Should I initially file a U.S. Provisional patent application or a U.S. Non-provisional patent application?

As background, both a U.S. Provisional patent application and a U.S. Non-provisional patent application must provide sufficient information (drawings and written text) to teach a person skilled in the art how to make and use the invention. The U.S. Provisional patent application has a 1-year life span and is not substantively examined by the U.S. Patent & Trademark Office. The purpose of the U.S. Provisional patent application is to describe the invention and give you a priority date for the invention. If a U.S. Provisional patent application is initially filed, a U.S. Non-provisional patent application (also referred to as a normal patent application) must be filed within the 1-year time period to claim priority to the U.S. Provisional patent application.

In answering the question of which type of patent application to initially file, we typically ask the client whether it is likely that their current invention/product design will change or be improved during the next year. If so, then it usually makes sense to prepare and file a U.S. Provisional patent application as will be explained in greater detail below. If not, then it usually makes sense to prepare and file a U.S. Non-provisional patent application.

A U.S Provisional patent application can be directed to the current invention/product design, and if improvements are made to the design during the next year, then the description of the improvements can be added in the U.S. Non-provisional patent application (which claims priority to the U.S. Provisional patent application).

In contrast, if a U.S. Non-provisional patent application is initially prepared and filed, and subsequent improvements are made to the product design, then the applicant cannot add new matter (e.g., drawings or text) to the U.S. Non-provisional patent application to cover the improvements. In other words, once the U.S. Non-provisional patent application is filed, the subject-matter is locked in and new matter cannot be added to in the U.S. Non-provisional patent application.

Leave a Reply

Your email address will not be published. Required fields are marked *