When to skip the provisional patent (PPA)?

A common question we get is “Should I file a provisional patent application or go straight for a non-provisional (utility) patent application?” This is a crucial decision, particularly considering that a provisional patent application (PPA) expires one year from its filing date. While the idea of paying for two application filings might seem redundant, there are compelling reasons why starting with a provisional patent application first can be the smart choice.

Upfront Cost Considerations 

How much does it cost to patent an ideaThe primary reason most people pick the provisional patent application is cost. Filing a provisional application is significantly cheaper, typically about half the cost of a non-provisional application. For many inventors, especially those working with limited funds, this can be a crucial factor. The provisional application offers a one-year “patent pending” period, providing inventors the opportunity to test the market, attract investors, and secure licensees.  I once even sold a provisional patent application for over $60,000 which was a great return on investment.  

It’s important to note, however, that while starting with a provisional application is less expensive upfront, it can be more costly in the long run since you eventually need to file the non-provisional application. Yet, if managed properly, this approach doesn’t impact the patent term, giving inventors flexibility without sacrificing the longevity of their patent rights.

Extra Product Development Time

provisional patent timeThe second significant reason to file a provisional patent application first is to buy more time for product development. Once you file a non-provisional application, you are committed to the details provided at the time of filing.  In other words, you may be “stuck” with what is included at the time you file the full utility (non-provisional).  Many inventors are still refining their ideas and are not yet ready for full-scale production when they first seek patent protection. Filing a provisional application allows for an additional year to improve and perfect the invention.

During this year, inventors can make critical adjustments and enhancements. When it’s time to file the non-provisional application, these refinements can be included in the full utility patent. However, it is crucial to remember that any changes made after the provisional application will have the filing date of the non-provisional application, not the provisional. This distinction is vital as it can affect the priority date of certain claims.

When to Skip the Provisional Patent Application

If neither cost concerns nor the need for additional development time apply to your situation, it may make sense to skip the provisional patent application and file a non-provisional application directly. This can streamline the process and reduce overall costs, provided you are ready and have the necessary resources to file a comprehensive non-provisional application from the start.

I usually ask people:

  • Do you have the funds available now for the full utility?  Often $4,000 or more if using a professional to file for you.
  • Do you have your invention worked out and are 90% certain you won’t need to change anything in production?

If you can answer “yes” to both questions then skipping the PPA usually makes sense because it will save you money in the long run as you won’t need to pay for two (2) different filing fees.  

 

In conclusion, while a provisional patent application may initially seem like an unnecessary step, it can provide valuable benefits in terms of upfront cost savings and additional development time. Inventors should carefully consider their financial situation and the current state of their invention before deciding which route to take. Whether you choose to file a provisional or go straight to a non-provisional application, understanding the implications of each option is essential for making an informed decision that best suits your needs and circumstances.