Entrepreneur's Toolkit - Obtaining U.S. Patent Protection
Consider the Options
Assuming you have decided that patent protection is right for you, your next step should be to determine what type of patent protection you want to seek. When people think of patents, they typically think of utility patents (patents that protect function), but other common types of patents include design patents (protecting ornamental designs applied to products) and plant patents (protecting asexually propagated plants). You might consider other patent-like rights, or use the USPTO IP Identifier Tool to help you decide.
Process Options (Utility Patent)
Once you decide that a utility patent is the right option for you, the next step is to determine whether to start the process with (a) a provisional application, (b) a nonprovisional application, or (c) an international application under the Patent Cooperation Treaty (a PCT application).
- A PCT application is most often selected when also seeking international protection. PCT applications are generally more expensive than a patent application in the U.S. only. If you know you will not seek international protection (for reasons such as cost or target market), you probably won't select a PCT application. On the other hand, if you're not sure whether to seek international protection, a PCT application preserves that right in most countries for thirty months from your earliest filing date.
- A provisional application is a relatively inexpensive placeholder application. It is informal, is not examined, is not published, and only becomes publicly available for inspection if a nonprovisional application is published and claims the benefit of the provisional application. People sometimes talk about having a "provisional patent," but that is a misnomer. A provisional patent application can never mature into an issued patent on its own. It can only hold your priority date (date of filing) for up to one year and only if you file a non-provisional or PCT application claiming priority to the provisional application before one year has passed.
- A nonprovisional application is the kind of application that can mature into an issued patent. It has more formality requirements than a provisional application, and the filing fees are greater, to cover the cost of examination for patentability. A nonprovisional application may be the first type of application filed for an invention, or it may claim priority to a provisional application and/or a PCT application, or even a previous nonprovisional application.
The Provisional/Nonprovisional Decision
Since a provisional application can never mature into an issued patent, some might ask why people file a provisional application. There are several reasons to consider doing so:
Your invention is still under development
If your invention still needs additional development or research, you might choose to file a provisional to protect what you know now without committing to the full process. During the year the provisional is pending, you can conduct additional research and development to ensure that the eventual nonprovisional patent is focused on the key inventive and/or marketable concepts.
You want to lengthen the term of patent protection
The patent's lifetime or term is calculated from the date the nonprovisional application is filed. By relying on a provisional application, you can effectively gain up to one year of extra protection at the trade-off of a delay before your patent issues and becomes enforceable. This can be particularly important in fields where other approvals are necessary to market your invention (e.g., FDA approvals for new drugs or treatments).
You want to delay patent costs
A reality of entrepreneurship is that money is often especially tight early on. By filing a provisional application first, you can delay the cost of complying with the formality requirements of a non-provisional application for a year. A caution though, your provisional application must still adequately disclose the invention to obtain the benefit of the early filing date.
You want to delay the patent process for reasons other than cost
Reasons can include such things as seeking time to further research the invention, allowing a market to develop so you can focus the nonprovisional application on the most-important aspects of the invention, evaluating the value of the invention and whether it merits the cost of protection, and allowing your business to develop and strengthen.
You need to be able to make a disclosure
Many times, a need for a nonconfidential disclosure arises on short notice. While careful planning can limit most time-crunch situations, sometimes protection is needed quickly. Because a provisional application can be filed without complying with many formalities, it can be filed quickly, often within a single day.
You're worried a competitor is close to making a discovery
Sometimes not every aspect of your invention has been validated to the point where you're ready to file a formal nonprovisional application. Nevertheless, especially in crowded fields, you may worry that a competitor is close to doing or discovering something similar to your invention. A provisional application can protect what you know now while you finish perfecting the invention.
There are drawbacks to and things to be aware of when starting with a provisional application:
Added delays
The patent process is long as it is. Filing a provisional first can delay issuance of your eventual patent, thus delaying your ability to prevent competition in the market.
You may save less than you think
The provisional application is only adequate if it properly discloses your invention, otherwise, you might not be entitled to claim priority to it. So you might still want to spend money with a patent attorney drafting a strong provisional.
Overall costs may increase
While costs can be delayed with a provisional, at a minimum you will incur the extra filing fee of the provisional application. If an attorney is involved, there can be additional costs for drafting and filing at the provisional stage and at the nonprovisional stage.
Provisional applications are not examined
There is value in the knowledge received during examination of what has been done before. When you file a provisional application, you do not gain this knowledge.
You can't cut corners
Informal does not mean minimalist. A provisional application still has to include all the relevant disclosure and information for you to obtain the benefit of the early filing date.
One Typical Process (Ongoing Development)
- In a typical process faced by innovators and entrepreneurs, development is ongoing, but a point is reached where it makes sense to lock in a filing date. For example, disclosures are going to be made to potential investors to seek additional funding, and confidentiality cannot be guaranteed, or you're ready for your first sale of prototype product. Accordingly, you decide to prepare and file a provisional application. If funds and time allow, and if the invention is worth it to you, you have a patent agent or patent attorney prepare the application and file it for you. Your one-year clock starts ticking.
- Five months later, you have feedback from your initial efforts and the ongoing development has resulted in a startling improvement over what you originally included in the provisional patent application, without leaving the original technology behind. As a result, you decide to file another provisional patent application. This process of preparing and filing new provisional patent applications on improvements can happen repeatedly during the year after filing of the first provisional application.
- Approximately eleven months after filing of the first provisional application, you speak with your patent attorney or agent and begin preparing your non-provisional application that will wrap in all the ideas of the first provisional application and all the ideas of each provisional application filed since then. You make sure you give your agent or attorney plenty of time to prepare a good application and plenty of information to know what to focus on.
- On or before the twelve-month anniversary of filing of the first provisional application, your patent attorney or agent files either or both of (1) a U.S. non-provisional application claiming priority to all your provisional applications and (2) a PCT application with a similar priority claim. Your patent application is then at step 2 of the process described here.
- Eighteen months after the date of filing of the first provisional application, your application will be published as a published patent application, and all applications to which you claim priority will become publicly available.