A common question I receive from inventors and decision makers at Start-ups is whether they should file a provisional patent application or a non-provisional patent application for their new invention. There are benefits and detriments to both ways of beginning the patent process for an invention, which in some industries may be more important. Below are some factors that you may consider. As a patent attorney, for most small start-ups dealing with software and mobile applications I recommend filing provisional applications for many of their inventions.
1) Formality Cost (Winner: Provisional Patent Application)
Provisional Patent applications do not have the same formal requirements or the same governmental fees for filing patent application. By first filing a provisional patent application and later converting the patent application to a non-provisional patent, Applicants can save initial costs, and determine whether or not they have a market base and/or resources to file the full provisional application.
Filing Fees: To file a provisional patent application, start-ups only need to pay a $130 government filing fee, whereas filing fees for a non-provisional patent application are $800. Therefore, if start-ups are working on a couple of different inventions where only a subset of the inventions may be marketable after a year, the company can save a lot of money on government filing fees by filing only provisional applications and deciding whether to convert the applications in a year.
2) Figures/drawing cost (Winner: Provisional Patent Application)
Formal figures are not required to be filed with provisional patent applications. Therefore, standard photographs/hand drawn sketches may be submitted when filing provisional patent applications. This is unlike non-provisional patent applications where formal drawings must be submitted. Formal drawings typically cost 200-500 for mechanical inventions, but significantly cheaper for software or mobile applications inventions.
3) Total Attorney’s Fees (Winner: Non-Provisional Patent Applications)
The initial costs to file a provisional application are much cheaper than costs to file a non-provisional application. Yet, the total costs to first file a provisional application and then convert the application is more expensive then filing the non-provisional application from the start. This is because attorneys will need to conduct a second inventor interview to determine if any additional items are needed to be included into the provisional. Before the inventor interview, the attorney will need to review the patent application so he can understand the invention once again. This is because patent attorneys handle 100-200 cases a year, whereas inventors may only handle 2-3. Therefore, if nothing else for an attorney to review the application again, and proceed with the claims, the application will take more of the attorney’s time.
4) Infringement period (Winner: Based on market)
Granted patent applications are given a monopoly for 20 years from the filing date of the non-provisional application. However, patent protection is only vested upon a patent being granted. Therefore, if there is not a strong market for your product and the product will be around for a while, it may be advantageous to 1) file a provisional application, 2) let your company’s market share grow, 3) file the non-provisional application. Accordingly, your company may have a longer period of time where it can enforce the patent when your there is a larger market for your product. However, if the product is not going to be around for a long time period (such as a mobile application video game) or there is already a large market for your invention, then it may be beneficial to expedite the process to obtain patent protection and file directly a non-provisional patent application.
5) Are you going to make improvements? (Winner: Provisional Patent Application)
Provisional patent applications are given a year before they need to be converted over into full non-provisional patent applications. If a company is going to make improvements to their invention, then it may be in their best interest to file a provisional and include the improvements at a later date. The priority date for the later improvements will be the filing date of the conversion application, while the priority date for the original invention will be the first date. However, for large companies their inventors typically do not have the time to make improvements on their inventions. Therefore, larger companies typically file non-provisional applications because there are not going to be improvements on their marketed product.
6) Speed (Winner: Provisional Patent Application)
Because provisional patent applications do not have the same formal requirements as non-provisional patent applications they can typically be filed quicker. This is because assignments and declarations are not required to be signed by all inventors to obtain a filing date or have formal figures completed. Because of the America Invents Act (AIA) and the first-to-file system, the speed to have a priority date can be crucial. Furthermore, by having at least provisional priority rights to an invention, inventors and patent attorneys can then take a longer time to fully flush out the patent application, while having some sort of protection.
7) Patent Portfolio Management (Winner: Non-Provisional Patent Application)
A detriment to filing provisional patent applications is that they must be managed and converted within a year. For companies this management of provisional applications may be daunting. For example, if your company is a small start-up filing one application a month. By filing provisional applications, the next year you will have to manage 2 patent applications per month. If there is not a dedicated IP staff to handle the patent applications, then the start-ups managing partner may have to expend double the time managing their patent portfolio and responding to patent attorney’s emails concerning the patent applications currently pending. For fortune-500 companies that file 100 patent applications a month, provisional applications may not be feasible or cost efficient because they may have to hire an additional in-house patent attorney to manage their pending provisional patent applications.