This article helps inventors and companies understand the difference between a provisional and a non-provisional patent application.

1. Summary

Two Types of Utility Patent Applications:

2. Comparison of a Provisional Patent Application and a Non-provisional Patent Application

This article covers provisional and non-provisional utility patent applications. For the different types of patents, see Three Types of Patents.

Only a non-provisional patent application can become a patent. A non-provisional patent application has many formal requirements and is examined by the U.S. Patent and Trademark Office (USPTO). As the USPTO examines a non-provisional patent application, the USPTO fees are higher for a non-provisional patent application compared to a provisional patent application.

Generally, a utility patent expires 20 years from the non-provisional patent application filing date. There are mechanisms to extend the expiration date of the patent for delays at the USPTO and the Federal Drug Administration (FDA).

A provisional patent application can be thought of as a one year placeholder for a non-provisional patent application. The U.S. is a first-to-file country. This means that if multiple entities file patent applications for the same invention, the first entity to file with the USPTO is awarded the patent. A provisional patent application generally allows a patent application to be filed earlier which can put the inventors at the front of the line for patent rights.

A provisional patent application has few formal requirements. As there are few formal requirements, a provisional patent application may have lower legal fees to prepare.

Generally, we follow three paths when filing provisional patent applications:

- File the inventor's documents after we review. This could be an inventor's documentation, a paper that is about to publish, a presentation, etc. A provisional patent application must contain enough technical detail that others with the skills of someone in the field of the invention can make and use the invention.

- Write as if a non-provisional patent application except for a few broad claims. We tend to use this route when the inventors or company would like to file the patent application in other countries. Other countries may not be as inventor friendly as the U.S. is with informal provisional patent applications.

- Write as if a non-provisional.

As the USPTO does not examine provisional patent applications, the USPTO fees are less.

Multiple non-provisional patent applications may be filed. For example, a provisional patent application may be filed in March and another provisional patent application filed in September, and then a non-provisional patent application filed the following March that incorporates both the previous March and September provisional patent applications.

A provisional patent application allows part of the patenting cost to be deferred but increases the overall patenting cost compared to only filing a non-provisional patent application. In other words, a provisional patent application plus a non-provisional patent application costs more than just a non-provisional patent application.

Both provisional patent applications and non-provisional patent applications allow the invention to be marked "patent pending." The patent application must still be pending for the invention to continue to be marked as "patent pending." A provisional patent application is pending for one year from the filing date and a non-provisional patent application is pending so long as the patent has not issued and the patent application has not been abandoned.

3. Guidelines to Determine between Provisional Patent Application and Non-provisional Patent Application

The following are some of the factors we consider in helping clients decide between a provisional and a non-provisional patent application. Depending on the specific situation of the inventors and/or company, some of these factors may not be considered and additional factors may be included.

Note: a non-provisional patent application must be filed within one year of filing a provisional patent application.