If you have an invention you are interested in patenting, one of the first decisions you make is whether to file a provisional or a non-provisional patent application. A provisional patent application allows you to start the patenting process before you are ready for the U.S. Patent and Trademark Office (USPTO) to examine your invention. In contrast, a non-provisional patent application begins the examination process that can ultimately lead to an issued patent. A provisional application holds your place in line and, once you are ready for the USPTO to examine your application, you follow the provisional application with a non-provisional application.
Applying for patent protection requires you to make strategic decisions informed by federal patent law, so inventors typically consult patent counsel before filing. Jones IP Law helps inventors, entrepreneurs, and businesses throughout Brooklyn and New York protect new ideas through thoughtful patent strategies. Whether you are developing new technology at the Brooklyn Navy Yard, launching a startup in DUMBO, or bringing a new product to market from Industry City, I help you evaluate your invention, prepare strong patent applications, and pursue meaningful intellectual property protection.
How Does the Patent Application Process Work?
If you want to protect an invention, you can apply for a patent from the USPTO. To determine whether your invention is patentable, a USPTO examining attorney completes a patent examination. The examiner compares your invention to prior art, meaning previously disclosed inventions with similarity to yours, and determines whether it satisfies the legal requirements for patentability. If the examiner identifies issues, the USPTO generally issues an Office Action explaining the objections or requesting additional information. After you and your attorney respond, the examiner continues reviewing the application. If your application ultimately satisfies the patent laws, the USPTO issues your patent.
When you begin to prepare your application, you select between two options: filing a provisional vs a non-provisional patent application. Generally, if you are ready for the USPTO to review your invention, you file a non-provisional patent application, which begins the patent examination process. If you know you will eventually want to patent your invention but need more time to refine it or prepare your complete application, you can first file a provisional patent application.
What Is a Provisional Patent Application?
Sometimes, you know you want to pursue a patent but are not yet ready for patent examination. You may still be refining your invention, preparing technical documentation, seeking investors, or planning your product launch. Provisional patent applications are available at that stage of the process. Rather than waiting until your application is completely ready, you can file a provisional application.
By filing the provisional application, you establish your intention to patent and put others on notice that you claim the invention in the application. After you file, you typically have up to 12 months to prepare a non-provisional application to begin patent examination. When you later file your non-provisional application, the USPTO generally treats your invention as though you filed on your earlier provisional application date rather than your later non-provisional application date.
What Benefits Does a Provisional Patent Application Provide During the Application Process?
One of the primary provisional patent benefits is flexibility. A provisional application establishes a filing date without beginning patent examination, allowing you 12 months to assemble a complete application. During that time, you and your patent attorney can:
- Refine your invention to distinguish it from similar inventions;
- Prepare a more complete specification and supporting drawings;
- Develop patent claims (the descriptions of what your patent covers) that accurately define the invention you want to protect; and
- Evaluate commercial opportunities, licensing arrangements, or investor interest before patent examination begins.
When you are ready, you file your non-provisional patent application, and the USPTO begins examining your invention.
How Does a Provisional Patent Application Affect Patentability?
An invention must be novel (new) and not obvious to be patentable. To determine whether an invention is new and non-obvious, the examining attorney compares your invention to prior art. Prior art includes:
- Earlier patents,
- Pending patent applications,
- Publications,
- Existing products, and
- Other publicly available information relevant to your invention.
If the examining attorney determines that someone else already disclosed the specifics of your invention in prior art, your invention is not patentable. In general, only information that existed before your filing date qualifies as prior art against your invention.
Filing a provisional patent application also puts others on notice that you claim the invention you described in that application. In effect, you can create prior art that might prevent others from claiming the same invention.
When to File a Provisional Patent Application
Since a provisional application does not initiate the formal patent examination process, it is technically optional. As a result, many inventors wonder when to file a provisional patent application. You may benefit from filing a provisional application if you:
- Expect to continue refining your invention over the coming months,
- Want to put others on notice about your claim to the invention,
- Still need investors to support your use of the invention, or
- Need additional time to prepare a thorough non-provisional patent application.
A provisional application is necessarily the first step in a broader patent strategy. To formally pursue patent protection, you must file a non-provisional application before the 12-month filing period ends.
What Is a Non-Provisional Patent Application?
Filing a non-provisional patent application initiates the examination process, which can ultimately result in an issued patent. The non-provisional patent application generally describes the invention as completely as possible.
After you file, the USPTO assigns your application to a patent examiner, who determines whether your invention is patentable. If your application qualifies for protection, the USPTO issues your patent, giving you enforceable legal rights to prevent others from using, making, selling, offering to sell, or importing the claimed invention without your permission.
Contact Jones IP Law
Whether you begin with a provisional patent application or file a non-provisional patent application immediately depends on your invention, your business goals, and where you are in the development process. An experienced patent attorney can help you evaluate those factors and choose the filing strategy that best supports your long-term goals.
Jones IP Law helps inventors throughout Brooklyn and the greater New York area make those decisions from the outset. Whether you are preparing your first patent application or expanding an existing patent portfolio, I can help you develop a filing strategy, prepare strong applications, and pursue lasting patent protection. Reach out to learn more.
Legal References Used to Inform This Page
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