Provisional Patent vs Utility Patent
If you're like most of the visitors who visit Patent Rebel, you might be wondering: what is the difference between a provisional patent and a utility patent. The USPTO offers inventors the option of either filing a provisional patent application or a nonprovisional utility patent application. If you want to learn what the difference is between a utility patent and a provisional patent, read below to find out.
Provisional Patent vs Utility Patent
A provisional patent, correctly known as a provisional patent application, is a patent application that does not require many of the formalities that are required for a regular utility patent application, but it does not turn into a patent, whereas a non-provisional utility patent application turns into a patent grant.
Let's dive deeper into the differences between a provisional patent application and a utility patent application.
Provisional Patent (What does provisional patent mean?)
A provisional patent application is a toned-down version of a nonprovisional utility patent application. Provisional applications do not require much of the information required for a complete utility patent application.
For example, a provisional patent application does not require formal patent claims, if you've ever drafted a utility patent application, this is one of the longest and most time-consuming portions to create because it sets out the scope of an inventor's patent rights.
Also, provisional patent applications are much cheaper to file than utility patent applications because they require less to be performed by an attorney. As such, many inventors choose to file a provisional patent application to obtain an early filing date.
You might be wondering: why is obtaining an early filing date for an invention important?
Obtaining an early filing date for an invention is important because the United States has adopted a first to file rule, which grants a patent to the inventor who first files a patent application with the patent office.
The first to file rule encourages inventors who have inventions that they want to protect to head over to the patent office to file a patent application.
The importance can be illustrated with the following example.
Let's say that you invent something first and a subsequent inventor invents the same invention 2 years later but files a patent application before you do. The subsequent inventor will be awarded a patent application and you will not because he filed a patent application before you did.
The fact that you invented the invention first does not matter in this analysis. This is why inventors rush to the patent office to file an application to obtain an early filing date for it.
Many inventors choose to first a provisional patent application because it can be prepared fairly quickly when compared to preparing a complete nonprovisional utility patent application.
The only downside to filing a provisional patent application is that it does not turn into a patent because it's not examined by the USPTO.
As such, inventors file a provisional patent application for the early filing date and later file a nonprovisional patent application that benefits from the early filing date of the provisional patent application.
Utility Patent (What does utility patent mean?)
So, now we know that a provisional patent application is cheap, quick to prepare, and easy to file, so how does a nonprovisional utility patent application compare?
A nonprovisional utility patent application is a regular, formal patent application that must comply with the hundreds of requirements set forth by the USPTO.
Close attention to details and requirements must be paid to properly prepare, file, and prosecute a utility patent application.
Making even seemingly minor mistakes in a utility patent application could cost an inventor a ton of money and time to repair down the road.
As such, it is imperative that inventors hire an experienced patent attorney to assist them with preparing, filing, and prosecuting a utility patent application.
If you're an inventor with little to no experience prepare utility patent application, you should hire an experienced patent attorney to assist you with patenting your invention.
Patent Pending Status (What is it? & how do you get it?)
As soon as an inventor files either a provisional patent application or utility patent application, he will be able to advertise his invention. or product as patent pending. He may add the term "patent pending" to the product itself, product packaging, and any instruction manuals for the product.
This is a great advantage when it comes to advertising because consumers often associate patent-pending products with quality and ingenuity. So, if you've filed your patent application, you can immediately add this designation without doing anything else.
Turning a Provisional Patent Into a Utility Patent
By now, you should know that filing a provisional patent application does not result in a patent.
To obtain a utility patent and benefit from the early filing date of a provisional patent application, an inventor must file a nonprovisional patent application that claims the benefit of the earlier-filed provisional patent application.
Inventors have 12 months from filing a provisional patent application to file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application to benefit from its earlier filing date.
If an inventor does not file a utility patent application within the 12 month grace period, the early filing date is lost. If the early filing date is lost, the inventor will have to rely on the filing date of the filing of the nonprovisional patent application.
Also, if an inventor files a provisional patent application and then files a nonprovisional utility patent application that adds new matters to the invention and those matters were not described in the provisional application, they are considered to be new matter and the inventor will not be able to benefit from the earlier filing date as it pertains to them.
The resulting patent will be a hybrid patent with some portions of the invention having priority of the earlier filing date and new matter having the filing date of the nonprovisional utility patent application.
As such, although some inventors believe that they do not have to spend the time and money preparing a provisional application, they are mistaken. Poor choices they make when preparing a provisional application will come back to bite them when the time comes to filing a nonprovisional utility patent application.
Should you Get a Utility Patent or Provisional Patent?
Inventors often start off by filing a provisional patent application to quickly obtain an early filing date and then file a nonprovisional utility patent application within the 12 month grace period to continue patenting their invention.
A provisional patent application is great for someone who is still working on his invention, knows how to describe how it works, yet doesn't want to invest heavily in patenting it right away.
The provisional application gives an inventor an early filing date and some flexibility to continue working on an invention, perfecting further.
Also, having a patent-pending invention makes finding and convincing investors to invest in your invention or product easier because it proves to them that you've taken legal measures to protect your work.
Also, having a patent pending on an invention shows inventors that you have rights to your work and that there is something tangible that they can invest their money in.
So, if you have an invention and you still haven't filed a patent application, what are you waiting for? Hire an attorney and ask them to assist you with patenting your invention and obtaining patent pending status on your invention.
Benefits of a Provisional Patent
As mentioned earlier, the main benefit of filing a provisional patent application is that it gives inventors an early filing date for their invention. This is especially important in situations where many people are seeking to patent the same invention.
The first to file rule in the U.S awards a patent to the first inventor who files a patent application, as such, provisional patents are an important tool for inventors all around the world seeking to patent their inventions in the United States.
Patent Rebel Note: To benefit from a provisional patent, make sure that you take the time to accurately describe the invention you're seeking to patent. Leaving out critical information about the invention you're seeking to patent may cost you a patent. So, hire an attorney and have done correctly if you value your invention and believe it will become commercially successful.
The second benefit of obtaining a provisional patent (filing a provisional patent application) is that you'll be able to market and advertise your invention as patent-pending as soon as you file your provisional patent application with the USPTO.
Now, let's discuss the benefits of obtaining a utility patent.
Benefits of a Utility Patent
Utility patents have many benefits, so let's dive right into them!
The biggest benefit of obtaining a utility patent over an invention is that a patent holder is able to control who uses, makes, sells, and imports his patented invention to the United States.
By being to control who uses and sells his patented invention, an inventor may be able to become the only person selling the patented product, thereby cornering the market and creating an advantage for himself over his competitors.
Also, as a patent holder, an inventor enjoys the right to allow others to use his invention in exchange for a fee or agreed upon royalty. This is what is known as licensing. An inventor can license the use or creation of his patented invention to others in exchange for an agreed-upon fee.
Licensing agreements can prove to be very lucrative, especially if the invention you've patented is something that others need and there is no other invention that solves the same one your invention solves.
Having said that, patents are also great for inventors because if someone copies or sells the inventor's invention without his permission, he can bring a lawsuit against that party in Federal District Court for patent infringement.
If the inventor is successful in his lawsuit, he will obtain an injunction, ordering the infringer to stop his infringing use of the inventor's patented invention or product.
So, as you can see, it might be worth your time to patent your invention, especially if you know that your invention solves a problem that no other invention solves.
However, before proceeding with patenting your invention, you should consult with your own attorney to determine whether patenting your invention is worth your time and whether you should spend your time and money patenting it because the patenting process is costly and time-consuming.
Frequently Asked Questions at Patent Rebel (FAQs)
1) What is the difference between a provisional and a non provisional patent?
The main difference between the two is that a provisional patent is a placeholder in time that gives an inventor some time to file a utility patent. Whereas a non-provisional utility patent is a full-fledged complete patent application that turns into a patent. Whether you choose to file a provisional application or a non provisional patent application, you should consult with your attorney before doing so.
2) What are the three types of patents?
The three types of patents offered by the USPTO are utility patents, design patents, and plant patents. Utility patents are the most applied for patent and they protect how an invention works. Design patents, on the other hand, are the second most applied for patent and they protect the appearance of an invention or how it looks. Plant patents are the least applied for patent and make up less than 1% of all applied for patents and they protect new, asexually reproduced plant species.
3) Does a provisional patent affect the patent term?
Yes, a provisional patent affects the patent term. The patent term without filing a provisional patent lasts for 20 years from the date an applicant files his nonprovisional patent application. However, when an inventor files a provisional patent application and follows up by filing a nonprovisional patent application, the patent term begins at the time of filing the provisional application thereby extending the 20 year patent term to 21 years.
4) Can a patent last forever?
No, a patent can never last forever. Utility patents last for 20 years from the filing date of a nonprovisional patent application. Design patents last for 15 years from the date the patent office grants a design patent application. Once a patent expires, it cannot be renewed. However, you may be able to patent an improvement to your invention and that could extend the amount of time you're able to benefit from your original invention.
5) Can you patent an expired patent?
No, once a patent expires, it falls into the public domain and cannot be patented again. When a patent falls into the public, anyone is free to use, make, and sell the patented invention without having to obtain the express permission of the patent holder.
6) Does a patent pending protect you?
A patent pending does not protect inventors. An inventor does not have any rights to an invention while a patent application is pending. An inventor gains rights to an invention only after the USPTO grants his patent application. Before that happens an inventor does not have rights to his invention.
Utility Patent vs Provisional Patent
At this point, you should know the difference between a utility patent and a provisional patent. Utility patent applications are full-fledged patent applications that turn into granted patents. However, provisional patent applications never turn into a patent. Instead, to get a patent, an inventor must file a nonprovisional utility patent application that relates back to an earlier-filed provisional patent. If you have any general questions or comments, please feel free to leave them in the comments section below.
Getting a Patent on Your Own
If you have an invention that you want to patent but don't want to pay a huge amount of money to an attorney, you do have the option of patenting your invention on your own without the help of an attorney. The USPTO will even offer you help to patent your invention if you choose to do so on your own. We will now show you how you can get a utility or design patent on your own.
That said, although the patent office offers help to inventors, they do recommend that you hire an attorney to assist you with the preparation, filing, and prosecution of your patent application.
The USPTO recommends hiring an attorney because patent law is quite complex and making even small mistakes can cause trouble down the road. That said, we will provide as many details as possible to assist you with patenting your invention on your own.
That said, inventors do have the option of patenting their invention on their own without having to hire a lawyer.
Why Do Inventors Get Patents?
It's beneficial to patent an invention because obtaining a patent on an invention allows a patent holder to control who uses, makes, sells, offers to sell, and imports the patented invention to the United States.
Said differently, patents allow their holders to profit exclusively from their invention without having to worry about others making and selling the patented invention.
Having said that, let's dive into how you should approach patenting your invention without an attorney.
So, how exactly do you get a patent on your own? We will explain this in much detail below.
Getting a Patent on Your Own
Here are the steps that you need to take to get a patent on your own.
- Determine whether your invention qualifies for patent protection
- Determine what type of patent you need (Utility or Design)
- Keep your invention secret
- Perform a prior art search
- Prepare a patent application
- File the patent application with the USPTO
- Pay applicable patenting fees
- Track the status of your patent application
1) Determine whether your invention qualifies for patent protection
To get a patent on your own, you must have something that patent law protects. Patent law in the U.S protects new and unique inventions, processes, methods, and designs.
Utility patents protect the functional aspects of an invention or how an invention works and how it's used. Design patents, on the other hand, protect the ornamental aspects of an invention or the appearance of an invention.
Obtaining either a utility patent or design patent allows an inventor to legally stop others from using, making, and selling the patented invention in the United States for a limited period of time.
To obtain either a utility patent or a design patent, an inventor must have an invention that has:
- Patentable subject matter
- Novelty (New)
- Nonobvious
- Useful
Patentable Subject Matter
To obtain a patent, your invention must be the type of intellectual property that patent law protects. Patent law protects new and unique inventions, machines, processes, compositions of matters, articles of manufacture, and designs. We will discuss what utility patents and design patents protect below.
Novelty
The novelty requirement requires an invention to be new. That is, an inventor must have an invention that is different from anything else that has ever been patented before and the invention must not have been publicly disclosed nor offered it for sale more than 12 months prior to filing a patent application with the patent office.
Nonobviousness
To get a patent, an inventor must show that his invention is sufficiently different from anything that's out there so that an ordinary person skilled in the field of the invention would not believe the invention to be obvious at the time an inventor files his patent application.
If your invention is not sufficiently different, the patent office may reject your patent application for being obvious. Making small changes to existing inventions is unlikely to make your invention nonobvious.
Usefulness
The last requirement an inventor has to satisfy to get a patent is showing that the invention to be patented serves some useful purpose. Many inventors include a statement in their patent application that explicitly states the purpose of the invention. However, such a statement is not always required such as where the utility or usefulness of an invention is apparent.
Patent applications are rarely rejected on the grounds that the invention described therein is not useful.
An inventor needs to show that his invention provides the public with some identifiable benefit. For example, a new type of plastic beverage that composes more quickly, helping the environment, is enough utility to satisfy the usefulness requirement.
2) What Type of Patent Do You Need?
Utility Patents
Utility patents protect new and unique inventions, machines, processes, compositions of matter, and articles of manufacture. Said differently, utility patents protect machines, processes for making something, compositions of matter such as chemical formulations, and articles of manufacture or products that have uniquely been assembled.
Examples of things utility patents protect:
- Computer hardware
- Machines (something with moving parts such as an engine)
- Process for making a product
- Computer software
- Compositions of matter (Pharmaceuticals, supplements)
- Articles of manufacture (nail clippers, a new type of mop)
Utility patents are the most applied for patents, making up more than 92% of all applied for patents at the USPTO. Utility patents offer strong and broad protection over an invention.
Design Patents
Design patents protect new and unique designs. Said differently, design patents protect the ornamental or aesthetic aspects of an item. They protect the appearance of an invention.
Design patents are therefore different from utility patents, which protect the functional aspects of an invention and how it works.
Examples of things design patents protect
- iPhone design
- Lawnmower design
- Purse design
- Packaging design for a product
- Jewelry design
It's good to have a design patent over an invention, but design patents are not as strong as utility patents. Utility patents offer the strongest protection because they protect how an invention works. So, even if your competitor changes the appearance of a competing invention, if it works the same way, a utility patent holder will be able to stop his competitors from using, making, and selling the patented invention.
Obtaining both utility and design patents
Some inventions qualify for both a utility patent, as well as a design patent. The utility patent protects the functional aspects of the invention, such as how it works and how it's used and the design patent would protect the appearance of the invention or how it looks.
That said, to obtain both utility and design patent protection, an inventor needs to file a utility patent application and a separate design patent application. Filing a single application for both types of protection does not exist. Each must be applied for separately.
3) Keep Your Invention Secret
The USPTO requires inventions to be novel. The novelty requirement means that the invention must not have been publically disclosed or offered for sale prior to filing a patent application with the patent office.
The patent office offers a 12 month grace period to inventors who have publically disclosed their invention. That is, an inventor has 12 months to file a patent application with the patent office from the date he publically discloses his invention.
So, it's best practice not to disclose your invention at all prior to filing your patent application with the patent office.
Additionally, if you're planning on patenting your invention in other countries, you may want to keep your invention 100% secret and not publically disclose it because some countries require absolute novelty, meaning that no disclosure has ever been made.
So, keep your invention secret prior to filing a patent application.
4) Performing a Prior Art Search
Getting a patent on your invention requires an inventor to have a novel invention, this means having an invention that is completely different from any invention that has been patented in the US, as well as being different from anything that has been publicly disclosed.
To determine that an invention is different from anything that's been patented, an inventor needs to perform a search of the USPTO database to ensure that no one else has ever patented the same invention.
Also, an applicant must perform a public search to determine that no one has publicly disclosed the invention the inventor is seeking to patent.
Performing a successful and competent prior art or patent search is an art. As such, having the experience to know where to search, as well as when to stop searching is a must to perform a successful prior art search.
Attorney performing a patent search typically start searching broad topics that relate to the invention and proceed to make their search narrower by using more restrictive keywords.
At the end of a patent or prior art search, an applicant should have a good idea of where his invention stands in terms of other similar inventions.
5) Preparing a Patent Application
When preparing a patent application, these are some of the important sections that you'll have to include in your application.
A. Title of the Invention
A title for your invention is one of the first things you'll encounter as you begin to prepare a patent application. The title should be as short and as specific as possible while accurately describing the invention to be patented. The title should also be fewer than 500 characters.
B. Cross Referencing Related Patent Applications
If an inventor has filed a provisional patent application before filing a (regular) non-provisional patent application and the inventor applicant wants to benefit from the earlier filing date of the provisional application, an applicant must cross-reference the application in the nonprovisional patent application.
The section that cross-references related patent application comes right after the title of the invention.
Cross-referencing a previously filed provisional patent application can be done by including the following text:
"This application claims the benefit of US Provisional Patent Application No. ##/123,456, filed on January 1st, 2020."
According to the USPTO, an applicant may cross-reference his patent application to other applications whenever appropriate. Several cross-references may be made.
C. Statements Regarding Federally Sponsored R&D
If the federal government has sponsored the research and development of an invention, the patent application should include a statement that states what interest, if any, the government has in the invention. Also, the patent application should include the name of the US Government Agency that sponsored the research and development of the invention, as well as the contract number, if any.
D. Background of the Invention
This section should include a description of the class to which the invention relates. For example, if you've invented a new type of Jar, you should state that your invention falls in class 215 of "Bottles and Jars."
An applicant should also give a brief explanation of the problems that prior art has not solved and how the applicant's invention solves those problems. An applicant should include specific references to prior art and how his invention is different from such art.
This section should be short and to the point.
E. Brief Summary of the Invention
The summary of the invention should contain a few sentences that describe the essence of the invention, how the invention works, as well as the purpose for which the invention was created.
The brief summary of the invention should let the patent examiner, as well as the public, know what the invention is about and how it works as briefly as possible.
The Summary should be consistent with what the applicant is claiming as the invention in his patent application.
The applicant should use easy to understand and clear terms to explain the invention. An applicant should avoid using hard to understand terms, as well as legal jargon.
F. Brief Description of the Invention Drawings
You should include a brief description of each of the invention drawings that you've included in your patent application.
For example:
Fig. 1A shows a side view of ________________
Fig. 2B shows a top view of _______________
G. Detailed Description of the Invention
To get a patent, an applicant must include a detailed description of the invention. This description should include how to make the invention, as well as how to use the invention. The description should be made in clear and concise terms.
The invention should be described in as many details so as to allow an ordinary person skilled in the field of the invention to be able to understand how to make the invention, as well as how to use it.
If after reading the detailed description an ordinary person skilled in the field of the invention does not know how to make it and use it without much experimentation, your description is not sufficient and the patent examiner may reject your application, requiring the applicant to amend this section of the application.
H. Add Patent Claims
The claims section is where the inventor sets forth what parts of the invention he wants to protect with the patent. Patent claims set the scope of protection offered to the patent holder. Since claims are the most important part of a patent application, special attention should be given to them.
An inventor can make several patent claims in a utility patent application. However, if you're applying for a design you can only claim one design per design patent application.
In a utility patent application, claims should start with the broadest independent claim possible, followed by other dependent claims that limit the broadest independent claims.
I. Abstract of the Disclosure
The abstract of the disclosure serves as a quick section that both the USPTO and the public can use to get a quick idea about the invention. The abstract should enable anyone who reads it to understand what's new about the invention. It should not be more than 150 words and is usually limited to one paragraph.
J. Invention Drawings
Invention drawings should be included in every patent application where the drawings are necessary for the patent examiner and the public to understand the invention. Drawings fill in the gaps that are left by the text describing the invention.
Invention drawings must be submitted at the time an applicant files his patent application. Adding drawings later is not permitted because the addition of new matter after the filing of a patent application is prohibited by the USPTO.
K. Oath or Declaration
The Oath or Declaration Form must be filed with every patent application. In the Oath or Declaration form, the inventor must declare that he believes that he is the original inventor of the invention claimed in the patent application.
The inventor must also declare that he made or authorized the patent application to be filed with the USPTO. The Oath or Declaration must be made for both utility and design patent applications.
6) Filing a Patent Application
Once an inventor prepares his patent application, he has the option to either file a paper application or an electronic application. Filing an application electronically or online is the quickest and cheapest way to file a patent application with the USPTO. When submitting your application online, you must also pay the patenting fees to the patent office.
7) Keeping Track of Your Patent Application
Once you've submitted a patent application to the USPTO, it's a good idea to track the status of your patent application using PAIR. Pair allows applicants to securely track the status of their patent application online.
It's necessary to periodically check the status of your patent application to ensure that the USPTO has everything that they need to promptly process your patent application.
The patent office often requires changes and/or amendments to be made to a patent application and they often require those changes to be made within a certain timeframe.
As such, it is very important that an inventor promptly replies to such requests to ensure that his patent application is not delayed or abandoned due to not responding on time.
Filing a Provisional Patent Application
Some inventors choose to file a provisional patent application in lieu of filing a regular nonprovisional utility patent application to obtain an early filing date with the patent office.
Obtaining an early filing date for your invention is very important in the US because of the first to file rule that awards a patent to the person who first files a patent application for an invention.
Provisional patent applications are only available for utility patents and are not available for design patents.
Provisional patent applications are often filed because applicants don't have to comply with many of the requirements of a regular utility patent application. Provisional applications are also much less expensive to file than nonprovisional application yet they still reserve an early filing date for your invention.
Patent Rebel Note: You should note that provisional patent applications only last for 12 months. To obtain a patent, an inventor must file a nonprovisional patent application with 12 months of filing his provisional patent application. If an inventor does not file a nonprovisional patent application that claims the early filing date of a previously filed provisional application, the early filing date is lost.
How Much Does it Cost to Get a Patent?
Patents can cost anywhere from $2,500 to $15,000+, depending on the complexity of your invention and the attorney's fees you pay to a lawyer to prepare and file your patent application with the USPTO.
If you want to obtain a utility patent over your invention, you should expect to pay anywhere between $5,000 to $15,000+ to obtain a utility patent. The cost depends on the type of invention you're seeking to protect, as well as the complexity of the invention. The more complex the invention, the more you'll have to pay an attorney to prepare your patent application.
Design patents, on the other hand, typically cost anywhere from $2,500 to $3,500, which is much less than utility patents. The reason why design patents cost less is because they can only contain one invention claim (one design claim). As such, they require less work on behalf of your attorney to prepare and therefore cost less.
Can You Get a Patent on Your Own?
Yes, an inventor has the option to file a patent on his own. In fact, the patent office offers inventors who choose to prepare and file their patent application on their own, assistance with doing so.
That said, both the USPTO and Patent Rebel recommend that inventors who do not have experience patenting their own inventions to hire an attorney to assist them with the preparation and filing of their patent application.
This is so because US patent law is complex and making a mistake could cost you a patent on your invention. There are simply too many requirements and rules that an inventor has to comply with when preparing and filing a patent application. As such, it makes sense to hire an attorney to assist inventors with the patenting process.
So, if you were wondering whether you need an attorney to patent your invention, the short answer is no, you don't need one, but hiring one can make your life much easier and means that you'll get the best patent protection possible.
If you can't afford an attorney, you should consider hiring a patent agent to assist you with patenting your invention. Patent agents are qualified and licensed by the USPTO to assist inventors with all steps of patenting an invention.
Patent agents can assist you with performing a prior art search, preparing your patent application, filing it with the patent office, prosecuting it, and communicating with the patent office on your behalf.
Patent agents tend to charge less than patent attorneys because they have not attended law school, but they are more than qualified to assist you with patenting your invention and dealing with the patent office on your behalf.
Why Should You Get a Patent?
You should get a patent because patents allow patent holders to control who uses, makes, sells, offers to sell, and imports the patented invention to the United States.
No one in the United States can make, use, or sell a patented invention without first having to obtain the patent holder's permission.
This allows a patent holder to control who competes with him. This is especially true if the patent holder's patented invention is the only invention that solves a particular problem or works a certain way.
Utility patents allow patent holders to stop others from making inventions that work or function the same way as the patent holder's invention.
Also, if you have a new and unique design that sets your invention or product apart from others, you can protect the design of your product by also applying for and obtaining a design patent.
Design patents protect the appearance of your product and should obtain one if the appearance of your product is something that your customers look at and like about your product.
How Long Does it Take to Get a Patent?
According to the USPTO, it currently takes 24 months to obtain a utility patent and 20 months to obtain a design patent. The period of time it takes to get a patent is measured from the time you file a utility or design patent application with the patent office.
Patent Rebel Tip: If you want to patent your invention as quickly as possible, the USPTO does offer services that allow inventors to expedite the patenting process. For utility patents, you should consider using Track One. To qualify for Track One to expedite your utility patent, you need to apply for the program and pay an additional fee to expedite your application.
Also, you can expedite a design patent application using Rocket Docket, which allows inventors to expedite their design patent application by paying an additional fee and filing a request to expedite the application. Track one promises to make a decision on your utility patent application within 12 months. Rocket Docket promises to make a decision on your patent application within 12 months, as well. However, there are numerous reports that show inventors who were able to patent their invention within less than 6 months.
How to Get a Patent on Your Invention
At this point, you should know the following:
- What patents protect
- The type of patent you need for your specific invention
- The process for searching prior art
- The steps involved in preparing your patent application
- How much patenting an invention costs
- How long it takes to patent your invention
We hope this article did a great job assisting you with patenting your invention. Please note that this article is meant to offer general legal information. Patent Rebel is not your attorney, so if you need any legal advice for your specific situation, you should contact an experienced patent attorney in your jurisdiction to assist you.
That said, if you have any general questions or comments on getting a patent on your own, please feel free to leave a message in the comments section below.
What is the Best Intellectual Property Protection?
The USPTO offers several different forms of intellectual property (IP) protection. So, as an owner of an intellectual property, which form of intellectual property protection should you choose? We will discuss the best intellectual property protection below.
What is the Best Intellectual Property Protection?
The best intellectual property protection is the one that's suitable for your specific property. The patent office offers IP owners the ability to protect their IP with the following forms of protection:
- Patents
- Trademarks
- Copyrights
- Trade Secrets
The best intellectual property protection is the one that's suitable for your specific type of property, here is a chart that will help you determine the appropriate type of protection for your property.
| Utility patents protect how an invention works (The function of an invention) | 20 years from the filing date of a patent application | Yes | Occurs when someone uses, makes, sells, or imports to the U.S the patented invention | $$$$$ | |
| Design patents protect how an invention looks (The appearance or ornamental aspects of an invention) | 15 years from the date the patent office grants a design patent application | Yes | Occurs when someone uses, makes, sells, or imports to the U.S the patented invention | $$$ | |
| Trademarks protect brand names, symbols, and logos that are used to identify the source of goods or services | Trademark protection is ongoing so long as the trademark is used as a trademark | No, but registration is very important | Anyone who uses the trademark to mislead the public as to the source of goods or services | $$ | |
| Copyrights protect works of art, such as songs, movies, books, and software code | Copyrights are valid throughout the life of the author, as well as 70 years after the death of the author | No, but registration offers additional rights and protection | Anyone who copies the artistic work without the permission of the author. This is subject to some exceptions | $ | |
| Protects information that a business has that is unknown to the public | Indefinite so long as the trade secret is kept as a secret | No | Misappropriation of trade secrets | Not Applicable |
After reading this table, you should be able to choose the appropriate protection for your intellectual property. We covered what type of IP is protects by utility patents, design patents, trademarks, copyright, and trade secrets.
Note: In some circumstances, you may choose more than one type of intellectual property protection to protect the same invention, design, artwork, or brand.
We will discuss each type of IP protection in more detail below.
Utility Patent IP Protection
Utility patents can be used to protect how your invention works or the functional aspects of your invention. You can obtain a utility patent by preparing and filing a utility patent application with the USPTO.
If you want to protect your invention with a utility patent, make sure that you file a utility patent application within 12 months of publicly disclosing your invention or offering it for sale.
When filing a utility patent application, inventors have two options. The first option is to file a provisional application or to file a (regular) nonprovisional utility patent application.
A provisional application does not turn into a patent but it reserves an early filing date for an invention. This is very important in the US because the US has a first to file rule, which grants a patent to the first inventor who files a patent application. To obtain a patent after filing a provisional application, an applicant must file a regular application within 12 months of filing the provisional application.
If you are successful in obtaining a utility patent, your invention will be protected for 20 years from the date you filed a nonprovisional patent application with the patent office.
Once the patent office grants a utility patent application, the patent holder will be able to restrict others from using, making, selling, and importing the patented invention to the United States.
That said, obtaining a utility patent is quite expensive due to the amount of work that goes into preparing and filing a patent application with the patent office. Patenting even a simple invention could cost more than $8,000.
Design Patent IP Protection
Design patents can be used to protect how your invention looks. If your product or invention has a unique appearance, you can protect its appearance by preparing and filing a design patent application with the USPTO.
Like with utility patents, a design patent must be filed within 12 months of publicly disclosing your design or offering an article that bears the design that you want to patent.
If you do not file a design patent application within 12 months of publicly disclosing or selling your design, you will be prohibited from patenting it.
If you are successful in patenting your design, you will be able to stop others from using, making, selling, and importing an article to the United States that bears the design that you've patented.
If someone does use, make, or sell your patented design, you will be able to bring a lawsuit against them for patent infringement in Federal District Court.
If your lawsuit is successful, you may obtain an injunction against them prohibiting them from infringing upon your intellectual property. In some circumstances, you may also be able to recover lost profits that you incurred as a result of the infringement upon your design patent.
Design patents are less expensive to obtain from utility patents because they require less work by the attorney preparing your design patent application. If you want to protect your design with a design patent, you should expect to pay $2,500 to $3,500 for an attorney to prepare your design patent application.
Trademark IP Protection
If you have a brand name, logo, or symbol that you use on products or services that you offer to the public, you can protect them by registering them as a trademark with the USPTO.
The trademark office has allowed people to register sounds, colors, and designs if customers use them to identify them or their businesses are the source of goods or services.
That said, the most commonly registered trademarks with the patent office are word marks, logos, and slogans that businesses use to identify themselves as the source of goods or services.
Trademark registration is not mandatory, however, you;re only protected in the State in which you're using the trademark.
Registering your mark establishes your ownership over the registered mark and gives other notice that you're using the trademark.
At Patent Rebel, we believe the most important benefit of registering your trademark with the patent office is that it offers nationwide protection for your trademark. This means that no one can use the same trademark on the goods or services for which your trademark is registered throughout the United States.
If a bad actor uses your trademark on his goods or services and such use confuses the public, you can bring a lawsuit against the bad actor for trademark infringement in Federal District Court.
If you're successful in your lawsuit, you may be able to obtain an injunction prohibiting them from using your trademark, as well as recovering any damages you sustained by the bad actor's use of your trademark.
Registering your trademark with the USPTO is fairly inexpensive and could be done for less than $300 if you're willing to prepare the trademark application and file it on your own. However, if you want the help of a service, you should expect to pay an additional $200 to $500 for online services to assist you with preparing your trademark application.
Copyright IP Protection
Copyrights protect original works of art, such as photos, songs, movies, novels, articles such as the one you're reading, poetry, and even computer software.
If you have an artistic work such as the ones we mentioned above, you should know that they're protected automatically under U.S copyright law the same moment you create the work.
Although registering your work is is not mandatory for protection, registering your work as a copyright with the U.S Copyright Office does have its benefits.
The main benefit of registering your work as a copyright with the copyright office is that you'll be able to bring a lawsuit for copyright infringement in Federal District Court against any party that infringes upon your registered work.
The only requirement for copyright protection is that you have a work of art that's fixed in a tangible medium of expression. This requirement is easily satisfied. Writing down a song, drawing on a sheet of paper, or saving information to a medium, such as a flash drive or hard drive satisfies this requirement.
So, by now, you may be wondering how long does copyright protection last?
Copyrights for artistic works created on or after January 1st, 1978 last for the life of the author plus an additional 70 years after his death. So, for most people, this protection is enough.
Registering your work as a copyright with the U.S Copyright Office is very easy and inexpensive, costing $35 to register a single piece of artwork. So, if you have a song, book, or piece of art that you want to protect, copyright registration is easily obtainable.
Trade Secret Intellectual Property Protection
According to the USPTO, a trade secret consists of "any information that can include a formula, pattern, compilations, program, device, method, technique, or process" that's used in business and gives the holder of such information an economic advantage over competitors who don't know the information.
Trade secrets are not registered with any entities, such as the USPTO or the Copyright Office, instead, it is the responsibility of the trade secret owner to take reasonable precautions to protect his trade secret.
Since trade secrets are not registered with anyone, they last for as long as they remain a secret. So, in reality, a trade secret could last forever, so long as the holder does not disclose it.
If you have a trade secret and you need to disclose it to perform your business, you should have the party with whom you're sharing your trade secret sign a confidentiality agreement.
Having them sign a confidentiality agreement could prove to be helpful if the party with whom you're sharing your trade secret misappropriates because it shows that you've taken reasonable steps to protect the trade secret and the information should qualify for trade secret protection under the law.
Some people choose trade secret protection over patent protection for a few reasons. The first reason is that trade secret protection could last forever, whereas a patent expires after 15 to 20 years, depending on the type of patent you have.
The second reason is that patenting an invention requires disclosing everything about your invention, product, or formula, including disclosing how it works, how to make it, and how it's used.
Once the patent expires, the public will be able to replicate the once patented invention and sell their own version of it. By opting not to patent your invention, you could profit from it indefinitely so long as no one reverse engineers it or learns how to copy it.
So, if you have an invention and you're wondering about how to approach protecting it, you now know that you can ask your attorney about the difference between patenting your invention or protecting it as a trade secret.
Frequently Asked Questions?
1) Should you protect your intellectual property?
Yes, if you have intellectual property that is valuable to you or your business, you should protect it. The type of protection you need depends on the type of IP that you want to protect. We included a great chart that should help you choose the property IP protection for your property. If you still don't know which protection you need, you should contact an attorney and ask them to assist you with choosing the correct protection.
2) What are the 4 main types of intellectual property protection?
As we have mentioned throughout this article, the four main types of intellectual property protection are (1) patents, (2) trademarks, (3) copyrights, and (4) trade secrets. We have included a table that should help you determine which type of IP protection is suitable for your specific case. If you have any additional questions, you should contact your attorney to assist you with choosing the proper IP protection.
3) How do you protect your intellectual property?
How you protect your IP depends on the type of property that you have. If you have an invention or a design, then patenting is the way to protect it. If you have a brand that customers use to identify you as the source of goods or services, then trademark registration may be the correct option. If you have artistic work, such as a song, movie, photo, or book, the correct protection is copyright law. If you have a secret that improves your business, protecting it as a trade secret may be the proper protection. So, the answer depends on the type of property you want to protect.
4) How long does intellectual property last?
- Utility patents last for 20 years from the filing date of your patent application
- Design patents last for 15 years from the date the patent office grants your design patent application
- Trademarks may last forever so long as you continue to use them as a trademark
- Copyrights last throughout the life of the author, as well as 70 years after the death of the author
- Trade secrets can last forever, so long as the holder of the secrets continues to protect them as such
5) What is intellectual property (IP) law?
IP law is the section of law that protects intangible and tangible property, such as inventions, artistic works, and information used to give businesses an advantage over their competitors. IP law is becoming increasingly important for inventors who want to profit from their ideas and inventions.
Best Intellectual Property (IP) Protection
At this point, you should know the different forms of intellectual property protection that are offered under US law. Different forms of intellectual goods are protected by different mechanisms. Choosing the correct form of protection is vital to protecting your intellectual property. If you have any general questions or comments, please feel free to leave them in the comments section below.
Provisional vs Nonprovisional Patent (What is the Difference)
If you have an invention that you want to patent, you may be wondering whether you should protect it using a provisional patent or a nonprovisional patent. While there is no such thing as a provisional patent, you can certainly file what is known as a provisional patent application. Also, inventors have the option of filing what is known as a nonprovisional utility patent application. We will explain the difference between a provisional patent application and a nonprovisional patent application in the section below.
Provisional vs Nonprovisional Patent
A provisional patent application is a type of patent application that reserves an early filing date for an invention but does not turn into a patent. A nonprovisional utility patent application is a regular patent application that does turn into a granted patent.
So, why is there even a provisional patent application?
First to File Rule
A provisional patent application is available because it's a cheap and effective way to obtain an early filing date for your invention if it is drafted properly. Obtaining an early priority date is important in the United States because the U.S is a first to file county that awards a patent to the first person to file a patent application (provisional or nonprovisional) with the patent office.
Filing a patent application as quickly as possible is important in the U.S because if you were the first person to invent an invention and someone else invents the same invention after you but files his patent application before you do, he will be awarded the patent and you will not be able to patent the same invention even though you invented it first.
For this reason, we have provisional patent applications. Provisional applications require much less information and are quite cheap to file when compared to regular, nonprovisional patent applications. This makes provisional patent applications a great tool to obtain an early filing date for your invention, especially if you're still working on it or you need some time to get investors to invest in your invention.
Patent Pending
After filing either a provisional patent application or a nonprovisional patent application, you will be able to mark your invention or product with the words patent pending. You will also be able to market your invention as patent-pending and adding the words patent pending to the product materials and/or product materials.
Note: If you do choose to file a provisional patent application instead of a nonprovisional patent application, you need to file a nonprovisional patent application within 12 months of filing your provisional application. If you do not file a nonprovisional utility patent application within the 12 month period, your application is abandoned and you will lose your early filing date.
Preparation & Filing
Preparing a provisional patent application is easier than preparing a nonprovisional patent application because provisional applications do not need to follow many of the formalities of a regular patent application. Also, provisional applications do not require formal patent claims, so provisional applications are not examined, they are only placeholders in time.
Since provisional patent applications don't turn into a granted patent unless a (regular) nonprovisional utility patent application is filed, preparing a provisional application that you can use as your early filing date is very important.
For you to benefit from the early filing date of an earlier-filed provisional application, the invention described in your nonprovisional patent application must be the same invention that you described in your provisional application.
The patent examiner will look at your provisional application and compare its description with the one in your nonprovisional application. If the patent examiner determines that the invention described in your provisional application is different, you will not be able to benefit from the earlier filing date.
When does this become a problem?
This becomes a problem if someone else files a patent application for the same invention after you've filed your provisional patent application. If the patent office does not allow you to benefit from your earlier filing date, the other patent application for the same invention will have priority over your invention.
Therefore, it's very important to take the time to properly describe your invention in the provisional patent application.
Many inventors view a provisional patent application as a cheap alternative that they don't have to put too much effort preparing, but the truth is that a provisional patent is very important and inventors should take the time to properly describe how to make their invention, as well as how to use it.
Hiring an Attorney or Patent Agent
It's best to hire an attorney to draft your provisional patent application for you. Making even seemingly minor mistakes could cause trouble down the road when it comes time to file a regular patent application.
If you don't have the funds to hire an attorney, you should consider the option of hiring a patent agent to prepare your provisional application for you. Patent agents are licensed by the patent office to assist inventors with preparing a provisional patent application and filing them with the patent office. Patent agents tend to charge less than patent attorneys.
Can You Make Changes to Your Provisional Patent Application?
Unfortunately, once you filed a provisional patent application you're stuck with the invention that you described in your provisional patent application.
If you've changed your invention from the time you filed your provisional application, the patent office may not allow you to benefit from the earlier filing date for the changes that you made to your invention.
As such, it's very important for you to take the time to adequately take your time to describe the invention you want to protect so that when the time comes to file your nonprovisional patent application, the invention you describe in your nonprovisional patent application will relate back to your provisional application and benefit from the earlier filing date.
Although drawings of your invention are not required for provisional patent applications, if they will help the patent examiner understand how your invention works, you should include them. Invention drawings will fill in the gaps left by the written description of your invention.
How Long Does it Take for a Provisional Patent to be Approved?
A provisional patent is not examined by the patent office and therefore it cannot be approved. Provisional patent applications are simply placeholders in time that hold a spot for your invention at the patent office.
As mentioned previously, a provisional patent application only lasts for 12 months. During the 12 month grace period, an inventor must either convert his provisional application into a nonprovisional application (rarely done) or an applicant must file a nonprovisional patent application that relates back to and claims the early filing date of an earlier-filed provisional patent application (commonly done).
If a provisional patent applicant does not file a nonprovisional patent application within the 12 month grace period, his provisional application will be abandoned and the early filing date lost.
Should You File a Provisional Patent Application?
If you have an invention that you're still working the kinks out of or you want to find investors to invest in your invention, you can file a provisional patent application to hold a spot in line for your invention.
Remember that the United States is a first to file country that awards the patent to the first inventor to file an not the first to invent. As such, obtaining a spot in line for your invention is necessary if you want to patent it.
Provisional patent applications are the quickest way to save that spot because they don't have to comply with many of the formalities of a regular nonprovisional patent application.
You often hear that provisional patents are cheaper and they do tend to cost less to prepare than nonprovisional patent applications, but it's imperative that you do not rush the preparation of your provisional application if you want to patent your invention later down the road.
Can a Provisional Patent Application Be Rejected?
A provisional patent application cannot be rejected because the patent office does not examine provisional applications. Provisional applications are only placeholders in time.
The patent office will look at your provisional patent application only if you choose to file a nonprovisional patent application within the 12 month grace period. If you file a nonprovisional patent application, the patent examiner at the patent office will look at your provisional application to determine whether the invention described in both applications match to allow the applicant to benefit from the early filing date.
Can You File a Provisional Patent Application Online?
Yes, you can file a provisional patent application online. The USPTO website allows you to add the required information about the inventor and the invention. They also allow you to upload the required documents and drawings. The patent office allows you to pay the required provisional patent application filing fees online.
Here is a great informative guide on how to file a provisional patent application online.
Just remember that if you're serious about patenting your invention, you should take the time to thoroughly prepare your provisional patent application to avoid trouble patenting your invention down the road. If preparing a strong provisional patent application means hiring an experienced patent attorney, then, by all means, hire an experienced patent attorney and have the job done properly.
Can You Extend Your Provisional Patent?
No, a provisional patent application cannot be extended beyond the 12 month grace period. If you want to keep your patent-pending status, you have two options. The first option is to file a nonprovisional patent application to continue patenting your invention or you can file another provisional patent application and that would restart the 12-month clock but you will lose your early filing date for the invention. If you want to know your options because contact your attorney and ask them what you should do. Every situation is different and your attorney will be able to offer you valuable advice.
Nonprovisional Patent Application vs Provisional Patent Application
A nonprovisional patent application is a full-fledged regular utility patent application that inventors file to patent their invention. A nonprovisional patent application can turn into a granted patent.
Inventors also have the option of filing a provisional patent application, which doesn't require formal claims and the formal requirements of a regular patent application, but a provisional application does not turn into a patent. If an inventor chooses to file a provisional application first, he has 12 months to file a regular, nonprovisional patent application to patent his invention.
We also covered topics, such as who a provisional patent application is right for, whether a provisional application can be rejected, and how long it takes to get a provisional patent.
If you have any general questions or comments, please feel free to leave them in the comments section below.
How Long Does a Provisional Patent Take to Get?
Whether you've finished working on your invention or you're still working on it, you might be wondering about protecting it with a provisional patent. We are here to tell you that although there is no such thing as a provisional patent, you're probably referring to filing a provisional patent application. A provisional patent application is often referred to as a provisional patent. How long does it take to file a provisional patent application? We will answer this below.
How Long Does a Provisional Patent Take to Get?
As we previously mentioned, there is no such thing as a provisional patent, but inventors can file a provisional patent application to obtain a priority date for their invention. You can apply for a provisional patent application as soon as you can explain how your invention works and how it can be used. You do not need to have a working prototype of your invention to file a provisional patent application. So, how long it takes to file a provisional patent application depends on how quickly you can prepare and file a provisional patent application with the USPTO. Here is an awesome and detailed guide on how to file a provisional patent.
To get a provisional patent application, you need to be able to describe your invention, how it works, and how it's made. You will also need to disclose basic information, such as the name of the inventor, his home address, and the correspondence address to file a provisional patent application. Also, you'll need to pay a small filing fee to file a provisional patent application.
Once you've filed a properly prepared provisional patent application, you'll be able to market your invention or product as patent pending.
The most important reason that inventors opt to file a provisional patent is to obtain an early filing date for their invention. This protects the inventor from other inventors who may file a patent application for the same invention.
By obtaining an early filing date, the inventor's invention will have priority over them, meaning if the inventor's invention meets the patenting requirement, he will get the patent and subsequent filers won't be able to patent the same invention. Said differently, a provisional application saves a place in line for your invention, the first invention in line gets the patent, while other invention that are the same are booted.
Obtaining an early filing date for an invention is very important in the United States because the U.S has a "first to file rule" that awards the patent to the inventor that first files a patent application and not necessarily to the first person who invents an invention.
Do Provisional Patents Offer Protection?
Provisional patents (correctly known as filed provisional patent application) do not grant the inventor patent rights. This means that while a patent application is pending, an inventor or applicant does not have any patent rights to enforce against others, meaning an applicant cannot restrict others from using, making, selling, and importing the patent-pending invention to the United States.
Applicants only obtain the right to control who uses, makes, or sells their invention after the patent office grants their patent application.
Since filing a provisional patent application does not grant an inventor the right to restrict others from using, making, and selling his invention, inventors cannot sue parties that use or sell his invention without his permission. So, if you're an inventor, it's very important that you patent your invention as quickly as possible so that you can control who uses, makes, and sells your invention.
That said, adding the words patent pending should fend off bad actors from copying your invention because it signals to them that you're in the process of obtaining patent protection for your invention or product. However, including the designation does not guarantee that no one will copy your invention and sell it.
Having said that, if someone copies your invention and sells it, you may stop them from doing so if the patent office grants your patent. You can bring a lawsuit for patent infringement against them.
Filing a Nonprovisional Patent Application Within 1 Year of Your Provisional Patent Application
Although a provisional patent application reserves an early filing date for an inventor's invention, it does not turn into a patent. A provisional patent application just reserves a filing date, to obtain a patent, an inventor must file a nonprovisional patent application within 12 months of filing his provisional application.
The second, but rarely used option an inventor has is to convert his provisional patent application into a nonprovisional patent application, but filing a petition to convert instead of filing a nonprovisional patent application that references an earlier filed provisional application, is that an inventor loses the benefit of an earlier filing date by converting his provisional application.
If an inventor fails to file a regular, nonprovisional patent application within the 12 month grace period, his provisional application will be abandoned and he will lose the early filing date obtained by filing his provisional application.
What Do Inventors Do After Filing a Provisional Application
During the 12 month period following filing a provisional patent application, some inventors choose to pitch their inventions to investors who are interested in purchasing the rights to an invention either as patent-pending or as a granted patent. Some inventors look for licensing opportunities to license their inventions or products for others to use in exchange for a licensing fee or agreed upon royalty.
Some inventors have often not finished working on their invention, so they use the 12 month period to continue working on their invention, working out any kinks, and perfecting it so that they can describe it as accurately as possible in their regular, nonprovisional utility patent application.
For some inventors, the 12 month grace period allows inventors to take the time to prepare their nonprovisional patent application without having to worry about another party patenting their invention.
Again, a provisional application if prepared properly reserves an invention's place in line and gives the applicant's invention priority over other inventions that are the same.
Requirements to Get a Patent After Filing a Provisional Patent Application
If an inventor wants to patent his invention, he must file a nonprovisional patent application within 12 months of filing a provisional patent application. However, for an inventor to benefit from the early filing date of his provisional application, the description of the invention in the nonprovisional patent application must match the description the inventor provided in his provisional application.
If the patent examiner determines that the descriptions don't match, he will not allow the inventor to benefit from the earlier filed provisional application. On the other hand, if the invention described in the regular patent application matches the description of the invention in the provisional application, the patent examiner will proceed with the patent application.
Frequently Asked Questions
1) How long does a provisional patent last?
A provisional patent application gives inventors a 12 month grace period during which to file a nonprovisional (regular) utility patent application. After an inventor files a provisional patent application, he can market his invention as patent pending. He can also use patent-pending status to attract potential investors.
2) How to Get a Patent Pending?
The quickest, cheapest, and easiest way to get a patent-pending is by filing a provisional patent application with the USPTO. By filing a provisional application with the patent office, inventors and applicants can immediately begin marketing their product as patent pending. They can include the designation on the product itself, its packaging, and its accompanying materials.
3) How much does it cost to get a patent pending?
The USPTO charges applicants who are classified as micro-entities $70 to file a provisional patent application, small entities are charged $140 to file a provisional application, and large entities are charged $280. That said, it's wise to hire an attorney to assist you with the preparation of your provisional patent application. Attorneys typically charge anywhere between $2,500 to $3,500 to prepare and file a provisional application. However, you have to take into consideration that attorney fees vary greatly, depending on the complexity of your invention and where you attorney is located.
4) How long does it take to get a patent?
According to numbers from the USPTO, it currently takes inventors approximately 24 months to get their invention patented from the time they file their regular, nonprovisional patent application with the patent office. That said, the amount of time it takes for your individual application may be different depending on how well your application is drafted and the complexity of your invention. You should contact your attorney and ask them about your specific patent application.
How Long Does it Take to Get a Provisional Patent?
Inventors can get a provisional patent as quickly as they can prepare and file a provisional patent application. Filing a provisional patent application with the USPTO is fairly straightforward, easy, and inexpensive. However, applicants should hire an attorney to prepare and file a provisional patent for them. Making even seemingly minor mistakes in a provisional application could cause trouble down the road when the time comes to file a nonprovisional patent application. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.
Provisional Patent
Provisional Patent (Provisional Patent Application)
A provisional patent, correctly known as a provisional patent application is a type of patent application filed at the USPTO (United States Patent and Trademark Office). Provisional patent applications are filed by inventors with the patent office to obtain an early filing date for their invention. Obtaining an early priority date for an invention is very important in the United States because it uses a first to file system instead of a first to invent system.
In a first to file system, the inventor who first files a patent application (provisional or nonprovisional) gets the patent if the invention meets the patenting requirements. Anyone who submits a patent application to patent the same invention won't be able to patent it because of the first inventor filing his patent application.
For example, if you invented a new type of engine that provides better fuel economy and someone else invents the same engine 2 years later and file a patent application with the USPTO (United States Patent and Trademark Office) before you do. His invention will get a patent even though you invented the engine first. So, what's the takeaway?
If you invent something, file a patent application with the patent office to obtain an early priority date. This will stop others from patenting your invention. Going back to our example, had you filed a patent application first, you would have gotten the patent, but because you didn't file, the other person gets the patent and you won't be able to patent your invention. This is so because the patented invention would be considered as prior art, prohibiting you from patenting the same invention.
Why Get a Provisional Patent?
Inventors often choose to file a provisional patent application instead of filing a regular, nonprovisional utility patent application because provisional applications are easier and less expensive to prepare, they also cost less to file.
While a regular utility patent application requires formal claims and an information disclosure statement (IDS), a provisional application only requires a description of the invention and some basic information, such as the inventor's name and address.
While a provisional patent does not require drawings, inventors often choose to include them to describe the invention in more detail. You've probably heard the saying that a picture is worth a thousand words, so including drawings of your invention makes your provisional application stronger because it clearly describes the invention that you want to patent.
Having a strong provisional application could prove to be really important in a situation where a party files a patent application for the same invention you filed for. We well explain why in a moment.
As you may or may not be aware, provisional patent applications do not turn into patents unless an inventor converts a provisional application into a nonprovisional application or files a nonprovisional patent application that claims the benefit of an earlier-filed provisional application.
If an inventor has a weak provisional patent application that does not adequately describe his invention, he will not be able to claim the earlier filing date of the provisional patent application. This is so because the patent examiner looks at the description of the provisional patent application and compares it to the description in a later-filed nonprovisional patent application.
The descriptions have to match for an inventor to be able to claim the priority date of an earlier-filed provisional application. If the descriptions don't match, an inventor will not be able to claim the early filing date of an earlier-filed provisional application.
So, if someone else files a patent application for the same invention after you've filed your provisional application but before you filed your regular patent application, the other person will get the patent and you won't because you can't claim the earlier filing date of the provisional patent application.
How Much Does it Cost to File a Provisional Patent?
The USPTO charges applicants the following fees:
- Micro entities: $70
- Small entities: $140
- Large entities: $280
If you choose to seek the assistance of an attorney to prepare your provisional patent application, you may need to budget in an additional $1,500 to $3,000 for such assistance. That said, it's important to note that attorney fees will vary depending on the complexity of your invention and your geographical location. Attorneys in different areas charge different amounts of money to assist inventors with the preparation of their patent applications.
Fortunately, provisional patents don't require the payment of patent search fees and examinations fees, making provisional patents much less expensive to obtain.
What is the Difference Between a Provisional Patent and a Nonprovisional Patent?
The main difference between a provisional patent application and a nonprovisional utility patent application is that a provisional patent application never becomes a granted patent, whereas a nonprovisional patent application can become a granted patent if the patent office approves the application.
The second difference between the two is that a provisional patent application requires significantly less information than a nonprovisional application. For example, provisional applications do not require formal patent claims. That said, a provisional application should include a thorough description of the invention to be patented.
The third difference is that a provisional application does not require an information disclosure statement (IDS). An information disclosure statement contains information about inventions that are similar or relate to the invention that the inventor is trying to patent.
The fourth difference is that a provisional application does not require an oath or declaration. A patent oath or declaration form requires the applicant to declare that he is the first and original inventor of the invention to be patented. It also requires information, such as the name of the inventor, his residence, and mailing address. Application for provisional patent applicants are not required to complete and submit the declaration form.
What Are the Benefits of a Provisional Patent?
- The main benefit of filing a provisional patent application is that it reserves an early filing date. Reserving an early filing date is very important in the United States because of the first to file rule that awards inventors who first file a patent application with the patent office.
- The second benefit of filing a provisional application is that it costs inventors significantly less to file a provisional application than filing a regular utility patent application. That said, it's important to note that applicants should spend the time to thoroughly describe an invention in a provisional patent application to avoid problems patenting their invention down the road.
- The third benefit of a provisional patent application is that an inventor will be able to market his invention as patent-pending as soon as he files a provisional application with the patent office. Using the designation "patent pending" is a good marketing tool for an inventor's product. Also, using the designation tells infringers to stay away from your invention because you've taken legal steps to protect it.
- The fourth benefit of a provisional patent application is that it offers inventors an extra year of patent protection. How does it do this? If an inventor files a nonprovisional patent application within 12 months of filing a provisional application, the patent term starts at the filing of the nonprovisional application and the protection starts at the time of filing the provisional application, giving an inventor an extra year of protection.
Does a Provisional Patent Protect You?
As we mentioned earlier, a provisional patent application, commonly known as a provisional patent, is not a granted patent, as such it does not provide legal protection. That is, a filer of a provisional patent application does not give the right to an inventor to stop others from using, making, and selling the patented invention.
Said differently, an inventor who has filed a provisional patent application, cannot sue anyone who copies, makes, sells, or uses his patent-pending invention.
If the patent office approves or grants an inventor's patent application, only then can the inventor enforce his rights under patent law to restrict others from using, making, selling, and importing the patented invention to the United States.
So, if someone copies or sells an inventor's invention after the patent office has granted the inventor a patent, the inventor will be able to sue that party for patent infringement in federal court. If the patent holder is successful, he may obtain a court order ordering the infringer to stop his infringing activities.
Can you Sell a Provisional Patent?
Yes, you can sell a provisional patent. A person who sells a provisional patent can transfer ownership of the provisional patent application by executing an assignment agreement that transfers the patent from the transferor to the transferee. The transferor is the person who's giving up his rights under the patent and the transferee is the party receiving the provisional patent rights.
Once the parties execute an assignment agreement, the agreement must be recorded with the patent office for the record to show the change of ownership. An assignment does not go into effect until it is recorded at the USPTO. Once an assignment is performed, it cannot be undone.
Holders of provisional patent applications often choose to license them to third parties. Licensing a provisional patent allows the applicant to retain ownership over the patented invention while allowing third parties to use the patent-pending invention.
How Long Does a Provisional Patent Last For?
A provisional patent lasts for 12 months from the filing date of a provisional patent application. To obtain a patent, an inventor has 12 months to file a nonprovisional patent application or convert a provisional patent application into a nonprovisional patent application.
The patent office rarely grants extensions for provisional patents, so make sure to convert your provisional application or file a nonprovisional patent application within the 12 month grace period.
If an inventor does not convert his application or file a regular application within the 12 month grace period, the provisional application will be deemed to have been abandoned and the applicant loses his early filing date.
That said, an inventor can still file a subsequent provisional or nonprovisional patent application for the same invention, but he will not be able to benefit from the early filing date of the initial provisional patent application.
Can You License a Provisional Patent?
Yes, a provisional patent application can be licensed to a third party. A holder of a provisional patent application can license his patent-pending invention to a third party to use. The scope of use depends on the agreement that the parties execute.
Applicants often license the use of their patent-pending invention to others in exchange for an agreed-upon fee, commonly known as a licensing fee or royalty. That said, determining how much a license for a provisional application is difficult to determine due to the fact that provisional applications are not published. This creates uncertainty as to what the invention is, as well as the scope of its protection.
What Happens if a Provisional Patent Expires?
If a provisional patent expires, the provisional patent application is deemed to have been abandoned and the applicant loses the early filing date established by the provisional application.
This becomes a problem in the situation where another party files a patent application for the same invention after you filed your provisional application. This is so because once your provisional patent expires, the party that filed its application after you filed your provisional patent application has priority over you because of the first to file rule in the United States.
So, if you try to file another provisional application after another party filed a patent application for the same invention, you won't be able to patent your invention because the person who filed after you now has priority over your invention. So, what should you take away? Don't let your provisional patent application expire and file your nonprovisional application before the expiration of the 12 month grace period.
Do You Need a Lawyer to File a Provisional Patent?
Although applicants don't need a lawyer to file a provisional patent application, the USPTO recommends that applicants hire an attorney to assist them with the preparation of a patent application. This is so because patent law is quite complex and making even seemingly minor mistakes could cause big problems down the road.
So, if you want to obtain a provisional patent consider hiring an attorney to assist you with the application. That said, if you cannot afford to hire an attorney, you should consider the option of hiring a patent agent. Patent agents like patent attorneys, are licensed by the patent office and are allowed to represent inventors in preparing, filing, and prosecuting patent applications. Since patent agents are not attorneys, they often charge less for their services.
How do You Get a Provisional Patent?
An inventor can get a provisional patent by heading over to the USPTO website, preparing a provisional application, and submitting the application online. We have an awesome and complete guide here. To get a provisional patent, an applicant will have to provide basic information, such as the name of the inventor, his residence, mailing address, description of the invention, as well as a specification sheet, and invention drawings if they're necessary to assist the patent examiner in understanding the invention you want to protect.
What Information Should You Include In a Provisional Patent Application?
A provisional patent application should include the following information:
- Title of the invention
- Name(s) of inventor(s)
- Residence address for inventor(s)
- Correspondence address
- A written description of the invention
- Drawings of your invention
- Applicable filing fee
Should You Get a Provisional Patent?
You should get a provisional patent if you want to quickly obtain an early filing date for your invention. For example, if you're in a competitive field and you have an invention that you haven't quite finished working on, you can file a provisional patent application to reserve an early filing date while you continue working on your invention.
If you want to share your invention with the public, it's a good idea to file a provisional application to protect your invention. Remember that the U.S is a first to file system, so if you disclose your invention before filing a patent application, a third party may steal your invention and file a patent application before you do. So, file a provisional patent application to protect your invention before you disclose it to the public.
If you file a provisional application, just remember that to obtain a patent, you will have to file a nonprovisional patent application within 12 months of filing your provisional application. If you don't file a regular, nonprovisional patent application within the 12 month grace period, your provisional application will be abandoned and you'll lose your early filing date.
When Should You File a Provisional Patent Application?
You should file a provisional patent application once you can explain how to make your invention and how to use it. Some inventors often wait to file their provisional patent application so that they can delay the clock starting on the provisional patent. However, if you want to share your invention with the public or offer it for sale, it's recommended that you file a patent application to obtain a filing date for your invention.
That said, we have to remind you that if you publicly disclosed your invention, offered it for sale, or sold it, you have 12 months to file your provisional application with the patent office. If you do not file your provisional patent application within the 12 month grace period, you will not be able to patent your invention because it will be considered as prior art that prohibits you from patenting your invention.
Do Provisional Patent Applications Require Drawings?
Drawings are not required for provisional patent applications, however, including drawings will help explain your invention to the patent examiner. Drawings can fill in any gaps that you left while describing your invention.
So, while not necessary, you should always try to include them because they will make your provisional patent application stronger. Having a strong provisional patent makes it easier for a later-filed nonprovisional patent application to relate back to and benefit from the earlier filing date of the provisional application.
If you want to include drawings but don't know how to create them, don't worry, you're not alone. Just do a quick google search for patent drawings services and you'll find a ton of options to choose from. These services often cost anywhere between $50 to $100 per drawings, so if you want to include 7 drawings, expect to pay anywhere from $350 to $700 for professionally created drawings.
How Long Does it Take to Get a Provisional Patent?
As we stated previously, there is no such thing as a provisional patent. People often refer to a provisional patent application as a provisional patent. So, if you want to "get a provisional patent" all you need to is prepare and file a provisional patent application with the patent office. Once you submit your provisional patent application, you can immediately use the term "patent pending" on your products. So, basically, you get it as soon as you file the provisional application. Just remember, provisional applications do not turn into patents.
How To Turn a Provisional Patent Into a Nonprovisional Patent Application?
An applicant can turn a provisional patent into a nonprovisional patent application in two ways. The first method we will discuss is rarely used but it's still an option and this is to convert a provisional patent application into a nonprovisional application. This is done by filing a petition to convert the provisional application. This method is rarely used because applicants lose a year of patent protection since the patent term begins at the time of filing the provisional patent application.
The second and most used method is to file a nonprovisional, regular utility patent application that claims the earlier filing date of the provisional patent application. If an applicant chooses this route, the patent term begins at the time of filing the nonprovisional patent application, so you effectively have patent protection that lasts for 21 years, since protection starts at the time of filing the provisional application.
To be able to claim the earlier filing date of the provisional application, the invention described in the nonprovisional application must match the description of the invention the inventor provided in the provisional application. This is why we stress the fact that an inventor should take the time to thoroughly describe the invention in the provisional application.
If the patent examiner determines that the invention descriptions don't match, the inventor will not be able to claim the earlier filing date of the provisional application.
Frequently Asked Questions
1) Can you file a provisional patent on your own?
Yes, an inventor is allowed to prepare and file a provisional patent application with the USPTO on his own, he does not need to be represented by an attorney. That said, the patent office recommends that inventors hire a patent attorney to assist them with the preparation and filing of a provisional patent application.
2) Does a provisional patent application become a patent?
A provisional patent application can never become a patent. For an inventor to patent his invention, he must either convert his provisional application into a nonprovisional application or file a nonprovisional application that relates back to an earlier-filed provisional application.
3) Can you extend the life of your provisional application?
Generally, an applicant is not permitted to extend the life of his provisional patent. The patent office only extends them in very rare circumstances, so you shouldn't rely on obtaining an extension. If you file a provisional application, make sure that you file a nonprovisional application that claims the benefits of an earlier provisional application within the 12 month grace period.
4) Should you spend time preparing a provisional patent application?
Absolutely yes! You should describe your invention as thoroughly as possible, especially if you're going to publicly disclose it or offer it for sale. This is so because if someone else files a patent application after you filed your provisional application, your provisional application must be strong so that you can benefit from the earlier filing date. If your provisional application is poorly drafted, it's useless when the time comes to file a regular, nonprovisional patent application.
5) Why do people use provisional patent applications?
Inventors are often in a rush to obtain an early filing date because of the first to file rule in the U.S. So, once they can describe how to make the invention and how to use it, they choose to file a provisional application to reserve an early filing date. This prevents others from patenting the invention before an applicant gets to do so.
6) Is it expensive to get a provisional patent?
Filing a provisional patent application with the patent office is a fairly inexpensive process, you simply pay a filing fee that does not exceed $280, you submit a description of the invention, as well as basic information, such as the name of the inventor, the address of his residence, and a correspondence address and you're done. Filing a provisional patent application is much easier and less expensive than submitting a nonprovisional patent application.
How to Get a Provisional Patent?
How to Get a Provisional Patent?
If you're an inventor and you want to protect your invention or start using the words "patent pending" you can do so by submitting a provisional patent application to the USPTO. We are including a step-by-step guide to get a provisional patent, so scroll down to find it (we've included pictures). It will guide you through the online application process. Please note we are not your attorney and we are providing this guide for informational purposes only.
To get a provisional patent, an inventor needs to prepare and file a provisional patent application with the USPTO (United States Patent and Trademark Office). This can be done, by heading over to the USPTO website and filling out the required information for a provisional application.
What makes inventors want to get a provisional patent? The main thing that attracts inventors to provisional patents is that they're relatively easy to prepare when compared to regular, nonprovisional patent applications and they're also less expensive. That said, it's important to note that provisional applications do not turn into patents.
To obtain a patent, an inventor must either convert a provisional application into a regular, nonprovisional application or file a nonprovisional patent application that claims the early filing date of a provisional patent application. This has to be done for an inventor to obtain a patent, if an inventor does not covert it for file a nonprovisional application, the provisional application will be abandoned.
Step by Step How to Get a Provisional Patent
To get a provisional patent, you have to follow these steps:
- Head over to the USPTO website: USPTO.gov
Once you're at the USPTO website, click on Patents Tab and then navigate to and click filing online.
- Once you've clicked on file online, you should get another page. On this page, click on Open EFS Unregistered.
- Once you've clicked on file online, you should enter the required information, such as your name and email address. Also, select utility patent and provisional patent as shown in the photo below.
- Now, you have to enter a title for your invention, as well as the name of the inventor, and the address where you want to receive mail about your invention.
- Now, you have to attach some documents by clicking on the choose file button, you have to attach the following files:
- Transmittal of a new application: This PDF file should be your provisional patent application.
- Specification: The specification must include a description of the invention you're claiming you invented.
- Drawings: Drawings of the invention you want to patent.
- Now, you have to click the validate and review button, then you will be greeted by the following page:
- Now, you will have to do the following:
- Select provisional patent as indicated by the arrow
- Select no for patent application originally filed in paper
- Enter the number of pages
- Click Calculate as indicated by the arrow
- Continue to pay the required fees
- Click continue
- Pay the required fees
How Long Does a Provisional Patent Last?
A provisional patent application lasts for 12 months. If an inventor does not convert a provisional patent application into a nonprovisional patent application within the 12 month grace period or does not file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application, the provisional patent expires or is deemed as abandoned by the patent office. If this happens, you lose your priority date, so if some else files a patent application for the same invention, his invention will have priority over yours. This is definitely not a situation that you want to be in.
How Much Does it Cost to Get a Provisional Patent?
The cost to get a provisional patent depends on whether an applicant is preparing the provisional patent application on his own or is having an attorney prepare the application. If you're having an attorney prepare and file a provisional application for you, expect to pay approximately $1500 to $3,000 in attorney fees.
Filing a provisional patent application is relatively cheap, here is what you should expect to pay:
- Micro Entity: $70
- Small Entity: $140
- Large Entity: $280
The amount you need to pay to file a provisional patent application depends on the size of your business. If you're an individual inventor, expect to pay the micro-entity filing fee of $70.
What are the Benefits of Filing a Provisional Patent Application?
The main benefit of filing a provisional patent application is that it allows an inventor to reserve an early filing date. This is especially important in the United States, which is a first to file and not a first to invent country. First to file means that an inventor who first files a patent application gets to patent the invention and any subsequent inventors who file a patent application will not be able to patent their invention.
For example, if you invent a new type of paper clip and your neighbor invents the same paper clip and goes to the patent office and files a patent application before you do, your neighbor will obtain a patent and you won't be able to patent it. This because of the first to file rule in the U.S.
So, if you have an invention, don't wait for too long to patent it, especially if you're invention is in a competitive field. Filing a provisional application can secure an early filing date for your invention.
The second benefit of filing a provisional application is that the moment you file a provisional application, you can begin marketing your invention as patent pending. Investors like it when an invention or product is patent pending because it shows them that the IP is in the process of being protected, making it worth their time to invest in.
What's the Difference Between a Provisional Patent Application and a Nonprovisional Patent Application?
A provisional patent application acts as a placeholder in time for a later-filed nonprovisional patent application. A provisional application does not turn into a granted patent. A nonprovisional is known as a regular utility patent application, this application is a complete patent application that does turn into a granted patent.
So, why do people choose to file a provisional application instead of a regular, nonprovisional patent application because it's quick to file and costs less to prepare. That said, inventors often overlook the importance of a provisional patent application.
They believe because it's easy to file that they shouldn't give it as much attention as a full patent application. We are here to let you know that you should spend a good amount of time to thoroughly describe your invention because if you want to file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application, the description in the utility application must match the description of the provisional application.
If the description doesn't match you won't be able to claim the early filing date. This usually means trouble if someone else has filed a patent application for the same invention after you filed your provisional application.
Do You Need a Lawyer to File a Provisional Patent Application?
Althouttorngh the USPTO does not require you to have an attorney to file a provisional patent application, they do recommend that you hire an attorney to assist you with the preparation and filing a provisional application.
The patent office makes this recommendation because patent law is complex and making seemingly minor mistakes on the application could cause costly mistakes down the road. So, if you have an invention that's important, it's worth your time and money to obtain the assistance of an attorney.
If you don't have the money to hire an attorney, you can hire a patent agent to assist you with your application. Patent agents are registered with the patent office and have passed the same patent exam that attorneys have passed to represent clients before the USPTO.
So, look for an experienced patent agent instead and have them assist you. They are often cheaper than attorneys because they don't have the general legal education that attorneys do, but they're qualified to assist inventors with preparing, filing, and prosecuting their patent application.
Obtaining a Provisional Patent
We described how to obtain a provisional patent in much detail. You must first start by preparing and filing a provisional patent application with the patent office. Doing so gives you instant patent pending status, allowing you to market your invention as patent pending. We also included step-by-step instructions on how to fill out and prepare a provisional patent application form online. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.
Do Provisional Patent Applications Get Published?
Whether you've already filed a provisional application or you're thinking about filing one, you may be wondering whether the USPTO (The United States Patent and Trademark Office) publishes provisional patent application. We will answer this question below.
Do Provisional Patent Applications Get Published?
No, the patent office does not publish provisional patent applications because they are not subject to examination like nonprovisional patent applications. However, if an applicant files a nonprovisional patent application within the 12 month grace period that claims priority to an earlier-filed provisional application, anyone can request a copy of the provisional application.
That said, provisional patent applications do not turn into patents, so for an inventor to get a patent, he must file a nonprovisional patent application or convert a provisional application into a nonprovisional application within the 12 month grace period.
If an applicant does not file a nonprovisional patent application or convert a provisional within the 12 month grace period, the provisional application is deemed to have been abandoned. Once abandoned, a provisional application will not be published and will, therefore, remain secret.
The fact that it remains secret becomes important for applicants who choose to file an additional provisional patent application. This is so because of the fact that an application remains secret, it does not constitute public disclosure of the invention. As such, if you've only filed a provisional application you can choose to file an additional provisional application to include changes to the invention.
That said, there are some consequences to filing a new provisional patent application. The main consequence of doing so that is that you don't get the benefit of the early filing date of the prior provisional application.
So, if for example, someone filed a patent application for an invention that's the same as yours before you filed the second provisional application, their invention will have priority over yours. So, that's something you should keep in mind.
What Happens to a Provisional Patent Application If You Do Nothing?
If you simply file a provisional patent application with the patent office and you don't file a nonprovisional application or convert it to a nonprovisional application within the 12 month grace period, your provisional application will be deemed abandoned. If your application is abandoned, it will not be published and will remain secret. So, what does publication mean? We will cover this below.
What Does it Mean For Your Provisional Patent Application to be Published?
A published patent application is one that is available for the public to see. Patent publication is not the same as a granted patent. There can be a patent application that is published while a patent is still pending and not granted. So why are patent applications published? They are published to inform the public at what is currently being patented at the patent office. Publication of a patent application creates prior art. Prior art prohibits subsequent inventors from patenting the same inventions.
Nonprovisional Patent Application
If an inventor files a provisional patent application and wants to get a patent, he must either (1) file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application or (2) he must convert the provisional application into a regular, nonprovisional application. We say this because provisional patent applications never become patents.
Almost all inventors choose to file a nonprovisional patent application that claims priority to an earlier-filed provisional application to claim the early priority date. On the other hand, if an inventor chooses to file a petition to convert a provisional application, the inventor will not be able to claim the priority date of the provisional application. In this circumstance, the patent term begins at the time you convert the provisional application into a nonprovisional application.
Benefits of Filing a Provisional Patent Application Prior to Filing a Regular Patent Application
Filing Date
One of the biggest advantages of filing a provisional patent application is that it allows an inventor to reserve an early filing date for his invention. This is super important in the United States, which awards the first person to file a patent application and not the first person who invents something.
For example, if you invent a new type of nail clippers first and a second party invents the same nail clippers a year later and patents it first. The second party's invention will have priority over yours even though you invented the nail clippers first. So, if you have an invention that could be commercially successful, contact an attorney and have them assist you with the preparation and filing of your patent application.
Less Expensive
The second reason many inventors choose to file a provisional application instead of a regular patent application is the low cost of filing a provisional patent application. Filing a provisional patent application currently starts at $70. This is attractive for many applicants who don't have the budget to pay for nonprovisional patent application fees that start at $430.
Easier to Prepare
The third reason some inventors file a provisional patent is due to the ease of preparing a provisional patent application. Provisional applications require less information than nonprovisional applications, which require formal claims. That said, inventors should not assume that they don't need to take the time to properly prepare a provisional application.
This is so because if you want to use the early filing date secured by a provisional application, the invention you disclose in your regular, nonprovisional application has to be the same one you described in your provisional application.
If the patent examiner looks at both application and determines that the inventions are different, he will not allow the nonprovisional application to claim the earlier filing date of the provisional application.
Extending Your Patent Term
Since applicants of provisional patents have the option of filing a nonprovisional patent application that claims priority to an earlier-filed provisional application. Doing this allows inventors to extend the patent term by up to 12 months. This is so because the patent term starts at the time of filing the nonprovisional patent application and the provisional application.
Do Provisional Patent Applications Require Drawings?
The USPTO does not require that provisional patent application include drawings, but including them is a good idea to help explain your invention and describe its scope to the patent examiner. Drawings are often worth a thousand words, so having them is, in most circumstances, beneficial and essential to having a strong provisional application. For more about this check out this article on drawings for provisional patents.
Can You Ammend a Provisional Patent Application?
A provisional patent application can be amended, however, an applicant cannot add new matter to what the applicant initially disclosed. Basically, you cannot add any new improvements to your invention to your patent application.
If you have anything new that you want to add, you can either (1) add it in your nonprovisional patent application, but it will most likely not get the benefit of the early filing date of the provisional. The second option (2) you can file a new provisional patent application that includes the improvements and/or changes to the invention and your priority date will be the date of filing the new provisional patent application. For more great information on amending a provisional patent application, check out this awesome article.
Does a Provisional Patent Application Need Claims?
A provisional patent application does not need to include formal patent claims. In fact, many inventors choose to file them because of the fewer requirements to prepare a provisional application. That said, inventors should spend the time to thoroughly and completely describe the invention for which they want to obtain a patent.
As mentioned previously, the description in a provisional application may become super important later down the road, especially if someone files a patent application for the same invention after you've filed your provisional application. Check out this great and informative article on including patent claims in a provisional patent application.
Does a Provisional Patent Application Get Published?
By now, it should be apparent that a provisional patent application is not published and remains secret at the patent office. Just remember, to obtain a patent, an inventor must either file a nonprovisional patent application or convert his provisional application into a nonprovisional application within 12 months of filing a provisional application with the patent office. If you have any general questions or comments, please feel free to leave them in the comments section below.
What is the Benefit of a Provisional Patent?
If you're an inventor and you're working on an awesome invention, you might be wondering about patenting your invention. You may have done some research and you may have come across provisional patents as an alternative or stepping stone to filing a nonprovisional patent application. Filing a provisional patent application does offer some benefits that make it a great choice for many inventors. We will cover the benefits in more detail below.
What is the Benefit of a Provisional Patent?
The main and most attractive benefit of a provisional patent is that it helps inventors secure an early filing date for their invention. In the United States, it's really important for inventors to secure an early filing date for their invention.
We say this because the patent system awards inventors who are first to file their invention and not the first to invent. So, while someone may have been the first person to invent something and someone else invents the same invention later and file a provisional patent application. The second inventor who filed first is in a better position than the first inventor even though the first inventor created the invention first.
That said, there are some other benefits of filing a provisional patent that we will cover below. Let's cover the other reasons that inventors choose to file a provisional patent application instead of just filing a regular, nonprovisional utility patent application.
Ease of Preparation and Cost
Some inventors choose to file a provisional patent application because of the lower cost associated with filing it instead of a regular patent application and the relaxed requirements of preparing a provisional application vs a nonprovisional application.
That said, because of the ease of preparing and filing a provisional application, some people underestimate the importance of having a well-prepared provisional application. We are here to tell you, that just because a provisional application is easer to prepare and cheaper to file, this does not mean that you should rush through it and not give it the same type of attention that you would give a regular, nonprovisional application.
We say this because inventors typically file a provisional application as a placeholder in time until they are ready to file a nonprovisional application. This is so because provisional application will never turn into patents.
The problem with having a poorly drafted provisional application arises when it comes time to file a regular patent application. This is so because the invention that you describe in your nonprovisional application has to match the invention that you described in your provisional application.
If the patent examiner looks at both applications and notices that you poorly described your invention in the provisional patent, he may determine that the invention in the new application is new, prohibiting you from benefiting from the early filing date of your provisional application. So, what's the takeaway? Spend the time and hire an attorney to prepare your provisional application because if you don't the consequences could be severe.
Patent Pending Designation
Many inventors choose to file a provisional patent application because it's the cheapest and quickest way to be able to label your product as patent pending. At the moment an applicant files a provisional patent application, he can begin to label his product, packaging, and materials as patent pending. Labeling a product as patent-pending is good for marketing a product and so many people apply for a provisional patent to get that patent-pending designation.
Provisional Patents Can Extend the Term of Your Patent
By now, you probably know that to get a patent, filing only a provisional patent application won't get you one. To get a patent after filing a provisional application, you need to file a nonprovisional patent application within 12 months of applying for your provisional patent. So, how does this affect the patent term?
Applying for a provisional patent can extend the patent term by a maximum of 12 months. This is so because when applicants file a nonprovisional patent application that claims the benefit of an earlier-filed provisional application, you get the earlier priority day and the patent term starts at the time of filing the nonprovisional patent application.
So, you're basically getting an additional 12 months of protection by choosing to file a provisional application first. This is where having a well-prepared provisional patent application pays off.
Finding Investors
Many inventors choose to look for investors while their provisional patent application is pending at the patent office. Having an invention that is patent-pending is attractive to some investors because it shows them that the inventor has taken some legal steps to protect the invention so that if they choose to invest in the invention, there is a provisional patent application in place to protect their investment.
Does a Provisional Patent Offer Protection?
Unfortunately, patent rights do not kick in until the patent office grants a regular, nonprovisional patent application. While your patent is pending, you do not have the right to stop others from using, making, and selling the invention you're seeking to patent.
If the patent office approves your nonprovisional application, you will be able to stop others from using, making, copying, and selling the invention that you were able to obtain a patent for.
Having said that, don't be discouraged from filing a provisional patent application because it can reserve an early filing date for your invention which could become incredibly important down the road, especially in a situation where you file a provisional patent and some files a patent application for the same invention.
So, if you have an invention that you want to protect, contact your attorney and have them advise you on the best course of action for your specific situation.
What Does An Inventor Need to Do to Get a Patent?
After filing a provisional patent application with the USPTO, to get a patent, an inventor must either file a nonprovisional patent application or convert a provisional patent into a nonprovisional application within 12 months of filing the provisional patent application.
If an inventor fails to file a nonprovisional application or convert a provisional application within the 12 month grace period, the inventor will be prohibited from obtaining a patent.
That said, most inventors go with the option of filing a nonprovisional patent application that references a previously filed provisional patent application to benefit from the early filing date of the provisional application.
How Long Does a Provisional Patent Last For?
A provisional patent application typically lasts for 12 months, there are some situations where you can extend that period, however, it's very rare so don't count on it. If you want to obtain a patent for your invention, you must either file a nonprovisional application or convert your provisional patent application into a nonprovisional utility patent application within 12 months of filing your provisional patent application.
Can a Provisional Patent be Extended?
Generally, a provisional patent cannot be extended, however, the patent office does allow an exception if you file a nonprovisional patent application within 14 months of filing your provisional application. That said, this is a risky option and you should know that it costs a lot of money. So, file your nonprovisional patent within the 12 month grace period and save yourself the time and money involved with filing it late. We have a full article on extending a provisional patent here.
Provisional Patent Benefits
By now, it should be quite apparent that filing a provisional patent application does have some benefits, such as securing an early filing date, using the patent-pending designation, extending the patent term of your invention by up to 12 months. That said, if you're an inventor and you've filed a provisional patent application, make sure that you file your nonprovisional patent application within the 12 month grace period.
Just remember that if you have a patent pending and have not yet been granted a patent, you will not be able to others from using, making, copying, and selling your invention until the patent office grants your patent application. that said, if you have any general questions or comments, please feel free to leave them in the comments section below.
Can a Provisional Patent Be Sold?
Inventors often obtain a provisional patent before applying for a (regular) nonprovisional utility patent because provisional patent applications require less work to prepare and generally cost less. So, a question that we often get is: can you sell a provisional patent? We will answer this below.
Can a Provisional Patent Be Sold?
A provisional patent can be sold. In addition to selling a provisional patent, an applicant can license the rights he has under his provisional patent application to another party. If an applicant wants to sell his provisional patent, he needs to execute a patent assignment, which is basically a document that's drafted to transfer the ownership of the patent from the applicant to the party that purchased the provisional patent application.
So, what should be included in the patent assignment document? For a patent assignment document to be valid, it should list the inventors of the invention, as well as the party to which the provisional patent application is going to do.
The party that's transferring its rights away is known as the assignor and the party that is receiving the right to the provisional patent application is known as the assignee. Provisional patent applications are usually assigned from employees to the company for which they work.
That said, a transfer of ownership can occur between any two parties, the parties do not need to be an employer and employee, but the inventor(s) listed in the patent application must be the party that transfers its right of ownership, as such the party or parties assigning (transferring) their rights must sign the assignment agreement. This is because the rights of the assignors are the ones that are being impacted by the agreement.
So, does an inventor have to do anything else after executing the assignment agreement? Yes, after executing the assignment agreement, the agreement should be recorded with the USPTO to reflect the assignment of interests in the application.
How Much Does It Cost To Transfer a Provisional Patent?
Now that you know that you can sell your provisional patent application, how much does it cost to execute and record an assignment agreement? If you're having an attorney draft the assignment agreement, they may charge you a small fee, however, recording an assignment agreement with the patent office is free of charge if you do it online.
To record a provisional patent application assignment, you need to head over to the USPTO Assignment Recordation Branch. You can submit the assignment agreement, as well as a recordation cover sheet.
If you choose to record your assignment by submitting a paper application to the patent office, they will charge you $40 to record the assignment. Save yourself the money and the hassle of going to the patent office and submit the assignment online.
Speak to an Attorney
If a company or individual has approached you to purchase your provisional patent application, contact an attorney and ask them how to proceed. Your attorney may recommend to license your rights under the provisional patent application instead of giving up all your rights under the provisional patent application. The only way you'll know what to do is by contacting an attorney and giving them the specific facts of your case.
Getting the Best Price For Your Provisional Patent
Often times, inventors believe that because a provisional patent application requires less detail and costs less that they shouldn't invest too much time in its preparation. That's a mistake. Inventors, especially those who want to sell a provisional patent, should take the time to prepare it by thoroughly and broadly disclosing their invention.
Doing so will make the provisional patent application broad enough so that if the inventor or party to which the inventor sold the provisional patent, it can benefit by filing a nonprovisional (regular) patent application that relates back to that earlier filed provisional patent application.
This is so because for an inventor to benefit from the early filing date of a provisional patent, the patent disclosed in the nonprovisional patent application has to be the same one disclosed in the provisional patent. If the patent examiner determines that the two inventions are too different, he won't allow the applicant to benefit from the early filing date.
That said, having a strong provisional patent application benefits the inventor in two ways. First, if the inventor chooses to file a nonprovisional application, he won't run into difficulties with the inventions not matching.
Second, if the inventor has a strong provisional patent, he might be able to find a buyer that will pay a decent amount of money for it. Whereas if the provisional application is weak, the buyer might be turned off by that fact. So, have an attorney prepare a strong provisional patent application.
Conduct Research to Understand the Value of Your Provisional Patent
If you have a provisional patent you want to sell but don't know how to price it, conduct market research, see what products are selling for and price yours accordingly. If you don't have the skills to perform market research, you can hire a company to conduct this search for you.
You can also contact companies that may be interested in your invention, pitch your invention to them, and see if they're interested or not. If they're interested look at what their products are selling for and you should have a better idea of what your invention is worth.
If you have a strong provisional patent application that you want to sell, don't be afraid to negotiate with them. Don't undervalue your invention especially if it solves a problem that other inventions don't.
Selling and Recording a Provisional Patent
By now, you should know that patents, even provisional patents can be sold. Typically parties conduct the sale process by executing an assignment agreement, transferring the money to the party selling the provisional patent, and then recording the assignment agreement with the patent office. Recording the assignment with the USPTO is free if it's performed online, otherwise, if you choose to file a document the patent office may charge you a small fee. If you have any general questions or comments, please feel free to leave them in the comments section below.
