When applying for a patent, there are many considerations that you need to think about. For instance, the choice of filing a provisional or a non-provisional patent application is one that is problematic for many.
In general, a non-provisional application results in a full & true patent that protects the intellectual property disclosed within. In comparison, the provisional application results in a temporary 1-year patent placeholder. It essentially secures your place in line while providing you with more time to complete and revise your invention for its next non-provisional patent.
In this article, we will cover both applications in-depth and take a look at the potential risks of a provisional patent.
What is a Patent?
This might seem like an odd topic to discuss, but it’s worth quickly mentioning as a refresher. Not everybody knows what a patent is, and after all, knowing is the first step in doing.
A patent grants an inventor a right of property over an invention. This grant provides exclusive rights to the inventor for the entire patented intellectual property, for a period of time. These patent rights allow the inventor to take legal action against anyone who makes, uses, or sells their intellectual property.
This protection is granted in exchange for extensive disclosure of the invention, including the structure, part-by-part assembly, aesthetic, and functionality of the invention.
The approval and handling of patents is usually performed by government agencies. For instance, the U.S Patent & Trademark Office handles the review, correspondence, and application approval of patents. While the Patent Trial and Appeal Board handles many appeals and other trials.
What is a Provisional Patent?
While there are many different types of patent applications in the United States of America, a provisional patent application is the most introductory. This patent application serves as an opportunity to lock in a filing date for your invention, but it only lasts a single year. The provisional patent is only supposed to be a bridge between the conception of your invention and filing a non-provisional patent application. This can be beneficial for some inventors who decide they would like to take more time to research and/or inspect their invention before applying for the non-provisional patent.
Fortunately, a provisional patent costs a lot less than any other patent application, which is important for anybody trying to bootstrap their career. Additionally, the framework of the provisional patent is very loose. This means it does not involve as many formalities as its counterpart, making it much easier for anyone to prepare and file.
As long as you disclose every aspect of your invention in your provisional patent, you will be able to bring those concepts over to your non-provisional patent application. At the very least, it is always best to provide a broad overall representation of your invention in a provisional patent application.
From the date of filing, the provisional patent is active for an entire year. During which you can choose to convert this patent to a non-provisional application. The conversion process involves filing the non-provisional patent application and referencing the provisional patent in the related applications section. At this point, everything disclosed in the provisional patent application will be incorporated into the non-provisional application. Thus, a quality provisional patent is, by definition, the placeholder for future success.
Be mindful of any changes you make to your invention after filing your provisional patent application. If you develop a new design or function that was not part of your provisional patent, you might want to include it in your non-provisional application. However, if you do this, you can lose some of the power and true benefit of the provisional application.
You must remember that the provisional patent only accommodates the details of your invention that you have defined in your provisional application. If any new material is added into the non-provisional application, it will not receive the benefit of the provisional application filing date. Instead, in most cases, it will be subject to the non-provisional application filing date.
This results in a hybrid patent. This means in the eyes of the USPTO, some parts of your invention have been invented the day of the provisional patent, whereas others, the day of the non-provisional patent. Thus, your provisional patent should include as many different broad designs of your invention as possible. This ensures that you will have enough room to write a quality non-provisional patent.
What is a Non-Provisional Patent?
While the application for a provisional patent is quick, informal, and direct, the non-provisional application process is structured, detailed, and lengthy.
The application itself is typically very long because there are many rules to follow and critical parts that need to be included. Therefore, it’s important to make sure that your application meets all of the USPTO’s requirements before filing. If you fail to meet the USPTO’s requirements, it can extend the patenting process and result in additional fees.
However, do not be discouraged by the complexity. The non-provisional application is well worth the hassle. Unlike the provisional patent, the non-provisional patent is strong enough to defend your intellectual property from infringers.
For instance, your invention will only be protected once your non-provisional patent has been issued by the U.S Patent & Trademark Office. So, let’s say your invention is a cheese grater that includes a specific pattern of holes, slits, or protrusions. After your patent is issued, anyone who makes the same invention or a similar invention with similar characteristics would be infringing upon your patent. Once someone infringes upon your patent, you can take legal action against them, including cease and desists and lawsuits.
The Risks Associated with Filing a Provisional Application
When preparing and filing your provisional application, there are several risks to consider. Especially when you choose to do so on your own. One of the most critical risks revolves around the amount of detail provided in the provisional application disclosure. If you plan to file a non-provisional patent application, the provisional disclosure (with drawings and description) must support the subject matter you will discuss in your non-provisional application.
You can only enjoy the early provisional priority date if your non-provisional application’s claims are adequately disclosed in your provisional application. If you add new content or subject matter to your non-provisional application that is unsupported, then that new material does not get the earlier provisional filing date. Instead, it receives the later non-provisional filing date. This is important because you only have a case for infringement on inventions made public after your priority date.
Additionally, when you file a provisional patent application, you must be prepared to file a non-provisional patent application within one year. If you fail to file a non-provisional application within the year, you will lose your priority date. At that point, you will have to file a new provisional application and start the process all over again. Since priority dates are immensely important in the patent world, it is crucial that you not let your provisional patent expire.
If you’re serious about your patent, make sure to expand and elaborate in your applications. Include as much information as you can in your disclosures, descriptions, and drawings. Provide as many different solutions to the problem that your invention can accomplish.
Patent Information for You
Now that you know the differences between the provisional and non-provisional patent, you are well on your way to making sure that your invention does not go to waste. As long as you are serious about your intellectual property and research as much as possible about the patenting process, there is nothing to worry about.
If you’re interested in filling in the blanks in your patent application knowledge, check out our free resources page or learning center. If you have any additional questions after that, please review our FAQs page.