Provisional Patent Applications vs. Non-Provisional Patent Applications

We receive many inquiries about the advantages/disadvantages of filing a Provisional Patent Application instead of immediately filing a Non-Provisional Patent Application.

The primary benefit of electing to file a Provisional Patent Application is receiving an immediate filing date which can provide an applicant immediate "Patent Pending" protection for their invention, drawings, photos and/or written disclosure(s).

Undoubtedly, provisional patent applications filed by the inventors themselves (so-called "pro se" applicants) will have too little disclosure, inadequate drawings, and will be missing the proper nomenclature basis for drafting broad claims. If an inventor is able to properly docket the one year time limit to file the non-provisional utility patent application, they will have to take the provisional application to an experienced patent attorney who will more than likely have to address a number of problems, including:

a) correcting problems for a fee, which fee may be on par with the cost to file a proper utility patent application;

b) a decreased likelihood of obtaining the allowance of the best claims possible. In this last regard, it should be noted that there is a "new matter" prohibition. The new matter prohibition will prevent adding anything to the non-provisional patent application that is not disclosed in the provisional patent application.

In many cases, the disclosure of the pro se provisional patent application will be entirely inadequate to support the claims the applicant truly deserves by comparing his or her invention to the closest prior art. If products embodying the invention have already been on the market in the United States for more than one year, it will be too late to correct the situation with a properly prepared patent application. Thus, unless applicants have less than a week to file and cannot otherwise delay filing due to a filing bar deadline, it is highly advisable to file a standard non-provisional utility patent application instead of a provisional patent application. If, however, at the end of the one year grace period an applicant can only afford to file a provisional patent application, then perhaps the filing of a provisional patent application is a better alternative than forfeiting one's U.S. patent rights.

Usually, it is advantageous to file the U.S. patent application at a time when the preferred embodiment of the invention functions as much like the planned commercial product as possible. This improves the chances that the patent claims will cover the commercial product, and gives applicants a significant psychological advantage with a jury in a patent infringement lawsuit. The best strategy is usually to file a U.S. non-provisional utility patent application as soon as possible and then file a so-called Continuation-in-Part (CIP) patent application in the United States Patent and Trademark Office while the former application is still pending in order to include any later developments.

By filing in this manner, applicants may avail themselves of the best of both worlds, namely, early priority and the preservation of both U.S. and foreign patent rights, while ensuring maximum coverage of all embodiments and features. If you follow this strategy, you should file the CIP in the United States Patent and Trademark Office as an International patent application under the provisions of the Patent Cooperation Treaty (PCT).

Please contact our should you have any further questions.

Chicagoland Intellectual Property Attorney | 5 Bellwood Drive | Barrington, IL 60010