Maiorana, P.C.

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.