What is the difference between a provisional and non-provisional patent application?
The short answer is: a whole lot!
Don’t worry in this article I break it down for you! In addition, about halfway down this blog, I have created a visual diagram that helps you better understand the difference.
Most of the 100+ pages of the law for patent application requirements are only applicable to nonprovisional patent applications.
So, if you want to go wild and learn about what’s required directly from Section 600 of the MPEP, click here to get started.
The image below shows what you will find… a little intimidating right? Don’t worry in this article I help break it down for you. (Keep reading…)
For your visual learners here is a funny video that helps explain the difference! I highly recommend you at least give it a quick glance.
General Overview Between NPA and PPA:
For the 99% of you that didn’t click that link (trust me, even I didn’t want to click that link!), a nonprovisional patent application (which I’ll abbreviate as “NPA” here) is easier explained in terms of what is not as opposed to what it is (which is a beast).
Thus, a provisional patent application (which I’ll abbreviate as “PPA” here) may contain far less than the NPA. So let’s start by fully describing what goes into a PPA, and then talk about the big jumps.
When discussing the patent application process, I love to show people the following flowchart as I do think it explains the big steps with some simple bullet points and an easy to follow a timeline. Here it is:
Now, to simplify things down from 13 steps to just 2 (yes, only two!) core aspects of a provisional, I’d say keep these in mind: specification and drawings.
That’s it! The heart of the provisional lies in the “enabling disclosure” as mentioned above in the green chart.
Step C: Non-Provisional Patent Application Process (NPA)
Step C above, shown in pink, is the NPA process.
The key takeaways there is that the NPA mustbe filed no later than 1 year (12 months) from the date of the PPA being filed. It’s also worth noting that the PPA is not required, and in some cases, it’s more efficient to just file the NPA straight away (more later).
The primary motivation for the law to be structured in this way is to make sure that the inventors (if they are seeking to get that reward that is the patent right) don’t procrastinate, or else their invention rights might just go to the next inventor who independently comes up with it!
As many of you already know, the America Invents Act (which became effective in 2013) changed our patent system from a “first to file” to a “first to invent” (see Public Law image below):
Therefore, this law made it very important to file your patentright away when you have it figured out in enough detail.
Of course, there is always that gray area — you may be wondering, “How detailed does it need to be figured out?” before filing it. Well, my friends, that’s why you need a patent attorney!
I was going to use an asterisk (*) on many of these, but by the time I got done with the chart, I had about five asterisks (*****, believe it or not!) because there were so many that required further explanation and clarification.
Instead, I linked out each section above to other blog articles I wrote.
In addition, I’m going to go through each of these categories below, so you can get a more full appreciation for the nuances!
Novelty/nonobviousness: Make sure no one else has already published, filed, or patented your invention or an obvious version of something that’s published, filed, or patented.
Determine scope: Be sure that you’ve considered the prospective scope of rights in terms of market size — it might not be worth getting a patent even if you could!
Solid foundation: The search results will help your patent attorney write a very focused, high-quality patent application — otherwise, they are just writing about your invention at a surface level.
Whether you’re filing a provisional or nonprovisional, make sure do the patent search, but more importantly, meet with a patent attorneywho will be able to give you a legal opinion on whether you should (and how to) proceed with a patent application.
Depending on the technology area, the patent attorney will advise you as to whether to file a provisional or nonprovisional.
Generally, a provisional application is recommended after doing a patent search when there is a need to secure the priority date. Why is that? Here are some of the reasons it may be needed:
1-year statutory bar date is coming up(if sold or published prior to filing, you only have 1 year to file a patent application in the US)
A need to disclose the invention to public(trade show is booked, presentation scheduled to prospective buyer or licensee, etc.)
There is a known 3rd-party inventor or entity that is thought to be innovating in this same space.
It can also be a good idea to file a provisional patent application if the technology is underdeveloped, and more prototyping, feedback, development is necessary in order to fully flesh out the invention.
There are risks when filing too early — in that if you disclose the invention in the provisional, but then add new matter(discover new features or improve the invention after filing) in such a way that the original provisional doesn’t disclose sufficiently, you’ll have to file a new provisional, or you will not be able to make a claim of priority to the earlier filed provisional.
How long does it take to prepare?
A PPA can take 4-6 weeks to do correctly.
This process includes an invention disclosure and assessment of any patent search performed to properly scope the invention. The majority of the time while putting together a PPA consists of laying out a broad disclosure to cover as many variations, embodiments, or versions of the invention as possible.
The drawings can also take a large amount of time. Drawings are a foundational point of any invention, especially if what is being claimed is physical and three-dimensional.
Thus, making sure the invention is thoroughly explained in writing and in drawings and pictures is important.
An NPA can take twice as long (8-12 weeks) if starting from scratch, because on top of all of the specification (written description) drafting, it needs to have all of the following formalized sections:
None of these sections are required to be labeled as such in PPA. Plus, there is additional formalization in formatting, style, and pagination required for an NPA which can take up a decent chunk of time.
On top of the formalization of the NPA, what tends to take the longest are the claims.
The claims are the heart of a utility patent and are the numbered set at the very end of the patent document (after the written description). These claims are what the inventor is stating they own, and what no one else has done before them.
Note that the time for a NPA can be cut in half if a PPA was filed prior to it — especially if the PPA was drafted by a patent attorney with the eventual NPA in mind. Typically an NPA can be done in just 3-4 weeks if that same patent attorney that wrote the PPA is writing the NPA.
What about years of pendency?
This is an easy one. PPAs are (by law) only allowed to be pending for 12 months. Meaning, as soon as they are filed, no more than 12 months may go by before it goes abandoned.
Abandoned? Now, there’s no need to worry: there is actually a way to revive an abandoned provisional patent application, and in so doing, you may actually seek to file a nonprovisional for up to 14 months (within 2 months — see red highlight below) after filing a provisional, but only if the delay was unintentional!
NPA durations vary widely and wildly.
As soon as an NPA is filed, there are at least a million things that can happen that could change the trajectory of the duration of pendency.
Some examples include: which art unit the application gets assigned to, the backlog, whether the government will shut down, whether the examiner finds prior art, whether legal argument is used, amendments, evidence, or interviews.
PPAs take about half as much effort as NPAs. That’s why the fee is half!
With PPAs, the focus is on the written description and drawings, whereas the NPA is focused on updating the specification, formalizing the application, and drafting drawings.
The patent process is organic, but to the extent possible, I’ve heard nothing but positive feedback with providing flat fees. It’s usually a big number, but at least it’s predictable.
I couldn’t imagine trying to assist inventors and billing them hourly. Having them think twice about calling or emailing me about their invention for fear they would be charged? That’s just wrong.
What about USPTO fees?
This fee range is always subject to change. The best place to go is the USPTO.gov and visit their fee webpage – it’s comprehensive, and the key is that it is always the most up to date.
You can see where I got the pricing for the PPA here:
For an NPA (utility filing), there are several line items that will add up depending on entity size.
Entity size is important as it will potentially help you save some money on filing.
The USPTO recognizes that not all inventors are from large companies! They provide small businesses (“small entities”) and individuals with low income (“micro entities”) lower or decreased filing fee costs.
Here is where you will find the best place to go visit for current requirements to see if you qualify for reduced USPTO fees is here.
Small Entity Qualification (50% of regular entity fee):
Is independently owned and operated
Is not dominant in the field in which it is bidding on government contracts
Meets any applicable criteria for a particular industry concerning number of employees (usually less than 500) or annual receipts (usually less than $7 million) or annual profits (usually more than $2 million)
Affiliated with institution of higher education (e.g. college professor)
Don’t forget to double and triple check these fees in case they change! That will affect your patent cost overall.
As you can see, there are some key differences between a provisional and nonprovisional patent application!
Hopefully, this clears up some of those differences for you and you are now much more knowledgeable about the patent process.
When in doubt, it is always best to consult with a patent attorney before making your move as an inventor.
If you have any additional questions or need clarification on any of the points discussed in this article, please feel free to call or book a consultation today!
Tell us… did this give you a better understanding of the differences between provisional and nonprovisional patent applications? What surprised you the most about the process? Tell us in the comments — we’d love to hear your feedback!
Legal Note: This blog article does not constitute as legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.
Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.