As an inventor with a new product idea (or improvement to an existing product), it’s important to understand the various types of protection that are available to you. Let’s assume that your idea provides benefit and usefulness (not just a visual design). You might consider filing either a non-provisional patent (“Utility or Design Patent”) or a provisional patent application.
Choosing which type of application should be based on individual circumstance, personal preference, and financial considerations, and the choice will vary from one inventor to another. The following are five benefits of filing a Provisional Patent Application before filing a Utility Patent Application:
1. Lower cost
A provisional patent application can often times be prepared and filed for less than $600, where the preparation and filing of a typical non-provisional application can cost $5,000 and up, depending on the complexity of the invention.
2. Easy to File
The application and process is significantly less complex than a non-provisional application and can even be done by inventors themselves if they take the time to understand how to complete a thorough application.
3. Immediate “Patent-Pending” Status
Since the patent office does not review or approve provisional patent applications, inventors can immediately use the term “patent-pending” once the application has been filed.
4. Provides 12 Months of Further Development Time
Although the provisional patent application is not a substitute for ultimately filing a non-provisional patent application, it provides the inventor with 12 months of valuable time to further develop or market the invention. Why spend thousands on filing a non-provisional application only to realize later that you need to make changes to your invention or that your invention is not going to sell/license. You can use the 12 months to figure out if this expense is worth while or if you do find a company to enter into a license agreement with you, try to negotiate for the company to cover some or all of the cost of filing a utility patent.
5. Establishes Priority Date
Once your application has been filed, you have established a priority date for your patent. This means that when and if you file a utility application, you will be able to claim the original provisional filing date.
After You File a Provisional Patent Application…
It’s important to understand that even if you file a provisional patent application, you will still need to file a non-provisional application down the road if you wish to maintain patent protection. Think of the provisional patent application as a possible step in the patent process, but not the final step.
The provisional patent application establishes the filing date but does not start the USPTO review process. The provisional patent application provides a measure of protection for 12 months from the filing date and expires unless you file a utility patent application before the 12 months are up.
Whichever direction you ultimately decide, remember that research and self-education are invaluable to your success not only at this beginning stage, but also as you progress in the process of inventing.