What is a nonprovisional patent application?

A nonprovisional patent application is what you file to get a utility patent. You would think that a simpler name could’ve been created, but the “nonprovisional” adjective distinguishes this utility application from another utility filing called a provisional patent application.

If a granted utility patent is the finish line, then a nonprovisional patent application can be considered the starting line while the provisional application is the warm-up area leading to the starting line. If you only warm up but don’t start the race, you will not get to the finish line.

What are the requirements of a nonprovisional patent application?

A nonprovisional application must contain at least two key sections:

  1. a disclosure of the invention also known as the specification; and
  2. claims.

What is the specification?

The purpose of a patent specification is to describe the invention, which is not the same thing as claiming the invention. The description of the invention can and should get very specific, down to the nitty-gritty gory details of each feature of the invention, including any alternatives and variations that would accomplish the same function or result.

The specification typically includes drawings and a written specification.

What are patent claims?

The claims are located near the end of the written text and are numbered. A claim set comprises an independent claim followed by dependent claims that hang from either the independent claim or a prior dependent claim.

How much does a nonprovisional patent application cost?

The initial filing of a nonprovisional application will range from a few thousand to over ten-thousand dollars. At my firm, we provide flat rate estimates for the initial filing of a nonprovisional application after reviewing brief invention disclosures. As a rough ballpark, attorney’s fees for the initial filing may range from $6,000 to over $10,000, depending upon the complexity of the invention and the number of different examples (aka “preferred embodiments”).

Keep in mind the initial filing cost does not include a patentability search or the ongoing prosecution of the utility application. Responding to the patent examiner’s rejections contained in “Office Actions” are to be expected. Such ongoing costs can range from a few hundred to over two-thousand dollars for each response, and you may have to file multiple Office Action responses.

Consider this before filing a nonprovisional application:

Pursuing a utility patent is a long and expensive slog. There are no quick and cheap shortcuts to a utility patent, although there may be ways to expedite the review of a nonprovisional application. It would be wise, therefore, to think of a nonprovisional application as an investment. And, with any potential investment, you’ll want to count the cost to see if the reward is worth it.

Here are some questions to ask before filing a nonprovisional application:

  • Would a patentability search be worthwhile?
  • Is the product/concept undergoing further development, or have all key features been finalized?
  • What would investors think if I seek capital without patent-pending status?
  • What would stop or discourage competitors from copying if I don’t apply for a utility patent?
  • If I try to keep my invention as a trade secret, would others be able to reverse engineer or somehow imitate my product?
  • If budget is a concern, should I file a provisional patent application first?
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group