How can you choose between a provisional or non-provisional patent?

Provisional patent applications cost approximately $300 in official fees, with possible reductions for smaller companies. The provisional patent application expires after one year, after which you are left with nothing. For a German patent application, the official fees is €40. For an additional €350, one can obtain a very affordable examination of the patent application. Patent attorney fees will apply in both countries. Within the priority year, you will receive an examination report based on which the chances of success for further international subsequent applications can be assessed. If the invention was not made on US soil, a German patent application might be more efficient than a provisional US application.

Imho provisionals are emergency filings either when you realize you are going to disclose your invention or you already disclosed it inadvertently…provided you file the same day. Remember most countries do not have a grace period ! There is no formal requirement you may file a power point. Yet I would recommend hiring a patent agent /attorney for a “quick and dirty” drafting which an experienced agent can perform in a couple of hours. You may also file this quickly drafted application along with the power point. Do not wait too long before transforming this provisional into a non provisional. Of course filing a provisional allows you to say “Pat. Pend.” But it will not impress any investor once he knows it is a provisional.

Additionally: - It provides applicants with a degree of comfort to have discussions with third parties rather than relying solely on confidentiality agreements. - It can start to open doors for investment as some investors won’t even contemplate engaging if you do not have any IP - some patent offices, like Australia, offer a search on the provisional application. Not only do you get a preliminary opinion to guide decisions and drafting going forward, but the Australian patent office then credits you those search fees if the PCT is filed and Australia is the ISA

In my opinion, if you have limited budget & time + are ready with the invention i.e. can meet the requirements of full disclosure shoot for non-provisional, otherwise go for provisional which buys you more time to fully develop the idea and invention. But note that provisional exposes your idea to the public + since there is no guarantee that patent will be granted, sometimes the other person esp. competitor can thus develop his/her product on the basis of learning from or around your provisional patent. It happens frequently in deep-tech that one patent can provide the missing link that other team is struggling with while former team fails to solve its own problem! In India, women entrepreneurs and startups can have expedited examination.

I tend to prefer filing a non-provisional in a jurisdiction issuing a search report with opinion on patentability in the priority year (if not obliged to file in the USA). Those search reports not only give insights into novelty/inventive step issues but also on clarity and enablement. This can all be useful for polishing up the further filings at the end of the priority year. And if all is fine and now protections in other jurisdictions are desired, one can simply proceed with tge non-provisional

A provisional patent has taken on more importance since the US became a first-to-file jurisdiction. Now it is critical to get the earliest possible filing date. That being said, a provisional patent application should be as detailed as possible to disclose the invention, particularly if one is interested in foreign filing. In other words, simply filing a PowerPoint presentation as a provisional patent app is not recommended. I recommend that the provisional app be drafted in the format of a non-provisional application under the USPTO guidelines. That can make it easier a year later when the non-provisional app filing deadline approaches.

The important point to remember is that the provisional application is not published and gives 12 months to decide on the future of the application. The decision to file provisional or non-provisional is based on the business goals and R&D. Big corporations have on-going R&D, have an IP strategy including future monetization and enforcement options in place, they keep a check on prior arts and current publications and are well placed to file non-provisional directly.. However, smaller corporations do not have any such things in place. Therefore, it is better to file provisional first. Create an IP strategy as you start filing more applications and have a real and quantifiable sense of where the company and research is headed.