisional one?

Lynn 03.22.13 at 4:14 pm

HI, I have an invention that is ready to go.. I also wrote our application.. But I need someone like you to go over and make some changes and per say add more stuff if I missed some.. Can you send me an email to discus.. I dont have a lot of money to pay for the application so I did the leg work on writting our application hopping that would lower the cost.. Please email me.. Thank you

Clifford D. Hyra 04.05.13 at 9:29 pm

Richard,

You really cannot extend your provisional application. The USPTO has this pilot program where you can apply for a nonprovisional application but do not pay all the fees for another year, etc., but it is a bad idea. Your non-provisional application needs to be filed at the end of that year regardless, and it should be complete when you file it.

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