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Should I File a Provisional or Non-Provisional Patent?

By John DiGiacomo

Whether you should file a provisional patent application or a non-provisional patent application depends on a number of factors. One can think of a provisional patent application as both a “short-form” patent application and as a “placeholder” application. A provisional patent application is shorter and “less involved” than a full (non-provisional) patent application and is “good” for a year. At or before the one-year mark, a provisional application must be converted to a full patent application or it will be deemed expired/abandoned. Note that provisional patent applications are only available for utility and plant patents. Because of these features, a provisional application has various advantages and should be filed under several circumstances, including these:

  • When a patent application must be filed immediately — being a “short-form” application, a provisional patent application can be filed much more quickly than a full patent application
  • When current cash-flow is short or the costs of a full patent application are not yet justified — the Patent Office filing fees for a provisional application are a fraction of the fees for a full patent application; further, attorneys fees and other preparation expenses are less because a provisional patent application is shorter and less involved
  • If public disclosures are needed before a full patent application can be prepared — publicly disclosing the details of a new invention before filing a patent application generally prevents a patent from being issued; thus, filing a provisional patent application before disclosure preserves the inventor’s ability to eventually obtain a patent
  • When more time is desired for patent processing and examination — there are strategic business reasons that some inventors may have for wanting to expand the amount of time taken for the processing and examination of a patent application; filing a provisional patent application (and then converting it to a full patent application) will add a year to the processing and examination period

Let’s look at a hypothetical: Suppose you are a small-time inventor and you have invented a new medical device. You are seeking investors, you are still researching whether there is sufficient market demand for your new device and, at the moment, you do not have sufficient resources to file a full patent application. Furthermore, you have a competitor “hot on your tracks.” You are thinking of attending an upcoming trade show where you could show your new invention in the hopes of finding investors.

In this hypothetical, our inventor has several problems that are “solved” by filing a provisional patent application. Filing a provisional patent application quickly will make our hypothetical inventor the first-inventor-to-file (which is essential in the US patent system). In this way, our inventor will “defeat” the rival inventor for patent rights. Further, the provisional patent application will be affordable but also preserve our inventor’s ability to obtain the patent. Once filed, our inventor can make public disclosures without endangering the ability to obtain the patent if the costs are justified. Now, our inventor can disclose the invention to potential investors at the trade show and can determine if the market demand is sufficient to warrant the expense of filing a full patent application.

Contact Revision Legal For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

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