Navigating the Waters of Provisional vs. Non-Provisional Patent Applications: A Strategic Guide

In the complex journey of innovation, understanding the distinctions between provisional and non-provisional patent applications is crucial for inventors seeking patent protection. This decision not only affects your immediate path but also shapes your long-term intellectual property strategy. Whether you’re safeguarding a nascent idea or a fully-fledged invention, the choice between these two types of patents could influence both your financial flexibility and market position.

What Are Provisional and Non-Provisional Patents?

Provisional Patent Applications: Often considered the initial step, a provisional patent serves as a temporary reservation for your invention with the United States Patent and Trademark Office (USPTO). It’s less formal, doesn’t require exhaustive documentation, and doesn’t undergo a merit review by patent examiners. Importantly, it grants a “patent pending” status for 12 months, offering inventors the flexibility to refine their invention or explore market viability without losing priority.

Non-Provisional (Utility) Patent Applications: The formal step towards securing a patent, this application undergoes thorough examination by the USPTO. It requires detailed documentation, including claims defining the scope of the invention’s protection. Filing a non-provisional patent application is indispensable for obtaining an enforceable patent.  Patent rights can only be enforced with the registration of a utility patent.

The Strategic Importance of Filing a Provisional Patent First

Financial Prudence: Filing a provisional patent allows inventors to stagger the considerable costs associated with the patenting process. It is significantly less expensive than its non-provisional counterpart, providing a cost-effective strategy to secure an early filing date.

Market and Product Development Insight: The 12-month window following a provisional patent filing is invaluable. It affords inventors the opportunity to refine their invention, assess market demand, and seek investment or partnerships with the security of “patent pending” status.

Securing Priority in a First-to-File System: The US adopted the first-to-file system, emphasizing the importance of securing the earliest possible filing date. A provisional patent application establishes this crucial date, protecting the inventor’s priority over others who might file for a similar invention.

Weighing the Pros and Cons

Advantages:

• Cost savings in the early stages of patent prosecution.  The total cost with attorneys’ fees usually is lower.
• “Patent pending” status enhances the invention’s appeal to potential investors or partners.
• The flexibility to refine the invention and assess market potential without losing priority.

Considerations:

• The provisional patent is not examined on its merits, requiring diligence in ensuring comprehensive disclosure to support the future nonprovisional patent application.
• Filing can preserve an earlier filing date as the patent applicant will have a year after filing the provisional application to file the full patent application.
• No patent claims need to be made in a provisional patent application.
• The provisional patent application only defers, not eliminates, the eventual costs and complexities of filing a non-provisional application.
• The provisional patent application does ensure an early effective filing date or early priority date.  
• The regular utility patent application is the formal application with formal drawings of the invention and a detailed description of the invention.
• No new matter can be found in a corresponding nonprovisional application after filing the provisional application.

Making the Decision: Provisional vs. Non-Provisional

Ultimately, the choice between filing a provisional or non-provisional patent application depends on your specific situation—consider your invention’s readiness, financial resources, and strategic goals. A provisional application can be a smart initial move to secure your invention’s place in line while you further develop the concept and seek funding. The provisional patent application needs only sufficient detail so that the utility patent application can be based upon the provisional. However, if your invention is market-ready and you are prepared for the costs, moving directly to a non-provisional application could expedite the patent granting process. The full non-provisional patent application will have the usual formal requirements of the patent application, including at least one formal patent claim. But at the end is a granted patent, not just extra time of one year to file.

You, as the patent applicant, in discussing with your patent counsel, need to balance these needs.  Some provisional applications are close to the utility application.  Some provisional applications only give a bare-bones description of the invention, with all the details to be filled in by the later-filed nonprovisional application.  The patent applicant needs to remember that, in order to keep the priority of the provisional application’s filing date, that the non-provisional utility patent application must be based upon the provisional application and not contain new patentable subject matter.  

Provisional Patent Applications are not Enforceable

A plaintiff will base its patent infringement claim on 28 U.S.C. § 1498, which states:

Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.

28 U.S.C. § 1498(a) (emphasis added). The court notes that the above language of section 1498 covers “a patent,” not a patent application or provisional patent application.

In the case of Stroughter v. United States, 89 Fed.Cl. 755 (2009), appeal dismissed, No.2010–5095, 2010 WL 1687894 (Fed.Cir. Apr. 26, 2010). In Stroughter, the plaintiffs, proceeding pro se, sought damages of $1.25 trillion for infringement of a pending patent application. Id. at 758–59. The court dismissed the consolidated cases for lack of jurisdiction and stated: 

The Court of Federal Claims’ exclusive jurisdiction pursuant to 28 U.S.C. § 1498 over patent infringement claims against the Federal government is conditioned on the issuance of a patent…. As it is a waiver of sovereign immunity, this statute is to be strictly construed…. It does not grant the Court of Federal Claims jurisdiction over a claim for alleged infringement of an unissued patent. See § 1498(a) …; Foster v. United States, 230 Ct.Cl. 938, 938–39 (1982); Fulmer v. United States, 144 Ct.Cl. 812, 838 (1959); Patton v. United States, 110 Ct.Cl. 195, 75 F.Supp. 470, 473 (1948).

Because plaintiffs’ claims allege the infringement of unissued patents, the court’s jurisdiction under § 1498 is lacking.

A provisional patent application is, in fact, authorized by statute. See 35 U.S.C. § 111(b) (2006) ( “Provisional application”); 37 C.F.R. § 1.53(c) (2010) (“Application filing requirements—Provisional application.”). A provisional patent application is not actually examined by the patent office, but serves to establish a patent filing priority date if the inventor subsequently files the standard, non-provisional patent application. These procedures are addressed further at 35 U.S.C. § 154 (2006) (“Contents and term of patent; provisional rights”). If a patent ultimately is issued containing claims that are the same or substantially identical to the claims contained in a published, provisional patent application, then the inventor may obtain royalties from the earlier publication date for the provisional patent application. Section 154(d)(2) states that the right “to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.” 35 U.S.C. § 154(d)(2). Provisional patent rights do not exist independently of the requisite approved and issued patent. 

The benefit of the provisional application is only the lower cost to file it, to have some record of the invention filed with the USPTO, and that it gives a year to file the corresponding non-provisional application.  

Navigating the Patent Process with Care

Regardless of your choice, it’s paramount to approach the patent process with thorough preparation and strategic foresight. Consider consulting with a patent attorney to ensure your application—be it provisional or non-provisional—accurately captures the essence of your invention and lays a solid foundation for your intellectual property rights.

By understanding and strategically navigating the provisional and non-provisional patent application process, inventors can protect their innovations while optimizing their resources and positioning themselves effectively in the marketplace.

Do you have questions about protecting your invention and filing either a provisional or non-provisional patent application? Ask us here at Verna Law by sending an e-mail to anthony@vernalaw.com or by calling us at 914-908-6757.