(203) 809-9490 - Send a Message - Schedule an Inquiry Phone Call - on the Homepage

Signed in as:

filler@godaddy.com

Account

Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights.

Nonprovisional Application versus Provisional Application

Explanation of Why a Nonprovisional Patent Application is Filed

A nonprovisional patent application is used to apply for a utility patent.

A utility patent is a patent which protects the functionality or usefulness of an invention. Most people think of a utility patent -- when thinking about the general idea of "I want to get a patent." The reason being is that having a utility patent allows the owner of the patent to exclude others from using the invention for the life of the utility patent, which is 20 years from the filing date of the application. Also, a utility patent can encompass a physical object, chemical, or process -- and the invention can be defined where the patent will protect more than one version of that invention -- or in other words multiple embodiments of the invention. For instance, if an invention is defined by the claim, "An apparatus comprising, a hollow cylindrical member, where the hollow cylindrical member is attached to a writing tip." -- then the patent will protect embodiments of the invention -- or versions of the invention -- such as a very thin cylindrical member or very wide cylindrical member - or a writing tip made from graphite or a writing tip made of chalk.

How a Provisional Application Can Establish the Contents of a Nonprovisional Application

In general a provisional patent application, can be used as a precursor for a nonprovisional application. A provisional application is filed and then wiithin 12 months after the provisional application is filed, a nonprovisional application is filed -- where the nonprovisional application uses the filing date of a provisional application as the effective filing date of the nonprovisional application.

A Provisional Application is Simpler and Requires Smaller Patent Office Fees

A provisional patent application requires less information in the application which reduces the time needed for preparing the application. Also, the Patent Office fees for a provisional application are less than a nonprovisional application.

Difference in Parts of a Nonprovisional Application Versus a Provisional Application

A nonprovisional patent application contains two main parts:

a description of the invention; and
claims.

A provisional patent application contains one main part:

a description of the invention.

Difference in Fees for a Nonprovisional Application Versus a Provisional Application

Patent Office fees for a nonprovisional patent application: $455

Patent Office fees for a provisional application: $75

(Pricing for micro entities. Pricing is double for small entities and 4 times for undiscounted entities).

Reasoning Why a Provisional Patent Application is Filed Before a Nonprovisional Patent Application

Generally, a provisional application is filed before a nonprovisional application because of the cheaper cost of preparing a provisional application -- while allowing the applicant to attach the term "patent pending" to the invention within the provisional application -- and gaining a priority date for the invention -- which allows the applicant to test the market by publicly disclosing the invention without the fear of someone else claiming earlier rights to the invention.

The cheaper cost occurs because only a description needs to be prepared - and no claims. Claims are required for a nonprovisional application.
"Patent pending" is a term which is used to indicate that a patent application has been filed for an invention. The term of "patent pending" can be used if either a provisional or a nonprovisional application has been submitted.
A priority date is the date when a particular application was filed -- and if necessary the applicant can use that priority date for the purpose of showing the applicant has patent rights over another person because the applicant filed first -- which is the deciding factor for determining patent rights between patent applicants for the same invention. This is called the "first to file" system.

Reasoning Why A Provisional Application Should Not Be Filed Before a Nonprovisional Application

Some people believe that overall better -- and more complete -- patent rights will be obtained if a nonprovisional patent application is filed only -- instead of filing a provisional application and then filing a nonprovisional patent application later.

The reason for overall better patent rights occurs because a nonprovisional patent application requires the applicant to submit a description of the invention and claims. A provisional application only requires a description of the invention. For a provisional application, money is saved in preparation time because the claims do not have to written, but not thinking through what will be the claims can be a problem. Many times only when properly thinking through individual claims -- and different strategies behind the structure of the claim set -- will the invention be fully realized.

If a nonprovisional application is filed after a provisional application, any element in the claims in a nonprovisonal application must have been described in the provisional application, which the nonprovisional application is based off of -- in order for those elements in the claims to be allowable.

No new matter can be added to a patent application after it's original submission.

If the provisional application is filed -- and does not include something which is important -- then that element cannot be later added to the claims in the nonprovisional application when filed.

Therefore, thinking through the claims before writing the description is important -- which is a very good reason for only writing and submitting a nonprovisional application. Many times a proper work up may not be completed during provisional application drafting -- by thinking to the next step of the claims -- because there is the added pressure of reducing costs by only working on the description and not the claims.

Attorney Advertising. This website is for informational purposes only and is not legal advice. Using this site or communicating with the Law Office of John B. Hudak, PLLC through this site does not form an attorney-client relationship. An attorney-client relationship shall be formed only after an Attorney Engagement Letter is sent by the law office to the Client. Please do not share any unsolicited confidential information with our law firm by email or phone. This site is legal advertising. Copyright © 2024