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Should I File a Provisional or Nonprovisional Patent Application?
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
- 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.
- 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.
- 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.
- 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.
- 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
- 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.
- 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.
- 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.