Provisional vs. Non-Provisional Patent Application: What is the Difference?

Provisional vs. Non-Provisional Patent Application: What is the Difference?

by Joe Runge, Esq., October 2015

The dog just won’t leave you alone during dinner. Exasperated, you place the heel of your sandwich into an old plastic jar and let her push it around the floor. Watching her slide it around the kitchen floor - it hits you: your eureka moment!

A good invention is rare. That flash of genius is fleeting so be ready to protect it when it comes. Lesson one: the difference between provisional patent and nonprovisional patent. Filing a provisional patent application gives inventors flexibility to quickly protect an invention. The provisional patent application is just the beginning and you will need a non-provisional patent to protect your flash of genius.

Knowing the difference between a provisional patent application and a non-provisional patent application will help you learn more about the process of filing a patent, the expected costs of protecting your invention and how to use both provisional and non-provisional patent applications to protect your rights in a smart way.

For example, as you watch your dog try to chew the side of the plastic jar you realize that if the jar had holes of just he right size it would be just right: big enough for her to taste the sandwich but small enough to stop her from snatching it. How do you know what size those holes should be? You sit down and sketch out some holes and slits and go to work testing which one works best.

What is a Provisional Patent?

In the United States, inventors can file provisional patent applications. A provisional patent application will never get a patent issued for your dog toy. It only lasts for one year and gives the inventor an opportunity to conduct more research or finish the invention before filing a non-provisional patent application. A provisional patent application also costs a lot less to file.

For your dog toy, you can spend that year testing slits and holes of different sizes to figure out which ones work best for which dogs. The provisional patent application form is very loose. Filing a provisional patent has very few formalities. You can sketch out the jar, describe different kinds of jars that would work for your invention, and include as many variations on holes, slits or any combination of the two.

From the day you file, you will have a year to convert your provisional application. Conversion involves filing a non-provisional patent application that includes a reference to your provisional patent application. In that way, a good provisional patent definition is a placeholder. It holds a place in line for your future non-provisional application.

Be careful. If you find a design for a slit or a hole that was not included in your provisional patent application and add it to the non-provisional application then you may lose the benefit of the provisional application. The provisional only holds the line for the invention as you described it in your provisional application. Anything new that goes into your non-provisional application will have to go to the back of the line.

The result will be hybrid patent: some parts will be invented the day of the provisional filing, others the day of the non-provisional filing. The provisional patent application needs to anticipate as many different ways of practicing your invention as possible in order to give you the flexibility you need to write a good non-provisional patent.

What is a Non-Provisional Patent?

If a provisional patent application is simple, informal and quick to file then a non-provisional patent is the opposite: long, complicated and difficult to file. The non-provisional application form is very long. It contains many parts and the parts have many rules. A good non-provisional patent definition is a formal din-ner: it is long, has many parts, lots of fussy rules and you will get in trouble if you break just one.

Unlike the formal dinner, all the non-provisional application is worth the hassle. Unlike a provisional pa-tent application, a non-provisional patent can issue into an enforceable claims. Your dog toy with the specific pattern of slits and holes is only protected once your non-provisional patent is issued by the United States Patent and Trademark Office (USPTO). Then, if anyone makes a toy with the same pattern, they are infringing your patent.

Which one Should You File?

File both. For example, you have a good idea of the range of possible hole and slit patterns that will work for your dog toy. If you include them all in the provisional application then you have a year to test as many as possible. You can start to make drawings for your non-provisional application based on the patterns that keep the dog occupied.

You can also use that time to find a partner to produce your toy. You can show the toy around at the dog park and see if other dogs like the same patterns. You can email it to the business development office at pet toy manufacturers. You have a year to work on your patent, finding out:

  • Does your invention work? 
  • Does anyone want to make the products it protects? 
  • Is it worth the expense and hassle of a non-provisional patent application.?

Provisional and non-provisional patents are very different tools. When used together, they are a great way to make the most of your invention and get the most valuable patent possible.

When you are ready to get a patent, or provisional patent, LegalZoom will help. By answering a few ques-tions in our online questionnaire about your invention, we’ll help you complete the application and file it with the USPTO. We can even get you in touch with patent illustrators and patent agents that can answer specific questions about your application.