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 JD hoovener founder and owner here at bold Patton’s 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 pan 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 withdrawings 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 a 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 is that what are the actual requirements and timelines for that well the provisional application is intact and remains patent pending from the 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 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 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 month is up you want to start on your non-provision 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 pad 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-provision 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 underway forecast some of those changes adaptations and what we call alternative embodiments in the provisional so we can anticipate some of those details that will eventually be fleshed out in that year of pendency so the major differences like I said 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 right do it yourself inventors get in trouble is they will file their own provisional and they’ll probably keep it very narrow on you know they didn’t realize right not their fault they didn’t go to you know 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 right 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 it’s 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 JD Hoover 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