What Type of Patent Application Should You File First?

Selecting the type of patent application for an initial filing is an important early step in protecting the technology of your startup. Applicants for useful (that is, non-ornamental) technologies have multiple options.

Provisional Application

Use of a provisional application as the first-filed member of a patent family is a common strategy. Provisional applications carry a low filing fee relative to other applications and, like other applications, may be used to establish a priority date for subsequent domestic and foreign filings.

Provisional applications have fewer technical requirements than other applications. For example, provisional applications may be filed without formal drawings, without claims and without signed declarations of the inventors. Provisional applications must still, however, comply with patent requirements related to written description and enablement.

Provisional applications have significant advantages when used as a first-filed application. Taking advantage of a provisional application's low filing fees, applicants may file multiple provisional applications serially as new, related technology is developed during the year that their first-filed provisional application is pending (though this approach is subject to some limitations related to the requirement that the earliest possible priority date be the basis of a subsequent priority claim).When a provisional application is used as the basis of a priority claim in the U.S., the time that the provisional application was pending is not counted against the 20-year patent term. Finally, a provisional application is not available to the public until a subsequent, related utility patent application is published. If a provisional application expires without the filing of any related applications, the provisional application will not be published or otherwise disclosed by the United States Patent and Trademark Office.

One significant disadvantage of a provisional application is the requirement that a subsequent utility or Patent Cooperation Treaty ("PCT" – read more here) application be filed for the invention to enter the examination queue. The maximum duration of a provisional application is one year, during which a related non-provisional application must be filed or the right of priority created by the provisional application will be lost. Until the related application is filed, patentability of the invention will not be decided and no patent will issue. This delay may be unacceptable to a startup that needs to demonstrate intellectual property protection to potential investors.

Utility Application

A U.S. utility application may also be used as the first filing. As long as foreign or PCT applications are filed within a year of the utility application's filing date, the utility application may be used as the priority date for foreign filing.

Utility applications carry certain technical requirements defined by U.S. law and regulations. These requirements include formal drawings, though in most cases the formal drawings may be provided after filing if they do not add information relative to the informal drawings filed with the application. If the application includes amino acid or nucleotide sequences, that information must be provided in a formal Sequence Identification Listing. Signed inventor declarations must be provided to the patent office during the pendency of the application. Utility applications must also include claims during the pendency of the application; claims are not required in a provisional application.

The primary disadvantage to relying on a utility application as the first-filed application is the cost of preparing and filing the utility application relative to the cost of a provisional application. Filing fees for utility applications are typically about four times those of a provisional application. Professional fees are also typically higher than they are for a provisional application, due largely to the increased number of formal requirements and due to the requirement that a utility application include claims.

Another potential disadvantage to using a utility application as the first-filed application is that any patent granted on the utility application will likely expire prior up to one year prior to the expiration of the patent if a provisional application had been used as the first-filed application. Also, unless an applicant requests non-publication at the time of filing, a utility application is published about 18 months after it was filed.

A first-filed utility application has a number of advantages. The most significant is immediate entry into the examination queue. Another is the availability of programs designed to accelerate examination. These can give the utility filer a very early idea of the scope of protection that its invention is likely to receive. This information can be used to help decide where to file foreign applications, if any are filed at all.

PCT Application

PCT applications are infrequently used as the first-filed application. Their filing fees are many times those of a utility application, and they carry significant formal requirements. The effect on patent term of using a PCT application as a first-filed application is the same as that of using a utility application, which can be less favorable than a provisional application. Moreover, PCT applications do not enter the examination queue until the applicant files a subsequent request, which may be delayed up to 30 months after the PCT application is filed, assuming that the PCT application is the first-filed application. Like utility applications, PCT applications with no priority claim are typically published 18 months after they are filed.

The PCT application carries two significant advantages. First, the PCT filing fee includes an early, nonbinding search and examination of the application by a patent office selected by the applicant. This allows early assessment of the patent potential for the technology. Second, the 30 month period during which examination may be requested can provide substantial flexibility to defer costs of both domestic and foreign filings.

Foreign Applications

In some situations, a foreign application must be used as the first-filed application. Typically this occurs when one or more inventors is affiliated with a country that requires first-filing in that country. Applicants taking this route should pay close attention to foreign filing requirements in the U.S. and elsewhere. As with all of the first-filing options, applicants should consult counsel as early as possible after a decision to file has been made.