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What’s the Difference Between Provisional and Utility Patents?

July 19, 2018
There are at least two paths to getting a patent on an invention that lets the inventor profit for his idea. What are the pros and cons of each?

Engineers are well trained to be inventors, but most lack the legal know-how to be experts at getting patents on their inventions. Should they get a utility patent or a provisional one? How about a design patent?

To tackle the easy questions first, design patents only cover the look and form of an object. The hundreds or thousands of toothbrushes, TV remotes, shoes, and other objects can each have design patents based on their appearances. This isn’t really the type of design engineers are known for. They are inventors, not stylists, and are usually looking for a utility patent.

Utility Patents

Any device or process that is new, useful, and not obvious is eligible for a utility patent. It gives patent holders the right to build and profit from their inventions—as well as to charge a fee (royalty) for others to be allowed to build it—for 20 years, in return for fully disclosing the idea and how it is put into action to the public. It does not stop others from copying the idea and making money from it; it just gives the inventor the right to sue other for infringing (or stealing, sort of) their idea. If the inventor cannot afford to sue, they are out of luck and the patents is virtually useless.

The first step in obtaining a utility patent—at least, the first one after making the invention—is to prepare the specifications. That includes writing a description of the invention, including what it is supposed to do and how; outlining the current state of the art in the invention’s area of technology; and describing what problem the invention solves or the benefits it brings. The description also included stylized drawings of the invention, and patent-seekers often hire a professional artist to do this. The purpose of the description is to permit a person of ordinary skill to make the invention without extensive experimentation. As noted above, the idea is that in exchange for educating the rest of the country (and the world), inventors are rewarded with 20 years of exclusive right to profit from their inventions

The next step is to write down the claims of the invention, which define its scope. Unfortunately, while engineers may be good at inventing, few are good at juggling the legalese required for stating claims. There are books and websites that may help, but may inventors hire a patent attorney for this task. Then the inventor files all this info with the U.S. Patent and Trademark Office (USPTO).

Within three months of its submission, the USPTO accepts or rejects the application. If accepted, the inventor can put the words “patent pending” on the invention and use the phrase in describing it. If it is rejected, the office describes the problems; the inventor can go back and fix them and re-apply.

But if it is accepted, an examiner is assigned to review the application and search for potentially previous patents that cover the “new” invention. The examiner can also send the inventor back to restate the claims. This can take anywhere from months to years.

Once the inventor and examiner agree on the application and its claims, a notice of allowance is issued that says the patent will be granted once the fee is paid. Almost every patent is radically changed over the course of the application, but 65% of patents applied for are granted.

Provisional Patents

The USTPO introduced provisional patents in 1994. Once granted, they are only good for 12 months, but they can be granted without the inventor creating formalized drawings or enumerating the claims of his idea. This makes them less expensive than utility patents and faster to prepare. The goal of provisional patents is to give inventors more time to perfect their inventions and to see if there is a market for them before investing more time and money into them. Filing for a provisional patent also lets the inventor put “patent pending” on the invention and documents referring to it.

If an inventor files for utility patent within 12 months of getting a provisional patent, the filing date of the utility patent will be the same as that of the provisional patent. This makes it critical for inventor to disclose as much as possible in the provisional patent application. They will only get the benefit of an earlier filing date if the invention was appropriately disclosed.

The USTPO will also not make the provisional patent application public until and unless the inventor goes for a utility patent.

In 2013, the USTPO changed from a first-to-invent, in which the first person to come up with an idea had first right to patent it, to first-to-file where whomever applied first for a patent had the best claim to it. Since a provisional patent application is considered a patent application, filing for one lets the inventor stake his or her claim sooner and be first to file.

In general, inventors who choose to go the provisional patent route say it gives them more time to raise money, refine the inventions, search out investors, and still be assured of an early filing date. It also doesn’t start the clock ticking on their 20 years of exclusivity regarding the right to profit from the idea/invention.

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