This distinction between provisional patent applications and nonprovisional patent applications became necessary in 1995 when the Patent Office first allowed the filing of provisional applications. A provisional application is one that essentially allows you to file and hold your place in line for 12 months. You can file a provisional application without many of the formalities required for a non-provisional application. This is because the Patent Office will not review provisional applications. In order to initiate a Patent Office review, and in order to obtain a patent a non-provisional application must be filed. Simply stated, a provisional application will never mature into a patent. You can file a provisional and then file a follow-up non-provisional within 12 months (this is common), but you are not truly on the road to obtaining a patent, at least is so far as the Patent Office is concerned, until you file a non-provisional application.

When you file a non-provisional application your application will be preliminarily reviewed by a Patent Office employee to see if all of the parts of the application, including the filing fee, are present. In order to file a non-provisional application you must fill out a number of forms, and you also must create the patent document itself. There are no forms for the patent document, which makes it challenging for individual inventors and entrepreneurs. The patent document must include a specification (the written description of the invention), at least one claim and at least one drawing. Drafting the specification and the claims are what makes creating a non-provisional patent application a challenge. In terms of the patent drawings, while there is no requirement that you file formal drawings, there are significant advantages to doing so.  The primary advantage of having formal drawing is that drawings that meet the requirements of the Patent Office are almost always far more detailed than ordinary sketches, which means that they convey more detail regarding the invention, which in turn gives you a broader, stronger patent application.

Once you file the non-provisional application and all the parts are present your application will be forwarded to a patent examiner. The patent examiner is the one who will review the substance of your application and make sure that you are entitled to a patent. It is typical for a patent examiner to reject some claims and want the description of your invention to be more narrowly tailored. Don’t be alarmed by this, that is simply their job. In virtually all cases, the patent examiner is the one who is responsible for deciding whether you receive a patent and, if so, what your patent will cover. For more information on the examination process please read our Overview of the Patent Process.

If you are interested in filing a nonprovisional patent application with the United States Patent Office my firm, White + Quinn, can help you.  We use a streamlined collaborative approach that significantly reduces the costs associated with preparing and filing a patent application.  For more information please see Patent Applications by White & Quinn.