Non-Provisional v. Provisional: What's best?

April M. Mosby, Esq.

One of the first issues an inventor or business owner must be clear on is discerning the difference between a Provisional Patent Application and a Non-provisional Patent Application. The differences are simple; yet, substantial. A Provisional Patent Application is like a snap-shot of a system at a particular point in time, which may change in the future. You as the inventor are free to change the design, converting your patent application to a Non-provisional one. This Non-Provisional Patent Application, however, is fixed. It is the application that includes claims that define the boundaries of your innovative concept. This is one that will be examined

1 – Provisional

A Provisional Patent Application (PPA) by inference refers to an innovative concept as it is presently arranged, which can possibly be changed later. This is what makes it a Provisional Application, as the definition of provisional implies. This type of application enables you to "save" the filing date, so to speak; which will cover the arrangement that you filed for up to 12 months. It expires after the 12 month period. This buys you time to assess the marketability of the product or further enhance your concept. Within the 12 months, you may file a Non-Provisional patent application on the same disclosure. In the alternative, you may add to the disclosure any improvements by filing a Continuation-in-Part Application; yet, only the disclosure submitted with the Provisional will benefit from the filing date of the same.

Some choose to file a PPA immediately before a need to offer their innovative concept for sale or to publish a paper on their innovative concept in a technical or scientific journal. This is due to the rule that stipulates that your invention cannot be known by others more than a year prior to filing for a patent application. More importantly, it may be best to file the your innovative concept prior to the knowledge of others, so that you can be first to file the patent application.

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2 – Non-provisional

As noted above, the filing of a Non-Provisional patent application initiates the process for examination of your innovative concept. This is what distinguishes the Non-Provisional from the Provisional. That is, your Non-Provisional application gets placed into a queue to be examined by an Examiner. This is the type of application you choose when you are sure that you have adequate time and finances to finish the process. Some decide on a Non-Provisional when they are certain that their innovative concept can be fully captured within the application and/or they are confident about the market. There are numerous factors. It may be best to discuss with a patent attorney to determine what's best for your business.

There are three types of Non-Provisional patent applications: Design, Utility, and Plant. Design patents focus upon the ornamentation (e.g. a handbag design); while utility patents are all about function (e.g. engine, computer processor, etc.). Plant patents are granted to anyone who has invented or discovered and asexually reproduced any distinct and new variety of plant.

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About the Author

April M. Mosby, is the founder of Monarch IP Group, PLLC. With over 20 years of Patent Prosecution and Appellate experience preparing, prosecuting, and maintaining over 300 domestic and international patent applications (drafting over 60 Prevailing Appeal Briefs and over 600 Amendment Responses), April has protected client’s products and services in a timely cost-efficient manner with several Fortune 500 clients and various others. During her tenure on the Patent Trial and Appeal Board of the USPTO, she drafted over 500 Appellate Decisions. Her current practice also includes Trademark Prosecution and Copyright Prosecution. Additionally, she has substantive experience in Patent Licensing.