Your New “Patent” is Not Really a Patent: Key Differences Between Provisional and Non-Provisional Filings

You’ve worked hard, lightning struck, and you’ve got a great new idea. Everyone, from solo inventors to multinational corporations, wants to be the sole provider in their market. Of course, the vaunted Holy Grail of innovation, the issued patent, grants 20 years of monopoly-level control over a claimed invention. However, any cost-conscious businessperson may come across a “patent” filing that is significantly cheaper than other filings when shopping around. Now that you’ve found an affordable patent filing, you’re ready to capture that lightning in a bottle – right?

Unfortunately, too many inventors start down the road of patent prosecution with the wrong type of filing. When these inventors refer to filing a “patent,” they’re actually referring to a “patent application.” More specifically, they typically want a “nonprovisional utility patent application” that will be examined by the United States Patent and Trademark Office (USPTO) for patentability. Knowing these magic words can help you avoid filing a patent application that doesn’t properly protect your invention, or even worse – a filing that will never issue into a patent.

Many inventors are not aware that the provisional application is merely a placeholder for a follow-on non-provisional application. In fact, a provisional filing will never issue, or even be reviewed by the USPTO without further action. The inventor must be diligent to ensure that a non-provisional application claiming priority to the provisional is filed within one year of the provisional filing date to benefit from the provisional filing date. Therefore, attempts to cut costs on the initial filing by choosing a provisional over a non-provisional may merely delay the additional cost of the non-provisional until the following year.

Please note that, in spite of these drawbacks, a provisional application can have its time and place. I’ll discuss situations in which a provisional can be beneficial in a coming post.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law