What is the Difference Between a Provisional and Non-Provisional Patent Application?
One of the key decisions that an inventor needs to make in the patenting process is whether to file a provisional or non-provisional patent application, so understanding the difference between these two kinds of applications is important for inventors. Both of these types of applications serve useful roles in the patent process, but they are two very different kinds of patent applications that create very different rights.
A non-provisional patent application is an application filed with the United States Patent & Trademark Office that is examined by a patent examiner and can potentially lead to the issuance of a patent. It has a number of formal requirements that must be satisfied in order to be accepted by the Patent Office. For instance, it must contain a written description of the invention with sufficient detail to both demonstrate that the inventor has invented something and to explain it in sufficient detail such that one of ordinary skill in the art could practice the invention without undue experimentation. It generally must contain formal drawings that show various embodiments of the invention. It must be accompanied by an oath or declaration by the inventor or inventors that confirms that they invented the invention described in the application. The inventors must also identify all relevant prior art that they are aware of. Finally, it must contain a series of claims, which are what defines the scope of the patent and the protections it provides.
In general, non-provisional applications are complicated documents that must be prepared with extreme care if an inventor wants a patent that will be enforceable and that will product his or her invention to the broadest extent possible. The precise language of the claims is incredibly important, as is making sure that the written description and drawings adequately explain the invention and enable one to make and use it. As such, it takes time (and money) to draft one correctly.
A provisional application, on the other hand, is never examined by a patent examiner and can never lead to the issuance of a patent by itself. Unlike a non-provisional application, there are only two requirements for filing a provisional application—it must contain a written description of the invention and sufficient drawings (which can be informal) to understand the invention. The other formal requirements of a non-provisional application (such as formal drawings, claims, oaths, declarations, and prior art disclosures) are not necessary. A provisional patent application lasts for one year before it expires, and this one-year period cannot be extended.
Because provisional applications are significantly less formal than a non-provisional application, they can be drafted more quickly (and cheaply) and can include more information than is necessary or prudent to include in a non-provisional application. Inventors can literally attach journal articles, PowerPoint slides, photographs, hand-written drawings, etc. to the application, in addition to the narrative that describes the invention.
In order for a provisional application to lead to the issuance of a patent, it must either be converted or it must be appropriately referenced in a non-provisional application that is filed within one year of the filing date of the provisional application (this one-year date cannot be extended).
So, why would one choose to file a provisional application?
So, if a provisional application only lasts for one year and cannot, by itself, ever become a patent, why would anyone want to file one? Under the current patent laws, the public sale or disclosure of an invention before a patent application (either a non-provisional or provisional application) has been filed can act as a bar that prohibits an inventor from being able to obtain a patent on the invention in the future. A provisional application provides a way for an inventor to get an application on file before a key event so as not to prevent him or her from getting a patent later on.
For example, if a company is about to present a new product at a trade show or if an inventor is about to present a paper or give a talk at a conference, the inventor can file a provisional application that contains the materials that will be publicly disclosed, along with a sufficiently detailed write-up of the invention, before that information is disclosed without having to go through the considerable time and effort required to file a non-provisional application.
In addition, in the new first-inventor-to-file regime that exists under the America Invents Act (AIA), it may be prudent for an inventor to file a series of provisional applications as it is refining and developing a new product or invention in order to protect those ideas from another inventor filing in the Patent Office first. A provisional patent application provides a quicker and cheaper means for doing so.
These descriptions give you some idea of the differences between provisional and non-provisional patent applications. Both types of applications serve important roles in the patenting process, and are often utilized in concert—i.e., an inventor files a provisional patent application followed by a non-provisional patent application within a year. As with all the information in our What Is…? series, there is significantly more detail and nuance behind what is described in this article. If you are interested in obtaining a patent, you should consult a patent attorney to help you determine which application is appropriate for the circumstances you find yourself in.