How a Provisional Patent Application Can Help You Get Your Idea in Front of the Examiners
How a Provisional Patent Application Can Help You Get Your Idea in Front of the Examiners
Filing for a patent on your invention can seem intimidatingly complex. Not only is the process costly and time-consuming, but it’s also likely to take quite some effort.
Thankfully, there are steps you can take to reduce the cost and time involved in getting a patent. One such step is filing for a provisional application.
As with any patent application, there are costs involved in securing one. These include preparation and examination fees. A provisional patent application can help you delay these fees while testing your invention’s marketability and estimating its worth.
Alternatively, non-provisional patent applications can be prepared and filed at a lower cost. This option is especially advantageous for small businesses with limited budgets who may not have enough funds to file full patent applications.
If you are thinking about filing a non-provisional patent application, here are some things to take into account:
Preparation and Examination Fees
During the patent prosecution phase of the process, your patent attorney will be responding to Office Actions issued by the Patent Office as well as inquiries posed by your patent examiner. This can take a significant amount of time and money.
Due to the United States Patent Office’s overwhelming workload, it may take several years for a patent examiner to review your non-provisional patent application. After they assess your application’s merits, they will decide if approval should be granted.
It is not unusual for a patent examiner to issue either an acceptance or objection at this stage. If you decide to appeal your patent examiner’s decision, however, the costs involved can be considerable.
Many inventors opt to file a provisional patent application (PPA) before filing their full non-provisional patent application. A PPA serves as an interim measure, serving as a one-year placeholder to assess the market. Subsequent non-provisional patent applications must then be filed within 12 months of filing the PPA.
Once a patent application has been filed, you can expect to pay a government filing fee of $530 for small entities and $2030 for large ones. This fee covers both USPTO filing fees as well as attorney’s fees associated with preparing the patent application.
A patent examiner will review your application and issue a Second Action, granting you patent rights. The USPTO will send you notice of this Second Action; you have 30 days to respond, which may include providing additional information or paying an expedited fee in order to expedite examination of your patent application.
In a patent system that is overwhelmed with applications, filing a provisional application can help inventors and investors get their idea in front of examiners sooner. This gives them more time to conduct market tests, assess the viability of their invention, and decide whether or not to pursue full patent protection.
Additionally, they can utilize the term “Patent Pending” to promote their invention and attract investment capital. Furthermore, this serves to demonstrate to potential competitors that they are actively seeking a patent for their product or service.
However, a provisional application can only remain active for 12 months. After that period has elapsed, your application will expire and you no longer have the right to claim its priority date.
The USPTO requires you to file a non-provisional patent application within 12 months after filing your provisional application. This can be challenging without assistance from an experienced patent attorney, so it’s recommended that you work together on this matter with them so you adhere to all guidelines set out by the USPTO.
Another advantage to filing a non-provisional patent application is the flexibility it provides you to add new subject matter later. For instance, if you create new designs or improvements to your product during the course of developing your non-provisional patent application, you can incorporate that information into the document and receive an earlier priority date for your invention.
Additionally, you can add additional claims to your non-provisional patent application in order to highlight the invention’s unique aspects. Doing this makes your patent more comprehensive and increases the likelihood that it will be approved.
Finally, non-provisional applications are much cheaper than provisional ones. This can be especially advantageous for startups that lack the funds to hire a patent agent or cover the high costs associated with filing and reviewing a patent application.
Provisional applications have several advantages. It allows you to test your product in the market before filing for a full patent, potentially saving money in the long run. Furthermore, it serves as an effective way of deciding if getting your invention patent protected is worth all the trouble and expense.
The priority date is the date that determines whether other patent filings or documents qualify as prior art against your invention. It also determines if you can secure both a U.S. patent and an international patent.
Establishing your priority date requires filing a provisional application that fully describes your invention so that someone skilled in the relevant art can make and use it without undue experimentation. This takes considerable time and effort, so only do this once your invention has reached a stage where it can be sufficiently described with precision.
After one year from filing your initial provisional application, it may be wise to file additional provisional applications that may enhance your invention and then claim priority from those modifications in any non-provisional applications that follow. Doing this helps guarantee that the claims of your final patent apply to the earliest possible version of your invention.
Consult with document specialists and licensed patent professionals to review the drafting of your provisional and non-provisional patent applications, which will guarantee that you have properly disclosed your invention in an efficient way. Doing this can help avoid costly errors and delays during patent prosecution.
It is essential that the written description and drawings of your provisional application enable a person skilled in the relevant art to make and use your invention. For instance, if it involves an improved method for operating a computer, then both written description and drawings must be sufficient for anyone skilled in that art to operate it correctly.
If you have an inventor or team of inventors working together on developing your invention, ask each individual to submit a comprehensive written description of their contributions. This could include theses, manuscripts, “Supplementary Materials” sections of journal papers, computer code (with comments), laboratory notebooks, emails, invention disclosure forms and presentations.
Additionally, ensure that each individual grants their patent rights to their employer through an employment agreement or institutional intellectual property policy. This is important because assigning patent rights to your employer could be the triggering event for obtaining both U.S. patents and/or foreign patents.
For start-ups or small businesses with limited resources, a provisional patent application may be the ideal solution. It provides an expeditious and cost-effective way to establish a US filing date for your invention, which you can then claim in a later non provisional application.
Although the USPTO does not specify a format for a provisional patent application, it is still essential that your invention be adequately described and that you indicate your intentions to submit a full non-provisional application. Furthermore, make sure any necessary drawings accompany your invention are included in the application.
Another advantage of a provisional patent application is that it gives you more time to market your invention. This can help determine if continuing down the costly path of patent prosecution is worth it.
You can also take this year to conduct additional market tests to determine if your invention is worth investing in. Doing so will give you insight into how to enhance and make your invention more marketable, potentially leading to increased sales.
If you’re deciding between filing a provisional or non-provisional patent application, two factors to consider should be how quickly your patent will be granted and how long to defer examination costs. While these may seem like incompatible options at first glance, both can actually be beneficial to your business.
For instance, if you plan to secure a patent grant within one year and need to file an NPA by that time, filing the provisional patent application first can delay examination costs by approximately 1.5 years and put you ahead of the competition. Doing this can be advantageous if your goal is to receive your patent sooner rather than later.
However, if you wish to file a non-provisional patent application later, it must be done within one year of the provisional patent application filing date. This can be challenging if your invention has evolved significantly since the provisional application was submitted; thus, seeking professional help to prepare and file the non-provisional application as soon as possible is advised.