Provisional vs. Non-Provisional Patent Application: Which One to Pick?

A patent applicant has the option to file a provisional or a non-provisional patent application with the United States Patent and Trademark Office (USPTO). Choosing the right one at the right moment is a crucial decision an applicant needs to make as it can either help kickstart the application process or land in rejection.

If it is an early stage in the invention process, self-drafting a provisional patent application may be an option. This can help the applicant establish a filing date for their invention. However, a poorly drafted provisional application may defeat the intended purpose of claiming the filing date of the invention. In any case, an applicant who files a provisional application is also required to submit a non-provisional patent application with the applicable fee at a later stage. The USPTO offers a window of 12 months to complete this procedure.

Although filing a provisional application may sound like adding another step to an already lengthy process, it has its advantages, such as getting “pending” status for a patent and extending the patent protection period. In this article, we cover the concept of provisional vs. non provisional patent applications, the reasons to opt for a provisional patent application, and the USPTO guidelines for non-provisional applications.

Provisional Patent Application

A patent filing form that one can use before filing a complete utility application is a provisional patent application. It is a temporary placeholder application that offers inventors a “filing date” for their respective inventions within their jurisdictions. Further, the provisional patent applications are never examined by any patent office of any jurisdiction. It only serves the placeholder’s purpose and is followed by a utility application.

The early filing date from the provisional patent application becomes essential because many jurisdictions are first-to-file countries. For example, suppose an inventor filed a provisional patent on August 1, 2020. However, if another inventor filed a non-provisional application for the same invention on or before July 31, 2021 (before the expiry period of one year), then the non-provisional application corresponding to the provisional application of the first inventor can claim priority over the provisional and be treated as if it was filed on August 1, 2020.

Why Should One File a Provisional Patent Application?

There are many reasons for filing a provisional patent application. Some of them are explained below:

reasons-file-a-provisional-patent-application
Figure 1: Reasons to file a provisional patent application
  • Provides buffer time for investigating the value of the invention – Majority of the patent applications are never used or enforced. It is unfortunate as inventors bear a cost but never get anything out of this investment. Filing a provisional application provides time to evaluate the patent’s profitability, marketability, novelty, or value. One can compare it with the cost that will be put into getting the patent. If the price seems reasonable, one can proceed with completing the application.  
  • You get a Pending Patent status for your application – A provisional patent application permits the inventor to mention the term “Patent Pending” on products or services covered by the application. Many startups have used this to market a new product and raise investment in the perceived value of IP for their companies. Furthermore, it also gives the applicant a chance to kick-start the patent application process without paying the hefty patent application fee.
  • Term extension of the Patent by a year – Suppose a non-provisional application/complete application is filed before the end of the one-year deadline after filing the provisional application. As per the laws of many countries, the patent expires twenty years from the date of filing the first non-provisional patent application. This law gives an extra year of protection to the invention.

To further your understanding of provisional vs non provisional patent applications, we will now be focusing our discussion on the latter.

Non-Provisional Patent Application

Unlike provisional applications, which are not review by the examiner, non-provisional applications are regular patent applications and are reviewed by the examiner/patent office. An applicant must submit the non-provisional application within 12 months of filing the provisional one to secure the patent rights for the invention. Unlike a provisional patent application, a non-provisional patent application is lengthy and complicated to file and prosecute. It has many parts with numerous rules that the patent drafter must follow.

A non-provisional patent application must include a comprehensive patent specification wherein the applicant discloses all details of the invention clearly and comprehensively. Moreover, if the inventor is confident about the invention, he/she may file the non-provisional patent application directly, thereby avoiding all the costs related to a provisional patent application.

So, a non-provisional patent application is a “regular” utility patent application. It is the typical application one files to get the patent office to review the utility and grant a patent. At the same time, a provisional patent application does not get reviewed. It is a quick and inexpensive way for inventors to establish a US filing date for their invention, which one can claim in a later-filed non-provisional application.

The IP regulatory body in the US, the USPTO has established several guidelines for filing a complete patent application. These rules can help further your understanding of provisional vs. non provisional patent applications. Let us dive into these.

USPTO-Issued Guidelines on Non-Provisional Patent Application

  • An inventor should file a non-provisional patent application in the English language or accompany the original application with a translation, a statement confirming the translation’s accuracy, and payment of the fee outlined in 37 CFR § 1.17(i). In case an applicant files a patent application in a different language without translation, statement, or fee, the patent office issues a notice, informing the applicant of the time available to submit the missing detail(s).

One can create the specifications using a word processing program like Microsoft Word or Corel WordPerfect. The document consisting of the specifications can be converted into PDF format by the word processing program and included as an attachment during the application filing via USPTO’s EFS (Electronic Filing System)-Web, which accepts electronic documents in PDF format. Other application documents, such as a hand-signed declaration and drawings, can be scanned as a PDF for filing via EFS-Web.

  • Specifications for PDF format for filing via EFS-Web:
    • Top margin of minimum 2 cm (3/4 inch)
    • Bottom margin of minimum 2 cm (3/4 inch)
    • Right-side margin of minimum 2 cm (3/4 inch)
    • Left-side margin of minimum 2.5 cm (1 inch)

The pages of the application should be sequentially numbered (centrally above or below the text), starting with page one. Handwritten text scanned into PDF format is unacceptable.

  • A complete non-provisional patent application must contain the following components and in the order shown below:
    • Utility Patent Application Transmittal Form/Transmittal Letter
    • Appropriate Fees
    • Application Data Sheet (see 37 CFR § 1.76)
    • Specification (with at least one claim)
    • Drawings (if required)
    • Executed Oath or Declaration
    • Nucleotide and Amino Acid Sequence Listing (if required)
    • Large Tables or Computer Listings (if required)

Conclusion

Whether to start with a provisional patent application or file a non-provisional patent application directly is a crucial decision for the applicant to make. Self-drafting a provisional patent application is a convenient option at an early stage in the invention process to delay spending too much money on the patenting process. However, a poorly drafted provisional application might fail to establish the filing date of the invention.

In many cases, poorly drafted provisional patent applications have been used against the inventors to demonstrate that there was no invention, at least in the first place. It is recommended to consult a qualified IP services provider, such as Sagacious IP, before proceeding with patent preparation to protect your invention and gain a competitive edge.

– Yojit Bhugra (Engineering Drafting) and the Editorial Team

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