Choosing What Type of Application to File

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 87-103

87

6

Choosing What Type of

Application to File

“Whoever invents or discovers any new and useful proce ss,

machine, manufacture, or composition of matter, or any new

and useful improvement thereof, may obtain a patent therefor,

subject to the conditions and requirements of this title.”

—Title 35 of the United States Code, Section 101

As discussed in previous chapters, the most common type of patent

application is a utility application. However, applicants can choose to

le a provisional or nonprovisional utility application as a start to the

utility patent process. Choosing which one is a matter of cost, how

developed an invention is, the type of invention, and the importance

of having enforceable rights quickly. U.S. Patents only provide pro-

tection within the bounds of the United States. Foreign protect ion is

obtainable, but must be secured separately in each country where a

patent is desired. is chapter explores the options of starting the pat-

ent process with a provisional or nonprovisional utility application and

then discusses foreign patents along with the ot her types of U.S. patent

applications.

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88 PATENTS DEMYSTIFIED

PROVISIONAL VS. NON-PROVISIONAL UTILITY

APPLICATIO NS

COST

Provisional applications incur less cost upfront, but end up increasing

the total cost of the patent process. As discussed i n previous chapters,

a nonprovisional must be led within a year of li ng a rst provisional,

and while material from the in itial provisional application can oen

be reused in the nonprovisional application, there is additional cost

compared to only draing and  ling a nonprovisional as a st art to the

process. For example, at the very least, there is additional time in l-

ing an extra application and additional USPTO  ling fees. However,

any downside of total overall cost by using a provisional application

strategy is oen outweighed by numerous potential benets that pro-

visional p atent applications provide.

DESIRE TO DEFER COSTS

Many start-ups and individual inventors choose to le provisional

applications, despite the increased overall cost, because of a desire

to defer the cost of nonprovisional applications and the examination

phase. One common reason for deferring costs is to test the market

before investing capital in the dra ing and examination of a nonpro-

visional application. Additionally, many companies want to nd inves-

tors or other sources of capital to pay for building a patent portfolio at

the nonprovisional stage and want to invest the least amount possible

upfront before such nancing is secured.

Having a year to test the market ca n be important to determine

whether the cost of obtaining a patent is a wise business decision. For

example, if a product fails to sell well wit hin its rst year aer ling

a provisional application, and the company decides to discontinue it,

having led the provisional application instead of a nonprovisional

saves the applicant several thousand dollars.

Similarly, a year aer ling a provisional application, product price

and projected sales gures may indicate that the t ime to recoup the

costs of ling and exam ination of a patent application does not justify

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