What is the difference between a full patent and provisionary patent? 5 Answers as of July 26, 2011

I was looking for a patent attorney. Years ago when I was looking earlier I understood the following : apply for a patent, and then thereafter, act like you have one (patent pending); the patent office will send you something provisional off the bat, and then would catch up to you eventually (maybe two or three years later) regarding full status. Is that remotely correct?. SEPARATE from this, however, I remember there being some initial choice up front of whether or not to file a full application versus some type of partial or lesser application that cost much less. Perhaps some "intent to file". I vaguely remember along these lines being asked for a simple bullet point list of "items of uniqueness", or something like that. This less expensive first step would enable me to get the process started with little, if any, drawback. Any validity to this part at all (or does it even correspond to reality?). Thanks.

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Kafantaris Law Group
Kafantaris Law Group | Theo Kafantaris
A provisional patent application (PPA) is a preliminary document which is separate from a utility patent application. The provisional application typically costs much less and takes less time to prepare, but does not get examined. While it does give patent pending status, a full utility patent must be filed within 12 months of the filing of a PPA or it will become abandoned. Provisional applications are good for inventors who are in the beginning stages of their invention and would like to get an early filing date and patent pending status.
Answer Applies to: California
Replied: 7/26/2011
Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
Provisional patent applications are basically placeholders, mini applications that draw a line in the sand for priority purposes. They provide a one-year window in which the applicant can file a formal utility application claiming priority to the provisional. Provisionals should have, but do not need any claims, and they do not have the same structural requirements as utilities. On the other hand, they still need to be enabling and to satisfy the best mode and written description requirements for whatever is claimed. The biggest problem that arises is that the provisional fails to have sufficient support to provide priority to a later-filed utility application.

There is an intent-to-use trademark application, but there is nothing in the U.S. along the lines of an intent-to-file patent application. It sounds to me as if you want to file a provisional application. You can do that yourself, but its better to go through an attorney or agent.
Answer Applies to: California
Replied: 2/9/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
There are indeed two different types of utility patent applications. The first type is called a provisional patent application in which the inventor can submit a brief description of the invention and obtain a patent pending number to be put on the product giving notice to the public that the product is subject to patent protection. A provisional patent application, however, is never examined by the patent office and will be abandoned after 12 months from its filing date. The second type is called a non-provisional application in which the inventor provides a detailed description of the invention including "patent claims." This application must be filed within 12 months of the filing date of the provisional patent application if the inventor wants to claim priority to the filing date of the provisional application. The cost for a provisional application is considerably less than the cost for drafting a non-provisional application.
Answer Applies to: California
Replied: 2/8/2011
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
There are two types of utility patent applications, a regular application, which gets examined and hopefully eventually becomes a patent, and a "provisional" application which never becomes a patent but can become the basis for a regular patent application if one is filed within a year of the provisional filing date. After you apply for a patent, whether provisional or regular, you can mark your product and advertising as "patent pending." It may scare off some potential infringers or it may not. However, you have no legal enforceable rights until a patent issues (with the exception that it is possible for damages to accrue from the publication date of a regular patent application in limited circumstances).

You can either file a provisional application or a regular utility application up front. However, there are many dangers with filing a provisional application unless it is drafted as if it were a full regular patent application.

In order to be valid, the provisional application must comply with the first paragraph of section 112 of the patent law. If the provisional application does not comply with this section, it will be invalid and will not provide a filing date. As the U.S. Patent and Trademark Office does not examine these applications, it may not become apparent that a provisional application is invalid until after the deadline for filing a patent application has passed. It should also be kept in mind that provisional applications automatically expire one year after filing, and that this deadline is not extendible. Foreign applications must be filed within one year of the filing date of the provisional application in order to be entitled to the filing date of the provisional application. Thus, a disadvantage of provisional applications is that there is no opportunity to receive a first examination by the U.S. Patent and Trademark Office before making the decision of whether or not to file corresponding foreign applications.

If provisional applications are used, it is recommended that they be drafted as if they were a full regular patent application to make sure that they comply with the best mode and enablement requirements. An invalid patent application has zero value. A patent infringement trial typically costs over a million dollars in legal fees and it is not wise to skimp on fees during the patent drafting process. With such high stakes, a professional litigator is looking for every weakness in a patent application. A provisional application that is not drafted by a patent attorney is likely to have many problems. These problems will carry through even if a patent attorney is later hired to draft a regular patent application. This is because the "file history" of the patent application will be ordered and the provisional patent application will be available along with the file history.

Various mistakes that can be made in drafting a patent application are described in my guide on how to find a patent attorney.

For example, if an applicant in a provisional application says "the switch is a MOSFET" where no specific type is essential, and then a patent attorney preparing a regular patent application corrects this by saying "there is a switch, it can be any type but in some embodiments it is a MOSFET," be prepared for an argument during litigation that unless a competitor uses a MOSFET, there is no infringement regardless of what is recited in the claims because the inventor clearly only contemplated use of a MOSFET.

If there is no budget for a full application and a provisional application is filed, a full application drafted by a patent attorney should be filed as soon as possible after the provisional application is filed. Thus, in the event that the provisional application does not comply with the provisions of 35 U.S.C. ' 112, first paragraph, it may be possible to prepare the regular application before any important deadlines are missed.

It should be kept in mind that it usually takes three or more months for a patent attorney to prepare an actual U.S. patent application, depending on workload. Therefore, if you file your own provisional patent applications, do not wait until the end of the one year period to decide if you want to proceed with a regular patent application. Because of varying caseload demands and other concerns, law firms usually reserve the right to refuse to accept work for any reason. Also keep in mind that the provisional applications automatically expire one year after they are filed. No one will remind you of the deadline for filing an actual patent application. No extensions of time are available.

With these risks in mind, provisional patent applications that are not drafted as full regular patent applications should only be used for obtaining "patent pending" status if there is simply no budget for a full patent application and if the invention is a low priority invention not meriting the cost of a regular application.
Answer Applies to: Washington
Replied: 2/8/2011
Rhema Law Group
Rhema Law Group | John D. Tran
A provisional application differs greatly from a full utility patent application. Basically, a provisional application is an incomplete utility patent application. Although a provisional application grants you "patent pending" status upon filing, it is not reviewed by the USPTO and merely grants you the ability to obtain the earlier filing date of the provisional if you file the full utility application within 12 months of the provisional date.

There are certain circumstances in which a provisional application may make more sense to file rather than an utility patent application but it is strongly recommended that you consult with a patent attorney to weigh your options.

If all the necessary information is there, I typically advise my clients to just proceed with the full utility patent application filing rather than delay things with a provisional application.
Answer Applies to: California
Replied: 2/8/2011
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