There is no one-size fits all for U.S. patent applications. There are options for both those who are well-financed and need broad patent protection, for those on a tight budget, and for those who just need to get something quickly filed before they deliver a presentation at a conference.
Before discussing timeline and budget, a few basics of United States patent applications are in order. First, a patent application includes claims which in legalese claim define the scope of the claimed invention. Second, a patent application includes drawings and a detailed description that describe the claimed invention with sufficient detail to show that the inventor actually invented what is claimed. That is, that the inventor had possession of the invention. In addition a patent application must enable others of ordinary skill in the art to make and use the invention. And ideally, a patent application discloses more than one way to implement the invention (i.e. different embodiments). That provides added breadth and value to the patent that is ultimately obtained. All of the above means that a patent application can be fairly labor-intensive to draft.
On the other hand, there are different types of patent applications, and therefore some options to consider for one contemplating obtaining patent protection. One option is a U.S. non-provisional application which is often an attorney-drafted application complete with formal patent drawings and claims. This type of application is the preferable option unless there are other considerations.
Another type of patent application is a U.S. provisional patent application which is temporary placeholder until the inventor is ready to file a U.S. non-provisional application. The provisional application provides the inventor with a filing date. A filing date is important because the United States and most of the rest of the world uses a “first to file” system for determining priority between different inventors who invent similar inventions. However, this filing date is temporary because a provisional application expires after one year, unless a follow-up non-provisional application is filed within that year.
Despite its one-year life span and other disadvantages, a provisional application does have potential advantages. A provisional patent application is not examined by the patent office and is not required to meet the formalities of a non-provisional. Therefore less-costly informal drawings, even hand-drawing sketches or photographs, may be used in place of formal drawings. Some applicants who want to save additional dollars may also write their own provisional application under limited guidance from a patent attorney. While the above may reduce the cost of a provisional application, there is a risk of a lower quality application that provides less patent protection.
Because they do not need to be as formal, provisional patent applications can be filed quickly. For example, an inventor may have a white paper they would like published or delivered at a conference. However, disclosing an invention before one files a patent application may result in loss of patent rights. To allow the inventor to publish the white paper without potentially losing patent rights, the white paper could be filed as a provisional application. Because there would be only minor attorney time involved, the white paper could be filed as a provisional application relatively inexpensively.
Provisional applications are often used by inventors who are still developing their invention. An inventor who develops a first preliminary version of their invention may file a provisional to at least get a filing date for this early version of their invention. The inventor may file additional provisional applications as the invention is further developed, to obtain filing dates for important milestones. Finally, one year from the first provisional application, when the invention might be ready for the market place and when the inventor may have secured further funding, a non-provisional application may be filed based on the previous provisional applications. In this example, the use of provisional applications provides the inventor with a lower cost way to obtain filing dates. The provisional applications also allow the inventor to delay the time within which the inventor must decide whether to invest the funds needed to prepare and file a non-provisional application.
There are potential disadvantages to provisional applications. Because they may not be attorney-drafted they will often not describe the invention in a way to maximize potential patent protection. Thus, if an inventor has funds and an invention that is ready for the marketplace, it will usually be better to proceed directly to a non-provisional application.
Another type of patent application is a design patent application. A design application seeks patent projection for an ornamental design of a functional item. Examples of items that can include ornamental designs are a smart phone interface, a shoe, a piece of furniture, a beverage container, among many others. Sometimes an invention will qualify for both protection for its function and for its ornamental design. While a full written description of design patent applications is beyond the scope of this blog entry, they are usually faster and cheaper to prepare compared to other types of patent applications.
Thus, an inventor is invited to discuss their particular needs with a patent attorney to obtain options that are practical given those needs.