What application is right for you?

By December 7, 2016Uncategorized

I’m not an expert. I’m just a guy who likes to think about stuff.

You’ve done a prior art search. You think your invention is different from anything that’s already been patented. Now what? Some choose to file a provisional application. Some choose to file a utility (aka non-provisional) application. Some choose to apply for a design patent. What choice makes sense for you?

The difference between utility and design is that utility applications apply to how an invention works and how to make it. A design patent covers how an invention looks. Oftentimes, if you don’t think that your utility application will be successful, you may opt to apply for a design patent instead. Design patents are cheaper to get than utility patents, and usually don’t take as long to get. For a utility patent, it can take up to three years to receive a patent after filing the utility application. Design patents typically take a year to get after applying for one.

Provisional applications only apply to utility applications. Whether you file a provisional application typically depends on your money situation. If you’re relying on angel investors, VC firms, or other external monetary sources to help fund getting the patent, you may want to file a provisional application, since the fees for provisional applications are lower than those for utility applications. After filing a provisional application, you have a year to file the utility application. In that year, you can look for external investors to fund the rest of the application process. If you’re a company that isn’t looking for outside investors, it may make sense to just file the utility application and forego the expense of the provisional application. If you file a provisional application, be careful. Even though the requirements aren’t as strict for provisional applications as for utility applications (e.g. provisional applications don’t require claims or drawings), the provisional application must fully support a utility application. Anything that’s in the utility application must be in the provisional application for the provisional application to fully support the utility application. If not, your filing date will not be the filing date of the provisional application, it’ll be the filing date of the utility application. Why does this matter? Essentially, you would have spent money filing the provisional application for nothing.

Another reason you may choose to file a provisional application is if you aren’t sure about the final incarnation of the invention. You can file multiple provisional applications, adding something new to each successive provisional application. Let’s say you file a provisional application in January, May, and September of the same year. The invention is the same each time you file a provisional application, but you include additional information in each successive application. You have until September of the following year to file the utility application. Your filing date will be that of the September provisional application, provided that the September provisional application fully supports the September utility application. Everything that was in the January and May provisional applications will be in the September provisional application. And everything that’s in the September provisional application should be in the September utility application.

To recap:

  • Make a decision as to whether you want to file a provisional application before filing a utility application, or if you want to apply for a design patent
  • Make sure that the provisional application fully supports the subsequent utility application to ensure that you get the earlier filing date (the provisional application filing date)

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