Provisional vs. Non-provisional Patents: The Difference

For someone who is looking to protect an invention for up to a year at minimal cost in order to test the commercial waters, it may be worth looking into a provisional patent application.

For example, an inventor may well want to seek out prospective manufacturers for an invention to license for royalties before investing in a non-provisional patent, which can be much more costly.

Non-provisional Patents

A non-provisional patent application is what most people think of when they think of the “patent” concept. Such a patent can be of either a “design” or a “utility” type. Before going further, it is important to note that a provisional patent application is not valid with “design”-type materials; a provisional patent application can only be filed for inventions of the “utility” type. In broad terms, a “utility patent” protects the way an article is used and works, while a “design patent” protects the way an article appears.

Applying for a non-provisional patent establishes a filing date and it initiates the review process by the United States Patent and Trademark Office (USPTO).

Provisional Patents

A provisional patent application provides temporary protection for up to year from the date of filing. It also establishes a filing date, but it does not initiate the review process by the USPTO—an important distinction to keep in mind should the inventor wish later to file a non-provisional patent application.

Patent Pending

As mentioned above, a provisional patent is less expensive than a non-provisional patent and it allows the inventor a year’s time in which to market and/or develop an invention using the familiar term “patent pending”. In addition, a provisional patent application does not require the patent claims, a major component of a non-provisional patent application.

As can be presumed from the lack of a review by the USPTO, a provisional application does not automatically become a regular patent 12 months after the date it was filed. In order to obtain a non-provisional patent, an inventor is required to submit the appropriate application within one year of the date a provisional patent application was filed in order to use that same filing date.

A provisional patent application is typically less involved than a non-provisional application, and may include as little as a cover sheet, the name of the inventor and some bibliographic information, a description of the invention (here, invention claims are not necessary),  a drawing if it is necessary to understand the invention, and a filing fee.

A provisional patent application can be useful when a fairly quick and inexpensive form of legal protection is desired.  Compared to a non-provisional patent application, a provisional patent application can be put together and submitted with less effort and expense, while effectively buying an inventor more time in which to develop the product and determine how it might be marketed.

When Does Your Great Idea Need the Expertise of an Intellectual Property Attorney? Part Two

In our last installment, we gave you a quick overview of some possible scenarios in which the expertise of an Intellectual Property (IP) attorney may be needed.  Here are those scenarios explained in more detail:

 1.  You are unsure whether or not you have an original process or product:  Granted by the Federal Government, the patent process starts with the inventor filing an application with the U.S. Patent & Trademark Office. This detailed application is laden with complex legal jargon. It becomes apparent whether or not the invention is suitable to patent as the inventor completes the application.  An attorney would be able to explain the application in laymen’s terms, thereby making the process easier.

2.  You are involved with the Information Technology industry and need to create a licensing agreement:  The purpose of a licensing agreement is to allow the inventor to charge for the use of his/her creative work or product.  For example, in order for certain earbud and speaker manufacturers to market products as iPhone-compatible, Apple had to grant its permission.  Agreements can vary in length, but an IP attorney can present you with a wide array of options, protecting your rights in the way in which you’re most comfortable.

3.  You are in the entertainment industry and someone has used your name, voice, or likeness in an advertisement without your permission:  Breach of Right of Publicity is often confused with trademark and copyright infringement.  Indiana’s Right of Publicity law protects all individuals’ “…name, voice, signature, photograph, image, likeness, distinctive appearance, gestures or mannerisms.”  This year, Indiana considered toughening its “James Dean Law” to protect and extend rights to the estates and families of dead celebrities.  The protection is not only to see that the image-maker is properly compensated for the work generated in branding self.  It is also to protect the way he or she is commercialized, if applicable.

Don’t take shortcuts when it comes to your ambitions. If you are serious about bringing your intellectual property to the next level or you’re protecting your precious work, getting an IP attorney involved from the beginning could be invaluable.  Months or even years of work can dissipate in an instant if crucial steps in this process are missed.

When Does Your Great Idea Need the Expertise of an Intellectual Property Attorney? Part One

What do Amazon’s “1-Click” Shopping, the Apple brand, and Conan O’Brien’s Team Coco Digital, LLC all have in common?  Their owners had the foresight to seek the expertise of an Intellectual Property (IP) attorney.  It’s an easy misconception that only intricate, multi-million-dollar creations require legal intervention.  After all, recent technology has made the patent process (one of several roles of an IP attorney) more accessible.  Be that as it may, accessibility isn’t an indication that the scope of the intellectual property laws has narrowed.  It only presents the inventor with another option and is no substitute for good sound legal advice and having the peace of mind of knowing that your rights are properly protected.

Some instances of attorney intervention are obvious, such as when someone has violated your patent with unauthorized use of your idea.  Other instances are not as clear cut.

Are you unsure whether or not you have an original process or product?  Perhaps you’re involved with the Information Technology industry and need to create a licensing agreement.  Has someone used your name, voice, or likeness in an advertisement without your permission?  In our next installment, we’ll delve into the importance of a trusted, knowledgeable resource to guide you through this process.

Protecting your intellectual property can add value to your brand in the marketplace. This is especially important if you are operating virtually over the Internet or have a multi-state ‘bricks and mortar’ presence.”  Your idea, service, or product becomes recognizable over time with your marketing efforts.  It would be unfortunate if you wasted your blood, sweat, and tears on your business venture to find out someone else has already protected what you thought was your unique invention.  Suffice to say, research and idea protection should come ahead of guerilla marketing tactics.