When is a provisional patent application preferable over a non-provisional patent application?
If an Inventor believes that market demand exists for their invention and has decided that a patent grant will further their business interests, it is the belief of many patent attorneys that a non-provisional patent application should be filed (rather than a provisional patent application).
Contrastingly, if the there is some uncertainty regarding anticipated market demand, cost of production, profitability, etc., or in some other specific situations (which will be detailed hereafter), it may make more sense for an Inventor to file a provisional patent application initially to “test the waters” with their invention.
As indicated in at least one article published previously on this website which examines provisional patent applications extensively, a provisional patent application filed by itself (without a subsequently filed non-provisional patent application and patent grant) will not provide the Inventor with legal rights. (see MPEP 201.04(b) – Provisional Application)
Specific Examples | Provisional Patent Application Filing is Advantageous
Provisional patent applications are beneficial if one or more of the following situations is applicable:
- Defer Substantial Costs: The professional service and USPTO fees which are incurred in preparing and filing a non-provisional patent application are substantially greater than those related to a provisional patent application. In view of the foregoing, the 12 month priority period (non-provisional patent application must be filed within 12 months of the provisional patent application filing) provides the Applicant with an attractive opportunity to defer these higher costs through the conclusion of the priority period. This additional time (12 months) may be vital for an Inventor who has not met funding requirements or who has not fully investigated the market potential of their invention.
- Preserve Foreign Filing Rights: A situation may arise where a disclosure of the invention in the form of a presentation/paper will occur. If the Inventor desires foreign patent protection, such a disclosure would likely invalidate foreign rights. To avoid such a harsh consequence, a provisional patent application should be filed prior to a public disclosure/use, sale, or offer for sale.
- Preserve Domestic Filing Rights: A situation may arise where a public disclosure/use, sale, or offer for sale occurred a little less than 12 months ago. If there is not enough time to file a non-provisional patent application, the Inventor may elect to file a provisional patent application to avoid loss of rights due to a statutory bar.
- Patent Pending: For individuals who are concerned that their invention may be misappropriated while investigating the market potential of their invention, the “patent pending” designation provides notice to others that the Inventor is seeking legal rights on the subject technology.
Although the foregoing discussion illustrates but a few situations where it may be advantageous to file a provisional patent application, as always, contact a registered patent attorney prior to taking action with an invention.