What Is the Difference Between a Provisional and Non-provisional Application?
I sometimes get the question - what are the differences technically, legally and logistically between a provisional application and a non-provisional
application. How much time is spent on each?
Legally, a provisional application is like an option. Ideally, a provisional application would act as a priority filing that a follow-up
non-provisional application would claim priority to. A provisional application allows you up to one year to file a non-provisional application. A
provisional application will not be examined by the U.S. Patent Office.
So if you file a provisional application, you will need to file a non-provisional application within one year of the filing of the provisional
application. The whole year does not need to be used. It is better to file the non-provisional application earlier. This is especially true
if the content of the provisional application is not fully developed.
Another follow-up questions tends to be why would I even file a provisional application? One business reason would be to defer some of
the costs. Prior to the AIA, it was common practice to file a very basic disclosure document as a provisional application. After the
AIA, when the U.S. moved to a first to file system
it is questionable whether a provisional application that is
not fully developed will provide support (and therefore priority) for the claims of a non-provisional application.
So our balance between the two, in an effort to be a cost effective patent attorney, is to offer a provisional application that has developed drawings. We
prepare about half the claims we would end up filing in the non-provisional application. Then we would describe the key features of the invention. We do
this for roughly half the fee (and time spent) that we would charge for a non-provisional application. We normally apply all but $500 of the attorney
fee portion of the provisional application to the non-provisional application. Many clients find this arrangement beneficial.
The downside of filing a provisional first, then following up with the non-provisional is that nothing will happen at the Patent Office based on
the provisional filing. If you are interested in receiving a first office action quickly, which I discuss
the time that the case is pending as a
provisional would only delay further the first office action.
Another reason to file a provisional first would be if the final commercial product is not fully developed. This can happen if you have a
reasonable working model on paper, but make further modifications when making an actual physical embodiment. Also, in technology such as
an app on a smart phone, the final implementation may be in a near constant state of flux. In such a scenario, the additional details
would be included in the non-provisional filing.
In short, we can work either way. Just give one of our patent attorneys a call to discuss your patent situation.
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CA - 408-890-6549
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