Provisional or non-provisional application | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Provisional or non-provisional application

If you’ve done a little research in anticipation of filing your first patent application you’ve no doubt encountered the terms ‘provisional’ and ‘non-provisional’ and aren’t quite sure which is the better route for you to take. Unfortunately, there’s no one answer, but these few points should help you decide.

First, you probably already know that provisional applications and easier to draft and therefore cheaper but will never actually become a patent. You can’t sue someone for infringing your provisional application. I think of a provisional as a ‘save the date’ card. It’s not quite a full invitation, but it saves the date. Provisionals are good for a year, if you file a non-provisional application during that year, you can claim priority to disclosures made in the provisional to avoid things like prior art that can come up later.

Say, I file a provisional describing a new coffee brewing system on January and followup with a non-provisional application on the same system in December. If someone comes up with the same system in May and files a patent application it doesn’t matter. I get to tell the patent office to consider January to be my filing date and I’d get the patent. Similarly, I can start selling my system after the provisional is filed and not worry about those sales prohibiting me from getting a patent.

Provisionals are usually a lot cheaper than a non-provisional. If a non-provisional would cost $10,000 then a provisional might cost half that or less, depending on the invention and how much work your attorney needs to do. A later non-provisional building on the provisional will recycle some of the earlier filing, but will need to conform to additional requirements and contain claims. Often a non-provisional will also expand upon any background story disclosed in the provisional. Depending on how much needs to be added to the provisional, the cost for the non-provisional will come out somewhere under the $10,000 number quoted earlier. The final price for a provisional and non-provisional is going to be more than it would be for just a non-provisional because there are some duplicate fees, and it’s going to take time to add whatever needs to be done to get an application ready for examination.

When I draft provisional applications, I’m assuming we’ll file a non-provisional later, so I put more work into the provisional than necessary, so I don’t have to do it later. If anything, I under bill for provisional applications and sometimes I’ve gotten burned with that. So, lets say I tell you the cost for a full application is $7000; a provisional might be around $3500, and a later non-provisional might be $4500. So, it’s more in total, but it’s spread out over a year.

The question is: do you need that year? If you’re ready to launch but need the money from sales to pay for a full application, then opt for a provisional and followup when sales start coming in. Similarly, if you’re booked at a trade show next week and you want to show off your product, a provisional is probably the way to go because it’s easier and faster to get on file.

Sometimes you have an invention almost there. You know it will work, but you’re not sure exactly how you’re going to do something. A provisional lets us describe what you have sorted out to save the date and then the final engineering can come later. If the addition turns out to be another invention, that will probably go into a separate application of it’s own.

A provisional can also be more attractive to potential investors. I know, it sounds crazy. I would think people would rather invest in a business with an issued patent, but often investors will want a business to use their preferred lawyers and a provisional lets you save some money upfront and still lets investors have their say on what happens to the intellectual property. I’ve had that happen with clients before, which can be annoying because I put a lot of work into provisional applications, expecting to file the non-provisional and someone else comes in and piggybacks off my work. But, I’m cool with it if it’s in the client’s best interest. I guess if I wasn’t, I wouldn’t tell you about it.

On the other hand, if your invention is ready to go and you have the money for a non-provisional application, it makes sense to save the money you would have otherwise wasted by filing two applications. Similarly, if you don’t want or need large investors then you don’t have to plan how to keep them happy.

If you’re not sure which way to go, or you need to have a better handle on prices before you decide, contact your friendly local patent lawyer.