Invention Home Patent vs Non Provisional Patent (Wired)

Invention Home Patent vs Non Provisional Patent

From Wired How-To Wiki

This is part one of a two part series

Idea, invention, innovation and patents are all commonly utilized terms in the rapidly expanding world of inventing. In the past few years, the process of inventing and the prospect of creating new and innovative products have become more popular than ever, with people from all walks of life striving for the next big idea or product improvement. Even popular media has embraced the idea of the inventor and his or her invention, which is illustrated by the creation of TV programs including American Inventor, Fore Inventors Only and Everyday Edisons. Daytime talk show host Ellen Degeneres is known for her love of kid-inventors, and even Oprah Winfrey implemented an invention contest. For many inventors the initial excitement of a new invention idea is inevitably followed by the concern or question of “how to protect the idea.” After the light bulb goes on, it is important to figure out how to best protect the idea, but it is at this stage were one of several inventor dilemmas first occur. After researching the invention, conducting a prior art search and discussing patent options, it is common for inventors to ask the question: Which type of patent should I file, provisional or non-provisional? What’s interesting about this question is that the answer will often vary depending upon whom you ask. Over the years, I have heard a wide variety of opinions from business professionals, inventors and patent attorneys. While some believe that an inventor is better off moving directly into filing a non-provisional patent application, because it is typically more detailed and exhaustive in capturing the embodiment of the invention, others believe that starting with the provisional application is a better way to go, due to the expense and unknown marketing factors that can be associated with the non-provisional patent.

Just as the invention itself is unique, so is the answer to this patenting question. While the decision should be based on individual circumstance and personal preference, it should be made with a clear understanding of the options. The correct choice depends on what works best for the inventor’s particular situation, taking into account financial condition, stage of development, risk tolerance or marketing progress. And, whenever possible, options should be discussed with a registered patent attorney.

“Looking back on the process, I knew that I wanted to file a utility patent right away, but when the time came, I filed a provisional patent because it was much cheaper and I wanted to delay the expense of the utility patent until I was a little more sure of the idea. If cost wasn’t an issue, I probably would have filed the utility right away,” explained inventor Lisa Shaefer.

To begin to understand the answer to this question, one must first look at the question itself, which is somewhat of a misconception. The question “which type of patent should I file: provisional or non-provisional?” seems to imply a belief that each is an independent patent option where one or the other application would be filed. However, in reality, this is not the way the applications work.

When considering the two types of patent applications, don’t think of them as a choice between two, independent types of patents, like choosing between whether to order coffee or tea with dessert. The provisional patent application is not a substitute for filing a non-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 to receive patent protection. Think of the provisional patent application as a possible step in the patent process, but not the final step.

To figure out which direction is right for you, it is important to examine the differences between the provisional and non-provisional patent applications. The non-provisional patent is commonly known as a “utility” patent application. Filing this application establishes the filing date and begins the United States Patent and Trademark Office (USPTO)’s patent review process, which can take 18 months or more to complete. Alternately, 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. A good way to think of this is that the provisional reserves the filing date for you and allows you to claim the original provisional filing date when you file a utility patent application. But, be aware that the provisional patent application does not apply to a design patent, which means you would not file a provisional patent application if you were planning on filing a design patent for your invention.