Converting a Provisional to a Non-Provisional Application to Obtain Your First Issued Patent
With a detailed provisional patent application on file, an inventor will have a year to convert the provisional application to a “non-provisional” application. This could occur any time during the year after filing the non-provisional, but the sooner the conversion to a non-provisional occurs the less likely issues will arise due to third-party filings within the year period.
At least three months should be allotted for the “conversion” process as there are formalities that must be adhered to when filing a non-provisional application, and it takes time to prepare the application.
The provisional application materials must be written up into a “Detailed Description” with reference numerals that correspond to Formal Drawings, and “Claims” (the legally enforceable portion of the patent) must be drafted. The Claims are drafted based on the detailed description and drawings and are the only legally enforceable part of the patent once allowed. The cost to prepare the formal drawings is about $30/sheet for the drafts-person, and the cost for attorney time to draft the application can begin in the five-figure range, depending on the complexity and resulting time required.
The USPTO “Small Entity” fees associated with the non-provisional filing are currently $785. There is also an optional $2000 prioritized examination fee (also called “Track One”) to obtain “final disposition” (allowance/final rejection) within 12 months. Without the accelerated examination, the examination process typically takes 2-4 years. (Sometimes it is good to be fast, and other times it is not….) Another thing to consider at this point is whether you want to try to obtain patent protection in other countries; this can be done under the Patent Cooperation Treaty (PCT) but can get very expensive as each country has its own patent process and local patent lawyers will need to be retained.
Once filed, the non-provisional application will be “pending.” At some point, an examiner will review the Claims of the application and more likely than not issue some form of rejection in a “Non-Final Office Action.” (If there is no objection or rejection, there will be an allowance.) The examiner will likely cite other patents and publications.
In response to an office action, arguments and claim amendments are usually presented to overcome the rejection. The patent applicant and attorney can talk with the examiner, but a response must be presented within 6 months. A response typically will take 10-20 hours (or more) of attorney time to prepare, depending on the complexity of the issues involved.
The examiner will consider the response, and the application will either be allowed or there will be a final rejection. If there is a final rejection, the examination can be continued, or the rejection can be appealed.
Once the application is allowed, an issue fee is paid. Currently, the “Small Entity” issue fee is $500 and the attorney time for this will likely be an hour or two at most.