Almost every day, clients come in and ask me about what the provisional patent application is, what the utility patent application is, and what is the difference between these two. In order to obtain a utility patent, clients must file a “utility” patent application. That filing should contain enough details to show people in the field what your clients’ invention is and how it works. If individuals or startups don’t have all of those details ready for filing or they are on a budget, they can file a “provisional patent” application instead, which doesn’t need to have all of the details required in a utility application. Filing a provisional patent application allows them to establish a filing date for less money, and often more quickly, than a utility application. However, a provisional application will not be examined or published by the USPTO, and, thus, cannot mature into a granted patent. If they filed a provisional patent application and want to obtain a granted patent application, they must file a related “utility” patent application within one year of the filing date of the provisional application. Further, if they wish to obtain patent protection in foreign countries, they must also file those applications within one year of your provisional filing date.
Provisional applications help your clients make the most of a limited budget early in the life of their company. The money saved on can be invested in exploring the invention’s commercial potential, continuing R&D, and/or finding investors. Meanwhile, you can use the phrase “Patent Pending” in connection with the invention to put the world on notice and deter copycats. Also, if your invention is one that is likely to be more profitable near the end of the patent’s life as opposed to early in its life (as is sometimes the case for medical devices and pharmaceuticals), a provisional application gives you the advantage of the early filing date without counting against the 20-year life of the patent.
Although a provisional application avoids many of the filing formalities required of a utility application, don’t cut corners on the material people put into the provisional application. The provisional application must enable others to make and use the invention, and people must disclose enough detail to show others what you invented. people will only get an early filing date for claims that are supported by the disclosure in the provisional application, so it is important to be as complete as possible and to consider what will ultimately be claimed in the utility application when drafting the provisional application. Your patent attorney or agent should work closely with you to help put high quality material into a provisional application so you get the most value out of your client’s early filing date.
Which one Should Your Client File?
Friends never let friends to file one provisional application. For example, you have a good idea of the range of possible hole and slit patterns that will work for your dog toy. If you include them all in the provisional application then you have a year to test as many as possible. You can start to make drawings for your non-provisional application based on the patterns that keep the dog occupied.
You can also use that time to find a business partner to produce your toy. You can show the toy around at the dog park and see if other dogs like the same patterns. You can email it to the business development office at pet toy manufacturers. You have a year to work on your patent, finding out:
Provisional and non-provisional patents are very different tools. When used together, they are a great way to make the most of your client invention and get the most valuable patent possible.
When you are ready to obtain a patent, or provisional patent, ABC Patent Service, LLC will help.