Thursday, May 27 2021

Full Patent Protection vs. a Provisional Patent Application

by Traskbritt

The cost savings of filing a provisional patent application without consulting a professional are certainly tempting. However, such a strategy may ultimately cost more in the long run, including possibly costing valuable patent protection.

What is a Provisional Patent Application?

A provisional patent application allows a patent applicant to reserve priority in an invention before committing to the full utility patent application process. A provisional patent application is temporary and only lasts one year before a non-provisional patent application must be filed, or the application will lapse and expire. It acts as a placeholder so an inventor can delay upfront costs of pursuing a full patent application while seeking additional funding, performing further testing of the invention, and determining its usefulness and value. If, for example, an applicant discovers that the invention is not worth pursuing, the applicant can allow the provisional patent application to expire without incurring the more substantial costs associated with filing and prosecuting a full non-provisional patent application. 

If an inventor has already done the legwork to determine that the invention is worthwhile, filing a provisional patent application may be an extra and unnecessary cost. In that case, skipping the provisional patent application and going straight to a non-provisional utility patent application may be a cost-saving measure. 

The United States Patent and Trademark Office (USPTO) does not evaluate provisional patent applications for patentability. However, applicants may legally mark products with “patent pending” as soon as any kind of patent application is filed, including provisional patent applications. Marking a product with the phrase “patent pending” does not provide any enforceable legal protection, but it can be useful in giving competitors pause before copying your product or service, and in improving investor and customer perception of an invention or product. 

Reasons to File a Provisional Patent Application

Keep Trade Secrets Secret

Provisional patent applications are not published if they are not converted into full non-provisional patent applications. An inventor may decide to keep an invention disclosed in a provisional patent application as a trade secret instead of filing for full patent protection before the end of the one-year provisional patent application term. If a provisional application is not followed by a non-provisional patent application claiming priority to the provisional patent application, the disclosure to the patent office will remain unpublished and confidential. Therefore, filing a provisional patent application may be useful if a company needs extra time to determine what type of intellectual property protection to pursue while maintaining priority in its invention.  Inventors should be aware, however, that if a provisional patent application expires without converting it to a full non-provisional patent application within a year, the inventors will lose the priority date of the provisional patent application if they later file a subsequent patent application for the same invention.

Filing Date

Another important function of a provisional patent application is to quickly obtain a filing date. In 2011, Congress passed the America Invents Act which changed the United States patent system from a “first-to-invent” to a “first-to-file” system. This means that instead of determining which inventor was first to come up with an idea, courts simply look at the date the application was filed to determine who has priority. For this reason, filing dates are extremely important in patent law. Whoever has an earlier filing date has priority over all others, even if someone else had previously and privately made the invention. It is therefore a race to file a patent application. Since provisional patent applications do not need claims and the formal requirements are less stringent than they are for non-provisional patent applications, they are cheaper and may take less time to draft. Many patent applicants will ask a patent attorney to quickly file a provisional patent application to acquire priority over others who might be close to filing patent applications for the same or similar inventions.  As long as a proper provisional patent application is filed, a subsequent non-provisional patent application may claim priority to the provisional filing date, beating out any other applicants that may file for a patent to the same invention. 

Patent Term Extension

Filing a provisional patent application does not start the clock on a utility patent’s 20-year term. Rather, the patent term is calculated from the filing date of the subsequent, full non-provisional patent application. Therefore, a non-provisional patent application claiming priority to a previously filed provisional patent application effectively extends the expiration date of the resulting patent by one year.

Delay Costs

As previously mentioned, provisional patent applications are generally cheaper and take less time to draft as compared to full non-provisional patent applications. The costs associated with converting a filed provisional patent application to a full non-provisional patent application in combination with the costs of filing the provisional patent application may be on par with filing a full non-provisional patent application in the first place. The portion of the costs for preparing and filing the non-provisional conversion patent application, however, may be delayed for nearly a year. In addition, since a provisional patent application is not examined, an applicant can guarantee that examination will not take place for at least a year from the filing date of the provisional patent application if a whole year is waited to file the subsequent full non-provisional patent application. As a result, costs associated with the examination process (e.g., responding to rejections and objections from the USPTO) may be pushed further into the future than if a full non-provisional patent application were initially filed. Delaying these costs can benefit businesses of any size.

Cost Differences between Provisional and Full Non-provisional Patent Applications

As of the date of this post, the fee to file a provisional patent application ranges from $75-300 depending on the size of the filing entity. The filing fee for a non-provisional utility patent application may range from $455 for a micro-entity to $1,820 for large entities. Of course, these are just the administrative USPTO costs and do not include the fees that an attorney may charge to prepare and file a patent application. Attorneys generally must spend a great deal of time drafting quality patent applications due to the legal and technical complexity involved. As stated by the United States Supreme Court, “[t]he specification and claims of a patent … constitute one of the most difficult legal instruments to draw with accuracy.”  Topliff v. Topliff, 145 U.S. 156 (1892). Provisional patent applications require the same substantive level of disclosure of the invention as full non-provisional patent applications but do not require a set of claims. The drafting of claims, which are the legal boundaries set by the patent, is one of the most time-intensive activities of the patent-drafting process. Thus, although most patent attorneys will spend substantial time drafting a quality provisional patent application, the lack of a full set of claims generally means that provisional patent applications cost less than full non-provisional patent applications. 

Once a non-provisional patent application has been filed, the USPTO will examine the patent application, search the prior art to see if another has already invented the subject of the patent application, and make a determination of patentability. Usually, a patent application is rejected at least once because a patent examiner believes that the invention is not new, or is obvious. A patent attorney will review the rejection and respond to the Office, with amendments to the claims if necessary. This may happen more than once, with additional fees due to the attorney for each response. 

If a patent application is allowed, the applicant must then pay an issue fee of $300-1,200. Shortly after payment of the issue fee, the applicant becomes a patent owner with rights to exclude others from using, making, or selling the invention. But, the costs associated with owning a patent continue with three maintenance fees due during the life of the patent. These patent maintenance fees increase with each iteration, adding up to a total of $6,730 for small entities and $13,460 for large entities. The longer a patent owner keeps his or her exclusive right, the more expensive it becomes. 

While the costs to draft, file, prosecute, and maintain a utility patent may exceed $20,000-$30,000, many inventors find that obtaining a patent is a worthy investment that pays large dividends over the life of the patent. 

Can I Draft My Own Provisional Patent Application?

It may be tempting to draft and file a provisional patent application without consulting a professional to avoid some of these costs, but this is not advised. A poorly drafted provisional patent application or even a well-written provisional patent application that was written by one that is not aware of the multitude of possible legal pitfalls may limit a patent owner’s ability to enforce a patent against infringing competitors. Additionally, a bad provisional patent application cannot always be saved by a quality utility patent application since any material in the subsequent non-provisional patent application that is not disclosed in the provisional patent application will not receive the benefit of the provisional patent application’s early priority date. 

Be sure to consult a patent professional before doing anything that might jeopardize any future intellectual property protection. The registered patent lawyers at TraskBritt will help you know how to proceed, whether that means drafting a provisional patent application or going straight to a non-provisional patent application. Contact us today.