Provisional patent application for 12 months or non-provisional patent application for 20 years? It depends on your objectives
With a provisional patent, you have the option to turn the provisional patent into a non-provisional patent within 12 months. The question is: Should you file a provisional patent first and then file the non-provisional patent later? Or, skip the provisional patent and go straight to the non-provisional patent?
First, let’s get some technicalities out of the way. For brevity, I sometimes refer to the provisional patent application as simply ‘provisional patent’ although technically it is not a patent yet. Second, when I mention non-provisional patent in this post, I am referring to the non-provisional utility patent. A design patent is technically also a non-provisional patent. However, for this post, we are comparing provisional utility patent vs non-provisional utility patent. If unclear, read more about the differences between utility patent vs design patent.
Next, let’s go over the main differences between provisional vs non-provisional. A provisional patent application is a 12 month temporary placeholder. You secure your date in line with the US Patent Office. Before the 12 months are up, you must decide to convert it into a non-provisional to keep the original date of when you filed the provisional patent application. This gives you 12 months time before deciding to file the non-provisional patent application. The non-provisional patent application is the full patent application that asks the US Patent Office to determine if you deserve 20 years of patent protection. Only after filing the non-provisional patent application and getting it approved by the US Patent Office, will you have full patent rights and protection. For more detail, please read more about provisional patent applications.
This leads us to two main paths:
1) First a provisional patent application. Then, within 12 months, convert it into a non-provisional patent application.
2) Or, skip the provisional patent application and go straight to filing the non-provisional patent application.
There are four factors to consider when deciding between filing a provisional utility patent application versus a non-provisional utility patent application.
The non-provisional patent application costs significantly more than the provisional patent application. If you are not financially ready to file the non-provisional application at this time, you could file a provisional application to temporarily get your foot in the door. Then use the 12 months provided to you of the provisional application to raise funds to file the non-provisional application. Keep in mind, however, money spent to file the provisional application does not credit towards the non-provisional application. So filing both a provisional then a non-provisional actually costs more money than just filing the non-provisional. However, if you are unable to afford a non-provisional at this time but still wish to temporarily protect the invention, file the provisional application first while you raise funds.
The non-provisional patent application takes significantly longer to prepare and file than a provisional patent application. Let’s say you have a trade show to go to next week where you want to show off your invention. That may not be enough time to properly prepare and file a non-provisional patent application. As such, you may decide to file a provisional patent application first to secure your filing date with the US Patent Office before you go to the trade show. Then, have a patent firm take the time to prepare the non-provisional. When the non-provisional application is prepared, it can inherit the date (we call claim the date) of the provisional patent application, so long as it is filed before the provisional patent application expires. Even though you may have the money now to file a non-provisional
3) Likelihood of Changes to Invention
Once a patent application is filed, it cannot be amended to include new changes. To include new changes, it must be included in a new patent application. If you file a non-provisional application and make changes to your invention, the changes would need to be filed in a second non-provisional application to cover the new improved version. This requires you to file two expensive non-provisional patent applications. Alternatively, if you file a provisional patent application then make changes to your invention, you could include those changes when you file the non-provisional patent application. As the provisional patent application is lower cost than the non-provisional application, there is some cost savings by filing provisional then non-provisional, if you need to make changes to your invention.
4) Confidence in Invention
Many inventors file a provisional patent application as a low cost filing to buy themselves 12 months to test the market. In the 12 months, you could raise funds, sell the product, put it on Kick Starter, solicit investors and partners, etc. During the 12 months, if things go well and let’s say you sell a lot of product, this would give you the confidence to commit to filing the more expensive non-provisional patent application. However, if in the 12 months the invention did not do well, you can always decide to abandon the invention and all you lost was the fees to file the provisional application. Some inventors, however, are committed to following through with the invention even before they file their patent application and have no need to file a provisional application. Big companies like Apple and Sony may decide not to file a provisional patent application because they are confident they will want to pursue the full non-provisional patent to try and earn 20 years of patent rights no matter what happens no matter what, they may launch the product. In this situation, they have no need to buy themselves 12 months of time provided by a provisional application to see how things go. They will go straight to the non-provisional application to pursue the 20 years of patent rights. If you are certain you want to try and obtain 20 years of patent protection and have the budget to do so, you may want to skip the provisional patent and go directly to the utility patent application.