Patent Attorney and Founder
Do you know the difference between a provisional and a non-provisional patent application? Yeah, maybe you’ve seen it on Shark Tank, but what you really know, which one will lead to a patent.
Hi, I’m J.D. Houvener, founder and owner here at Bold Patents Law Firm. I’m here to break down the differences between a provisional and a non-provisional patent application in the USPTO. So let’s start from the beginning.
A provisional, which is the earliest form of an application, this is one that will not on its own lead to a patent in the end. It is a patent-pending, okay? A provisional only requires that you submit a written specification and submit the application documents. No requirements for drawings nor formality with respect to how the written description is put down. A non-provisional patent application must meet the rigorous requirements of all the written description, the abstract, the figures, the detailed descriptions of the drawings, as well as, of course, the claims which are what the inventor, what the attorney will help the inventor with in drafting a numbered set of claims at the bottom. It must also accompany with drawings if it’s needed to fully describe what the invention is.
Now, don’t get me wrong, a provisional, even though it’s informal and takes, you know, not as long, is just as important to get it right as the non-provisional. And here’s why. When a startup or a new company is entering the field for the first time and they need to test their product, a provisional is a perfect way to go. The reason why is because they may not know exactly how their invention is going to work or what bells and whistles or improvements they may need to add to get it to all the way to the patent stage, meaning what you want to end up with in the end in terms of having patent rights on is what will eventually be sold. So, if you’re not sure what your product looks like yet, you need to test it, sell it, and get customer feedback. A provisional is a perfect way to go.
Now, what are the actual requirements and timelines for that? Well, the provisional application is intact and remains patent-pending from the date of submittal, which is the priority date, till 12 months in the future. You have those 12 months, a full year of time to be patent-pending, to test the product, build it out, get it in the hands of customers, and, in the end, sell it to see if the market is interested in what you’re trying to invent and go to market with. What you can often do during that time period is you can keep all the improvements, all the feedback, all the iterations, the versions, the different materials, the little bits of information that your customers give you when you start selling it during that 12 months.
Now, before that 12 months is up, you want to start on your non-provisional application. We try to urge our clients to start around the nine-month mark so we have that three-month buffer to draft the more refined and detailed non-provisional patent application. So all the findings, all the research, and improvements can go into the non-provisional. Now, what can’t go into the non-provisional or is new subject matter if we didn’t talk about it in the provisional, you can’t claim it in the non-provisional, okay? So that’s why it’s so important to be as broad as possible, to cover as much as you can possibly imagine in the provisional, to do it right so you can anticipate some of those details that will eventually be fleshed out in that year of pendency.
So, the major differences, like I said at the beginning, are the formality-wise. It’s a whole lot less formal. I mean, you can even submit pictures and hand drawings with a provisional, but the written description must be fully enabled, and that’s what a lot of first-time inventors and sometimes DYI, do-it-yourself inventors get in trouble with is they will file their own provisional, and they’ll probably keep it very narrow. They didn’t realize, right, not their fault. They didn’t go to law school or study the patent bar, no patent law, that they will just have one specific version of their invention articulated fully in the provisional during that year, right up to a year pendency.
Now, a non-provisional must be filed, and only thing that can be claimed is that narrow scope that was written in the provisional. So if you want to do it right, make sure you work with the professional, a patent attorney, to get the provisional application drafted well to set yourself up for success when it comes to the non-provisional. Now, that non-provisional, that is a real call to real application that will get examined by the USPTO examiners, and after maybe one or two, sometimes three office actions, that will become a granted patent. So, a patent will give you that 20 years of monopoly that the inventors are owed. They’re sharing with the world their knowledge, their information about what it is they’ve come up with, so that 20 years of monopoly for a utility patent and 15 years of monopoly for a design patent is what you earn at the end of the day. And what’s so cool, right, the perfect thing that can happen is if what you’ve got a patent on is granted, matches what you’re going to market with because that’s where the power is, right? You can enforce and truly own your corner of the market.
Thanks for listening to me. I’m, again, I’m J.D. Houvener, owner here at Bold Patents Law Firm. If you’ve got an invention and you want to know whether a provisional or non-provisional is right for you, click below, subscribe, and schedule some time for the free Discovery call to see if now is the right time to move forward. Take care and have a good day, everybody. Go big, go bold.