Provisional Patent Application

A provisional patent application preserves a filing priority date for the invention and preserves patentability if there is a public disclosure or if someone else has a similar invention after the filing date.  Filing a provisional patent application allows an inventor to obtain an initial filing position quickly and inexpensively.  The Patent Office fee for filing a provisional patent application is $120 for a small entity.  A provisional application is a legal document, but it is not evaluated by the U.S. Patent & Trademark Office and does not result in an issued patent unless the inventor files a regular non-provisional patent application within one year. A provisional patent application gives the inventor a year from the date of initial filing to market the invention and evaluate the commercial interest in the technology and whether it is worth going forward on a non-provisional (or formal) patent application.  During the provisional year, it is recommended that the inventor spend 15 to 20 hours searching on the Internet (e.g., Google Patents) to determine whether the idea is novel.  Multiple provisional applications can be filed during the year to cover iterations on the invention and then all of the provisional patent applications can be combined into a single non-provisional patent application.  After the filing of a provisional patent application the inventor can put “Patent Pending” on the product or presentation materials.

Non-Provisional Patent Application

Three months prior to the 12-month deadline of the provisional patent application is a good time for the patent attorney to start drafting the non-provisional patent application.  It typically takes 20 hours plus on the part of the inventor to contribute to the drafting of the non-provisional patent application. 

Prosecution of the Non-Provisional Patent Application

Patent prosecution or examination can take two to five years.  If the claimed invention is patentable as submitted, the patent examiner will allow the claimed invention to issue into a patent after the fees are paid.  Most of the time, the application is not patentable as originally submitted, and arguments and/or amended claims must be presented that can lead to a patent.  Interviews with the patent examiner often speed this process up.  If the patent examiner does not accept the arguments and/or amended claims, the patent examiner will issue a final rejection.  At this point, typically, either after-final prosecution efforts are made or a continuation is filed to advance the prosecution.  If the patent examiner again issues a final rejection, the inventor may elect to appeal the patent examiner’s position to an appeal board or to the U.S. court system. If the appeal is successful, claim allowance is achieved, which can lead to a patent. If the appeal is unsuccessful, claim allowance is not achieved and the patent application will likely go abandoned, resulting in no patent.

 Terms and fees

The patent term for a U.S. utility application is 20 years from the non-provisional filing date.  For a U.S. utility patent to remain in force for its full term, three maintenance fees must be paid timely at approximately 3.5, 7.5, and 11.5 years after patent issuance. If maintenance fees are not paid, the patent will go abandoned.