Idea, invention, innovation and patents are all commonly utilized terms in the expanding world of inventing. In the past few years, the process of inventing and the prospects of creating innovative products have become more popular than ever. Even popular media have embraced inventors - witness TV programs such as American Inventor, Fore Inventors Only and Everyday Edisons. Daytime talk show host Ellen DeGeneres is known for her love of kid-inventors, and even Oprah Winfrey launched an invention contest.
For many, the initial excitement of a new invention is inevitably followed by the concern "how to protect the idea." After researching the invention, conducting a prior art search and discussing patent options, it's common for inventors to ask: Which type of patent should I file, provisional or nonprovisional?
The correct answer depends on what works best for the inventor's particular situation, taking into account financial condition, stage of development, risk tolerance or marketing progress. And, whenever possible, options should be discussed with a registered patent attorney.
"Looking back on the process, I knew that I wanted to file a utility patent right away, but when the time came, I filed a provisional patent because it was much cheaper and I wanted to delay the expense of the utility patent until I was a little more sure of the idea," said inventor Lisa Shaefer. "If cost wasn't an issue, I probably would have filed the utility right away."
The question "which type of patent should I file: provisional or non-provisional?" implies each is an independent patent option. This is not the way the applications work.
Don't think of them as a choice between two independent types of patents, like choosing between whether to order coffee or tea with dessert. The provisional patent application is not a substitute for filing a non-provisional patent application. Even if you file a provisional patent application, you will still need to file a non-provisional application down the road to receive patent protection. Think of the provisional patent application as a step in the patent process, but not the end of the journey.
The non-provisional patent is commonly known as a "utility" patent application. Filing this application establishes the filing date and begins the United States Patent and Trademark Office patent review process, which can take 18 months or more.
Alternately, the provisional patent application establishes the filing date but does not start the USPTO review process. The provisional patent application offers a measure of protection for 12 months from the filing date and expires unless you file a utility patent application before the 12 months are up. A good way to think of this is that the provisional reserves the filing date for you and allows you to claim the original provisional filing date when you file a utility patent application.
The reason so many inventors use the provisional patent application process is that it is far cheaper and less complicated than the utility application. It allows inventors to use the term "patent pending" while further developing or marketing their invention.
If your invention changes through your own development efforts or must be changed for manufacturing reasons, these changes can be incorporated into the final utility patent application. In general, utility patent applications cannot be changed after filing. Moreover, the one-year time frame can provide the breathing room needed to market the invention to companies and to get a feel for the market demand. Inventors often back off filing a utility patent application after they market their invention if they receive feedback that convinces them that their idea is not as good as they originally thought.
Another possible advantage of filing the provisional patent would be if you could succeed in finding a good product company or manufacturer during the 12-month period to license your invention and agree to pay up-front money to cover the costs of filing the non-provisional patent application.
For some, such as inventor Scott Carlson, the provisional patent application has become the way to go.
"I have been developing products for seven years," Carlson said. "And now that I have filed eight patents, I always go with the provisional because it's less expensive and it gives me a year to explore market avenues in order to see if the product has any merit."
For others further down the road in the process - those whose inventions are further developed or those whose market research yielded positive response - the route of a utility patent may be a better option.
However, don't assume that just because the provisional patent application is less expensive and complicated that the importance of the quality of the application content is also decreased. It is essential to take the time to thoroughly and accurately complete the application as it applies to your invention.
When it comes to the non-provisional patent application, it is probably not wise to file on your own. Although there are many good books on the topic, the entire process is not as easy as it seems, and even with a good patent-filing book as your guide, more than likely you will struggle to capture the optimal language in the claims section of the application, which defines the overall quality of your patent.
It's in your best interest to rely on the expertise and experience of a registered patent attorney. A good patent attorney should understand how to accurately capture your invention through the claims section of the application and produce a much stronger patent for you in the long run.
Whichever direction you ultimately decide, remember that research and self-education are invaluable to your success not only at this beginning stage, but also as you progress in the process of inventing.
