Obtaining legally enforceable intellectual property rights is an important part of the innovation process. If you have recently invented a new product, process, machine, product design or plant species, you may be wondering about how to begin the process of obtaining a legally enforceable patent. The only way to secure this form of intellectual property protection involves submitting a non-provisional patent application to the United States Patent and Trademark Office. The patent application process is notoriously complex. As a result, successfully obtaining a patent almost always requires the skilled guidance of an experienced intellectual property attorney. However, because the non-provisional patent application process is so complex, it generally takes weeks or even months to complete. As the patent process is truly time-sensitive – both inventors and inventions remain legally vulnerable until they secure a patent application filing date with the USPTO – it is critical to secure an official USPTO filing date as soon as possible. One of the tools that attorneys use to “buy their clients time” as non-provisional patent applications are being prepared, is the provisional patent application process.
Attorneys generally bill by the hour but occasionally charge a flat fee for certain project work. Regardless of whether your attorney charges by the hour or by the project, the costs associated with filing a provisional patent application are going to be fairly minimal. Unlike the process of filing a non-provisional patent application, the process of filing a provisional patent application is going to be fairly straightforward for an experienced intellectual property attorney, so it will not take much of that individual’s time to complete. Similarly, the legal fees associated with filing a provisional patent application are comparatively nominal in comparison with the legal fees associated with filing a non-provisional patent application.
Provisional Patent Fees – As of January 1, 2019
Filing a non-provisional patent application may cost an inventor or business several thousand dollars in fees, depending on the length and complexity of the application and any special processing it may need to be subjected to. By contrast, the costs associated with filing a provisional patent application are relatively minimal.
Before you can calculate the amount of provisional patent application fees you will owe the USPTO upon filing, you will need to determine whether you will pay standard fees or you will qualify for a discount. There are two subclassifications of patent applicants that qualify for fee-related discounts with the USPTO. Filers that may be categorized as having “small entity status” receive a relatively significant discount in regards to some application-related fees. Filers that may be categorized as having “micro entity status” receive an even more significant discount in regards to specific filing fees. These discounts are offered in an effort to encourage innovation among small businesses and independent inventors. Although this fee-related financial “break” is nice when filing a provisional patent application, it can be truly significant when filers submit non-provisional patent applications, as the fees associated with these petitions are far more expensive than those associated with provisional patent applications.
In order to qualify as a small entity, you must file your provisional patent application as an individual inventor or you must file an application on behalf of a university, a 501c3 nonprofit organization or a small business employing no more than 500 individuals. In order to qualify as a micro entity, you must both meet the criteria for small entity eligibility as well as several additional criteria. First, the filer must earn the majority of his or her income from working for an institution of higher learning or the patent itself must be obliged to be assigned to the ownership of an institute of higher learning. Second, the applicant cannot have been named already as an inventor of more than four patents. If multiple inventors are named as inventors on the provisional patent application, each of them must qualify for micro-entity status in order for the application itself to be eligible for the corresponding fee reduction.
Every provisional patent application is subject to a $50 filing fee, regardless of your applicant classification. An additional filing fee is also imposed, but on the sliding scale. Standard filers pay $280, small entities pay $140 and micro entities pay $70. If your application is subject to a late filing fee or a late cover sheet fee, standard filers will pay $60, small entities will pay $30 and micro entities will pay $15. And finally, if your provisional application fee is so long that it requires extra pages (which is not an unusual problem for non-provisional applications but is usually not an issue for provisional application filers), your application will be subject to a fee for every additional set of 50 pages beyond the initial 100. For each additional set of 50 pages, standard filers pay $400, small entities pay $200 and micro entities pay $100.
The Potential Costs of Not Filing a Provisional Patent Application
Although the legal fees and the filing fees associated with provisional patent applications are relatively minimal when compared to the fees attached to non-provisional patent applications, individual inventors and small businesses may be tempted to forgo filing provisional patent applications in order to save money. This is an understandable temptation, given that inventing something new is not usually an inexpensive process to begin with and adding legal costs to the development of a mandatory non-provisional patent application can be frustrating. However, it is important to consider the potential costs of not filing a provisional patent application before committing to “skipping” this phase of protecting your intellectual property.
Once you have created a new product, process, machine, design or plant species, every single day that passes until you secure your non-provisional patent application filing date is a day that potentially damaging sources of prior art may emerge. As a result, the longer you wait to secure a favorable filing date, the more you risk the possibility that your invention will not be considered novel and will therefore not be granted patent protection by the USPTO. By allowing your attorney to take a relatively limited amount of time and resources to secure a favorable non-provisional patent application filing date by submitting a provisional patent application to the USPTO, you may be able to safeguard the novelty of your work and allow it to remain eligible for patent protection.
Without proper patent safeguards in place, both you and your work will remain legally vulnerable. Until your intellectual property rights are effectively protected by a government-issued patent, they will likely remain unenforceable in the event that another individual or business infringes upon them. Similarly, until you have a patent in place, you may be sued for using or seeking to profit off your own invention by individuals or businesses seeking to claim that they created your invention first. Failing to submit a provisional patent application and allowing a significant amount of time to lapse before you submit your non-provisional patent application may cost you the ability to legally protect your work. Yes, having to submit one more petition to the USPTO can be frustrating. However, allowing your attorney the time and resources to submit a provisional patent can affect your work, your business and your life in significantly positive ways for years to come.
Intellectual Property Guidance Is Available
If you are interested in obtaining legally enforceable patent protections for your invention, please schedule a consultation with an experienced intellectual property attorney as soon as possible. You and your creative work will remain legally vulnerable until you secure a USPTO filing date as applied to an application that is ultimately approved. Working with an experienced lawyer will place you in the best possible position to secure legally enforceable patent protections. Each intellectual property attorney at LawTrades is dedicated to approaching both the provisional patent application process and the non-provisional patent application process as efficiently and cost-effectively as possible without sacrificing the integrity of an application itself.