Provisional or Non-Provisional? Key Steps to Protect Your Invention

Patents can feel like a maze—especially for newcomers. Whether you’re worried about price, unsure which application to file, or deciding if you need a lawyer, this guide breaks down Gary Shuster’s insights into clear, practical steps.

The video was created in response to a Facebook question in a group for inventors. It is reproduced below:

1. Understanding Patent Costs

The term “IP patent” can be confusing, but in reality, all patents are part of intellectual property (IP). Generally, fees vary based on complexity. The price ranges below can easily be exceeded depending on factors unique to the invention.

Simple Inventions (e.g., a new hammer grip): $10k–$15k USD
Complex Patents (e.g., software, AI, specialized machinery): $20k–$60k+ USD
Office Actions: Each rejection or request for amendment from the USPTO can cost an additional $5k–$10k+
International Filings: Expect costs to reach into the low six figures if you want protection in multiple major markets (e.g., U.S., China, UK, Germany).

Tip: If you foresee most value in a few specific countries, focus your resources there rather than filing worldwide.

2. Provisional vs. Non-Provisional (Utility) Patent Applications

Before diving in, remember:

A provisional application never becomes a patent on its own.
A non-provisional (utility) application is the one that can actually issue as a patent.

When to File a Provisional Application

Early Protection: If you’re short on funds or still finalizing features, a provisional lets you quickly secure a priority date.
One-Year Buffer: You have 12 months to refine your invention and then file a full utility application.
Iterative Innovation: If your idea evolves rapidly, you can file multiple provisionals and roll them all into a single utility application before that 12-month cutoff.

When to File a Utility (Non-Provisional) Application

Market-Ready: If your product is ready to launch or you’re pitching to investors who demand a formal patent application.
Immediate Enforcement: A utility application will place you on track to receive enforceable rights sooner.
Short-Term Value: If you believe your invention’s market worth is highest in the next few years, starting the clock now can help secure earlier patent issuance.

3. Choosing to Work with a Patent Attorney

Do you need an attorney? Strictly speaking, no. The USPTO allows inventors to file on their own. But if you can afford professional help, it often pays off:

Avoiding “Patent Profanity”: Certain limiting words in your application (“must,” “only,” “requires”) can narrow your claims too much.
Ensuring Enablement: You must provide enough detail so someone with ordinary skill in the field could build or use your invention.
Efficient Drafting: A good attorney anticipates examiner objections and crafts claims to avoid them.
Not Tripping Over Your Own Shoelaces: There are many pitfalls, big and little, that can damage your ability to get a patent or the value or validity of the patent once issued.

Budgeting Tip: If finances are tight, you might file a provisional on your own, then hire an attorney to draft or refine the full utility application before the 12-month deadline.

4. Common Pitfalls to Avoid

Missing the One-Year Window
- Any provisional patent application expires 12 months from its filing date. Failing to convert by then forfeits your priority date.
Under-Describing Your Invention
- If your disclosure isn’t thorough, it may not provide valid protection—even if filed on time.
Waiting Too Long to File
- The U.S. and many other countries follow a “first-inventor-to-file” system. Delaying even a few days can cost you patent rights if someone else files first.
Relying on the Provisional Alone
- The provisional is just a stepping stone; it doesn’t become a patent. You must eventually file the utility application to secure enforceable rights. Once the provisional expires, it is dead. If you haven’t filed a PCT or utility application claiming priority to it before it expires, you will not be able to claim priority to it.

Watch the Video for the Full Discussion

If you want to hear inventor Gary Shuster’s firsthand perspectives—covering everything from cost breakdowns to strategic filing choices—check out the accompanying Innovation Café video. It’s packed with real-world advice for newcomers and seasoned innovators alike.

Final Thoughts

Securing a patent is a balance between costs, timing, and thorough disclosure. Provisional applications offer flexibility and a cheaper path to “patent pending,” but converting to a non-provisional utility patent is crucial for actual protection. Whether you’re ready for the market now or fine-tuning your prototype, remember that filing strategies can significantly impact the lifespan and value of your invention.