Maiorana Patent Law, PA

Registered Patent Attorneys

What Is the Difference Between a Provisional and Non-provisional Patent Application?

I sometimes get the question - what are the differences technically, legally and logistically between a provisional patent application and a non-provisional patent application. How much time is spent on each?

Legally, a provisional patent application is like an option. Ideally, a provisional patent application would act as a priority filing (discussed here) that a follow-up non-provisional patent application would claim priority to. A provisional patent application allows you up to one year to file a non-provisional patent application. A provisional patent application will not be examined by the U.S. Patent Office. No patent rights will be granted directly from a provisional patent application.

So if you file a provisional patent application, you will need to file a non-provisional patent application within one year of the filing of the provisional patent application. The whole year does not need to be used. It is better to file the non-provisional patent application earlier. This is especially true if the content of the provisional patent 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 (discussed here), 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. This doesn not save fees, but only deferes the balance of the fees. 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 here, and here, the time that the case is pending as a provisional application would only delay the mailing of a first office action.

Another reason to file a provisional application 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. MI - 586-498-0670 or CA - 408-890-6549.

  • Chris Maiorana
  • June 2017, revised September 2017
[1]  A provisional patent application, or a provisional filing are sometime shortened to be called a provisional or even a provisional patent. A non-provisional patent application, or a non-provisional filing are sometime shortened to be called a non-provisional.
Topics: provisional patent, patent application, flat rate patent application, cost effective patent attorney

If you would like us to analyze your particular situation, call us to set up an appointment to discuss starting an engagement. Please do not send confidential information prior to negotiating an engagement.