In this ‘Patent Application Series,’ I’ll be discussing the difference between a provisional and a nonprovisional (utility) patent application. I’ll explain what they are, what to know before filing either, and why they are both important tools for the protection of an invention.
WHAT A PROVISIONAL PATENT APPLICATION IS:
A provisional patent application, as the name implies, is a patent application that is provisional, i.e. it is temporary. It is also not examined by the United States Patent and Trademark Office (USPTO) and never becomes a patent itself. Instead of being examined and granted as a patent, a provisional patent application is essentially a placeholder that can secure a filing date and patent pending status.
The provisional application expires one year from the date it is filed. Before the one-year expiration deadline, a non-provisional application should be filed claiming the benefit of the provisional application filing date. When a non-provisional application claims the benefit of (also known as ‘claims priority to’) the provisional application, this action allows the non-provisional application to claim the earlier filing date as its own. This way, even if a non-provisional application is filed a year after the provisional, its official filing date is the same as the filing date of the provisional application.
NONPROVISIONAL UTILITY PATENT APPLICATION IS:
A nonprovisional utility patent application, as the name implies, is a patent application that is not provisional, i.e. it is not temporary, and it protects an invention with utility, i.e. a useful function. Unlike the provisional patent application, after a nonprovisional patent application is filed, it is examined by an patent examiner at the the USPTO. A nonprovisional utility patent application must undergo this examination (patent prosecution) and ultimately must be allowed by a USPTO patent examiner before the application can be issued as a utility patent.
There are specific requirements that must be met for a nonprovisional utility patent application filing to be accepted and for the invention itself to qualify for protection. The nonprovisional patent application filing requirements are defined by the USPTO. In addition, for an invention to qualify for utility patent protection, it must be confirmed as being either a machine, a process, an article of manufacturing (manufacture), or composition of matter. Alternatively, improvements on existing inventions also qualify for protection. Abstract ideas, laws of nature, and natural phenomena do not qualify for patent protection.
WHAT TO KNOW BEFORE FILING:
Filing either a provisional or nonprovisional patent application does not guarantee a patent will be issued on the invention as it was filed. In most cases, when the nonprovisional utility patent is finally allowed, the issued patent differs greatly from the application as it was initially filed. All of the changes that the application undergoes to become a patent worthy of issuance take place during patent prosecution. The majority of patent applications filed with the USPTO are eventually issued as formal U.S. Patents, but the process is generally a long one and does not always end with an issued patent.
The first step in the process for either type of application is filing an application with the USPTO. Once filed, both types of applications are reviewed for their adherence to the filing-formalities required by the patent office. The USPTO requirements and fees for filing a provisional application are minimal compared to the requirements and fees associated with a formal non-provisional application. That being said, the requirements must be adhered to equally. Filing improper applications, provisionally or nonprovisionally, could mean forfeiting any patent rights.
Both types of applications must be complete at the time of filing. While Amendments are allowed to correct typographical errors, no new matter may be added to either a provisional or nonprovisional application. If a provisional application is drafted without a complete claim set, it may not be clear if filing requirements are met until after the nonprovisional application is drafted with a complete claim set. At that point, it would be too late to add any details to the nonprovisional application and the time and effort spent on the provisional may be a complete loss.
The main difference between these two types of applications is in their result. The provisional application can allow for an invention to claim an earlier filing date, but does not itself result in a patent. The nonprovisional application, after undergoing examination and being allowed by a patent examiner, may issue as a formal patent.
WHY A NONPROVISIONAL UTILITY PATENT APPLICATION IS AN IMPORTANT TOOL:
Both the provisional and nonprovisional utility patent applications are important tools. Provisional applications are important in their ability to provide an invention with a filing date and patent pending status. The filing date is very important now that the U.S. is a first-to-file country, under the America Invents Act. This means that the first inventor to file for an invention with the USPTO is the rightful owner of the invention. Without an official filing date and application number assigned by the USPTO, an inventor could lose their rights to their invention. A nonprovisional application will also provide a filing date and patent pending status, but also has the ability to be issued as an actual patent.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a provisional, nonprovisional or other patent applications.