Protecting the Invention
The provisional patent application explained
To understand the provisional patent application, you must first understand the difference between provisional and non-provisional patents. The non-provisional patent is what is traditionally thought of as the “full” patent. It can be of either a “utility” or a “design” variety, and it establishes the filing date and begins the USPTO’s patent review process.
On the other hand, the provisional patent application provides temporary protection in that it establishes the filing date but does not start the USPTO review. The provisional patent application is good for one year from the filing date. It is significantly cheaper than a non-provisional patent and provides the inventor with a 12–month period in which to market and/or develop their invention (while using the term “patent pending”) before they need to invest in a “full” non-provisional patent.
The provisional patent application does not require the patent claims, which are a key element of the non-provisional application. Additionally, a provisional application is not examined by the USPTO and does not convert to a regular patent. The inventor must submit the non-provisional application within one year of the provisional filing date. Otherwise, they are not able to use the original filing date of the provisional application.
A provisional patent application should include the following elements, which are significantly scaled back from the non-provisional application:
- Cover sheet – identifying the provisional application, the name of the inventor, and other bibliographic data
- Description of invention – invention claims are not required, just an adequate description of the invention
- Drawing – if necessary to understand the invention
- Filing Fee – at the time that I’m writing this guide, the fee is $100.
Is a provisional patent application for you?
In most cases, I recommend that you do file a provisional patent application prior to moving forward with the non-provisional application. A provisional patent application will provide you with some relatively quick and inexpensive protection for your idea. It can usually be filed with minimal effort and cost, while providing the inventor up to one year to work through the development and marketing of their invention.
The primary reason I recommend a provisional application is to allow you a lower cost opportunity to seek out prospective manufactures to license your invention for royalties prior to investing in a non-provisional patent, which can cost thousands of dollars. Also, it is sometimes possible to negotiate up-front money in a license agreement, which could cover the costs of filing the non-provisional patent application, or the company may agree to cover the patent expenses itself. Note: The provisional patent application is not valid with “design” materials. They can only be filed in relation to “utilitarian” inventions. More information about “design” versus “utility” patents can be obtained at www.uspto.gov.
Knowing whether to file your own patent application
This question of filing your own patent application is not a question of can you, but should you. I believe the answers will vary depending on the type of application you are filing.
* Provisional Patent Application – The provisional application process is not overly complicated, and I believe that many inventors can file a reasonably good application if they spend the time researching and understanding the application process and writing the application. Although, if you do not have the time, the cost to have someone else prepare it is usually under a thousand dollars. In this case, it may be worth your time to hire a third party.
* Non-provisional Application – Although there are many good books on the topic of filing your own utility patent application, the process is not easy. In my view, even with patent filing books as your guide, the process is difficult and requires a level of expertise that only comes with practice. Although you may be able to work through the components of the application, capturing the optimal language in the claims section is not trivial. This is one time that you should rely on the expertise of a registered patent attorney.
How long does the non-provisional patent application process take?
This is an important consideration for the inventor and plays into the ultimate cost of the patent. Once you submit your completed non-provisional patent application and filing fee to the USPTO, you are assigned a filing date. The waiting period can last 6 to 18 months, at which point a patent examiner will review your application. Although it is not impossible for your patent application to be accepted on the first submission, it is unlikely. This is where the patent costs start to add up, because every time the patent office rejects one or more of your claims, your patent attorney will need to modify and re-submit the application. This occurrence is referred to as an “office action,” which is the official communication from the patent office outlining the objections to your patent application.
It is important to understand that the initial attorney fees for preparing the application and USPTO filing fees are typically not the final costs involved when filing a non-provisional utility or design patent application. More than likely, you will incur additional preparation and filing fees, when responding to office actions.
How “Office Actions” impact you
What this means to you is that every time the patent office rejects your application, your patent attorney will need to re-work your claim, costing you more time and money for the patent. Keep in mind that this process of objection and re-submission could take 2 or 3 attempts before your patent application is issued, if at all. Typically, the entire process from initial patent application submission to issued patent can take anywhere from 1.5 to 3 years and could cost from $7,500 to $20,000, depending on the attorney and complexity of the invention.
The best timing to file a patent application
The question you must answer first is what type of patent application do you file, then there is the question of when do you file this application. As I discussed earlier in this guide, many inventors may be better off starting with a provisional patent application rather than a full non-provisional patent, which can be filed later in the process after enough interest and support in the invention warrants this filing procedure. (See “Filing a Provisional Patent Application”)
Unfortunately, many inventors file a non-provisional patent too early, only to find out later that they need to make modifications to the design (thus requiring addendums to the patent) or they determine through their marketing efforts that the invention is not worth pursuing. When in doubt about when to file, you should consult with a registered patent attorney.
In the United States, the patent law gives superior rights to inventors that are “first to invent,” which does not mean the first to file a patent. Other countries in the world use the “first to file” rule, where the first person to file a patent application is granted protection, regardless of whether or not they actually created the invention. With that said, when should you file a non-provisional patent application? You should start by documenting your idea as quickly as possible. Basic market research, a patent search, and development of a prototype, as well as a provisional patent application are all steps to consider before moving forward with a non-provisional patent. Also, remember that having a patent does not guarantee success and does not guarantee you will land a license agreement.