Should I file a provisional patent application or utility patent application?

Anyone filing one or more patent applications eventually faces this decision: should I file a provisional patent application or a non-provisional (utility) patent application? Often this decision is about budgets; you want to make sure that you use your budget appropriately in order to protect as much of your intellectual property (IP) as possible. 

In this article, we review the main differences between a provisional patent application and a utility patent application. We also discuss examples and describe how to apply for each. Ultimately, we hope to help you make this decision. 

What is a provisional patent application?

A provisional patent application is an effective, less expensive avenue to begin to protect you or your company’s IP while giving you the freedom to continue researching and developing a given technology more thoroughly. A provisional patent application is not reviewed by the USPTO, and it “expires” after one year from filing. A provisional patent application also establishes a filing date for whatever subject matter is included within the application. It is an excellent way to quickly get an idea filed with the USPTO when the idea needs some further development or when you are racing against the clock, such as before an upcoming public disclosure or publication.  However, the provisional patent application only protects as much subject matter which is disclosed within the application. A provisional patent application is often described as a placeholder or bookmark for a later utility patent. 

Often, companies or persons will file a provisional patent application and then over the next year determine whether it is worth the cost to file a utility patent application. If they decide that the application is worth the cost, they will move forward with spending the money and time to file a utility patent application based on the provisional patent application; on the other hand, if they decide that the application is not worth the cost, they will simply let the provisional patent expire.

Here are some key facts about the provisional patent application. 

  1. Provisional patent applications expire after one year.
  2. Provisional patent applications cannot be extended.
  3. Provisional patent applications cannot be renewed.
  4. Provisional patent applications never become patents by themselves.
  5. Provisional patent applications cannot be filed for a design patent.
  6. The USPTO does not examine or conduct a prior art search on provisional patent applications.
  7. The USPTO does review provisional patent applications to verify they meet minimum filing requirements.
  8. The USPTO does not publish provisional patent applications that are not converted to utility patent applications.
  9. After filing the provisional patent application, you can mark your product with the term “patent pending” during the one-year life of the provisional patent application.

How to apply for a provisional patent

Below are some of the basics of filing a provisional patent application.

You need to include this information in the applciation:

  • Title of the invention
  • Names and residences of all the inventors
  • Address of correspondence
  • Name and registration number of they attorney or agent and the docket number
  • Any U.S. government agency that has a property interest in the application
  • A description of the invention. This can be anything including a written description, photos, a slideshow, drawings, academic papers, etc. There is not a form requirement of the description with a provisional patent application; however, as noted above, the provisional patent application will protect only as much subject matter as is disclosed in the application.

You must include the payment of the fee in your application. Fees change year to year (as of the date of this article, the price is between $70–$280, depending on the size of your company).

Here is the full official fee schedule.

Go here to file online.

Or mail the provisional patent application here:
Commissioner of Patents
P.O. Box 1450
Alexandria, VA 22313-1450

What is a utility patent application

A utility patent application is a traditional patent application. It is the most popular of the three types of patent applications, the others being design patents and plant patents.

You can file a utility patent application for your company to get an actual patent to protect your company’s intellectual property. It is frequently filed after a provisional patent application.

Here are the main parts a utility patent, all of which need to be included within the utility patent application:

  • An Abstract
  • A Specification, which includes the following: 
    • A Title
    • Any Cross References to related applications
    • A Statement Regarding Federally Sponsored Research (if applicable)
    • A Background
    • A Summary
    • A Brief Description of the Figures
    • A Description
    • Claims
  • Figures (i.e., drawings)
  • A Declaration or Oath signed by the inventor(s)

How to apply for a utility patent

The most efficient way to file for a utility patent is filing online with EFS-Web.

Here is the full official fee schedule.

The basic utility patent application filing fee (and necessary search and examination fees) ranges from $430–$1720, depending on the size of your company. 

Filing your patent application

Use the provisional patent application in partnership with the utility patent application: first file for the provisional patent to lock in an early filing date, then use that one-year period to finalize your invention and prepare your utility patent application. 

Trask Britt helps many individuals and companies prepare patent applications every year. We can help you make sure this process is handled properly.