Filing for a Patent: Provisional and Non-Provisional Applications

If you develop a new product or service, securing a patent is the best way to protect it.

There are three types of patents. These include utility patents, design patents, and plant patents. Utility patents include functional inventions, such as a new manufacturing process. Design patents protect the way your product or service looks. Plant patents, as you can imagine, include new plant variations.

To secure any patent, file your application with the United States Patent and Trademark Office (USPTO). The patent application process is complex, so having a professional help with your U.S. patent application is a good idea.

Types of Patents

You can apply for three types of patents: utility, design, and plant. If you want to protect the function of your invention, you need a utility patent. A design patent protects the ornamental design (aesthetics) of a product. The least common type of patent is a plant patent. This type of patent protects new plants. Specifically, a plant patent covers those plants you can asexually reproduce.

The purpose of applying for a patent is to secure intellectual property protection. Once you have patent rights over a new product or service, other entities can't capitalize on your invention.

Types of U.S. Patent Applications

When you apply for your patent, you must decide which type to request: Non-provisional and provisional. Most people start with a provisional application. A provisional patent is good for one year. By securing this type of patent, you get a whole year to research your invention further, find investors, and test the final product.

If you don't file your application for a non-provisional patent application within one year, you must start the process all over again. It's worth exploring the different application types to determine which is best for your invention.

Provisional Patent Applications

The USPTO created the provisional application to provide a cheaper option for initial patent filings. The process for a provisional application doesn't require claims, oaths, or declarations. Once the patent examiner approves your provisional patent, you can state that there is a "patent pending" for your invention. It will be effective on the filing date.

Provisional patents are not available for design inventions. You can only secure a provisional patent for a utility or plant patent. When you submit your application, you must describe your invention and, in some cases, provide drawings. Your description must include specific claims about what the product does and why it is unique.

You have options if you're having a problem developing a description for your invention. For example, you can use a technical journal article as the basis for your description.

When you submit your PPA, you don't have to provide an abstract/summary, claim, Patent Application Declaration, or Information Disclosure Statement. But, you should include the names of each inventor contributing to the invention.

You must include the $130 filing fee and a cover sheet specifying that you are requesting a provisional patent. You'll have 12 months from the approval date to convert your provisional patent to a non-provisional one.

The subject matter of your non-provisional application will have a retroactive filing date. Once the USPTO approves your non-provisional patent, it will stamp it with the filing date of your provisional patent.

Non-Provisional Patent Application

The non-provisional application process is more expensive and complex than a provisional patent application. There are lengthy forms to fill out, and the fee is $800.

You must include the following with your non-provisional patent application:

• A written document with a description of the invention and its utility or purpose
• An oath or declaration of the authenticity of the invention
• A drawing of the object or process
• Filing, search, and examination fees

You must identify which status you are seeking for your invention: small entity status or micro entity status. Each status carries different fees. Fees change each October. The USPTO posts its fee schedule on its website.

If the U.S. Patent and Trademark Office approves your application for a non-provisional patent, it will notify you in writing. Your patent will be good for 20 years. Once the USPTO grants your patent, you'll have an enforceable claim against potential infringement.

Benefits of Filing a Provisional Patent Application

Provisional patents didn't exist until June 8, 1995. Before this, inventors had little to no protection from infringement until they completed the formal patent application process. A provisional patent application gives you one year of protection. If you don't secure your non-provisional patent application within 12 months, you'll lose protection from infringement.

Inventors who want to test the profitability of an invention will often secure a PPA first. This gives them time to use focus groups and explore the market. At the same time, it gives them 12 months of protection from patent infringement.

Some of the advantages of a provisional patent include the following:

• Inventors can use the language "Patent Pending" when discussing their product or service
• It gives the patent holder the chance to market their invention safely
• Maintains the confidentiality of the patent application
• It allows you to use alternate inventor names to protect their invention
• You can file multiple PPAs and consolidate them into a non-provisional application

When you apply for your non-provisional application within one year of the PPA, you must reference your PPA.

Why Would You Want to Follow With a Non-Provisional Patent Application?

The whole point of filing a PPA is to follow it up with a more permanent patent application. Of course, there are times when an inventor may choose not to secure a 20-year patent on their invention. For example, they may learn that manufacturing the product will be too expensive. Or they may not be able to find a partner or investor for their product or service.

Some of the advantages of applying for a non-provisional application before the 12-month deadline include:

• The USPTO will backdate the effective date of your patent when you file a follow-up non-provisional application
• You get another year of protection
• You have a fraction of protection from infringement while your non-provisional patent is pending

If an inventor fails to file a corresponding non-provisional application within 12 months of filing the PPA, they can't claim these benefits. They will have to start the process again with a new patent application.

Once you have a non-provisional patent, you must still pay maintenance fees. You only have to pay the issue fee when you apply for your patent.

Converting a PPA to a Non-provisional Patent Application

If you secure a provisional patent, you don't have to go through the non-provisional patent application process. You can apply to convert your PPA into a non-provisional application. You must do this within 12 months of your PPA filing date.

One thing to keep in mind is that conversion of your patent will reduce your patent protection by one year. If you file a non-provisional patent application, you will have one year of protection with your PPA and another 20 years from your non-provisional patent.

You must balance the benefits of conversion against this loss. If your product or service will change long before the 20 years are up, it may not be a big issue. But, if your patent is for a new plant or medication, you should carefully weigh the pros and cons of conversion.

Need Legal Advice? Contact a Patent Attorney

Protecting your intellectual property rights is essential as a small business owner, startup, or entrepreneur. While there are many legal tasks non-attorneys can do themselves, it's usually beneficial to at least meet with a patent attorney before filing your application.

Visit FindLaw's Intellectual Property section to learn more about other types of intellectual property.

More Findlaw Resources

• Patents
• What Is a Patent?
• Plant Patents: The Basics
• Frequently Asked Questions: Patents
• Utility Patents: The Basics
• Design Patents: The Basics
• Rules for Combination Invention Patents