This article assumes you have basic knowledge as to what a provisional patent application is. It also abbreviates provisional patent application as simply ‘provisional patent’.
A provisional patent application cannot be renewed. Instead, you can either 1) Re-file a new one or 2) Extend it 18 additional months with a PCT Patent Application. For this article, we assume you do not extend the provisional patent application using a PCT but rather, take the option to re-file a new provisional patent application and let the old provisional patent application expire. This has risks which are explained.
A provisional patent lasts for 12 months and to keep the filing date of the provisional patent, you must file a non-provisional patent application before the 12 months are up. If you are not ready to file a non-provisional patent application before the 12 months are up, what you can do is file a new provisional patent application. However, doing so has consequences explained in this article. When you file a new provisional patent you will get a new filing date and the filing date of your previous provisional patent will still expire. An old provisional patent and a new provisional patent are independent of each other. Filing a new provisional patent does not affect the old provisional patent. Let’s study this important concept with an example.
Let’s say you filed a provisional patent application on 2/1/2010 which will expire on 2/1/2011. We will call this provisional patent ‘Provisional A’.
Your current filing date is 2/1/2010, which is the date you filed the provisional patent. To keep your 2/1/2010 date, you need to file a non-provisional patent application before the provisional patent expires on 2/1/2011. If this is not done before 2/1/2011, the provisional patent will expire and the 2/1/2010 date will be lost.
If you decide to file a new provisional patent, that new provisional patent gets its own date. Let’s say you file a new provisional patent on 1/20/2011. We will call this new provisional patent ‘Provisional B’.
Because you do not file a non-provisional patent before the expiration of Provisional A, Provisional A will expire on its expiration date of 2/1/2011. The fact that you filed Provisional B has no impact on Provisional A. These two are independent of each other. Again, the way to keep the 2/1/2010 date of Provisional A is to file the non-provisional patent application before Provisional A expires on 2/1/2011. If you do not, Provisional A will expire on 2/1/2011 and disappear, leaving you with just Provisional B, seen below.
Doing the above to re-file a new provisional patent can have major consequences. Let’s go over the same example again but this time with a twist. You file Provisional A on 2/1/2010. Then, let’s say you took your invention to a trade show and someone there copies your idea and files his own patent application a month later on 3/1/2010.
You can see above that your filing date is 2/1/2010 and the competitor’s date is 3/1/2010 so you are fine being ahead of him in line. The patent office will see that you are first to file the patent application because your date is before the competitor’s date. You will get first chance to get this patent before the competitor can because your date is earlier. However, to keep this 2/1/2010 date, remember that you need to convert the provisional into a non-provisional patent before the expiration of the provisional on 2/1/2011.
Let's say you do file the non-provisional on 1/31/2011 for Provisional A before it expires on 2/1/2011. Because you filed the non-provisional patent before the provisional expired, the non-provisional gets to inherit the 2/1/2010 date of the provisional and the 2/1/2010 date will not disappear. You get to keep this date throughout the patenting process. The patent office will continue to see that your 2/1/2010 date is before the competitor’s 3/1/2010 date and you are ahead in line.
However, what happens if you do not file the non-provisional and instead decide to file a new provisional? Let's say you file a new provisional patent application on 1/20/2011 which we will call Provisional B. This date of filing the new Provisional B in our example is not important to the concept. You could have filed the new Provisional B before or after the expiration date of Provisional A and the result would be the same. This is because Provisional A and Provisional B are completely independent of each other. One does not affect the other.
Since you do not convert Provisional A into a non-provisional before its expiration date on 2/1/2011, Provisional A will expire and disappear after the 2/1/2011 expiration date. The result after 2/1/2011 is below:
You can see above that once your Provisional A expired and disappeared, you are left with only Provisional B. Your Provisional B date is 1/20/2011. Your competitor's 3/1/2010 date is now in front of you in line. Your competitor previously was after you in line when you had Provisional A. However, once Provisional A expired, you lost your Provisional A date. Even though you re-filed a new Provisional B, the filing date of Provisional B is later than when the competitor filed. The competitor has now moved in front of you and the Patent Office will allow him first opportunity to get the patent before you.
The key concept here is that when re-filing the provisional patent, you get a new date. Your old date will continue to disappear if you do not file the non-provisional before the old provisional patent expires. Once the old provisional patent disappears, someone who used to be behind you line may suddenly become in front of you in line.
This is especially important now after the 2013 America Invents Act which puts the US in a “First To File” system. First to File means that the patent office will look at patentability based on who is first to file the patent application. Even though you may have invented it before a competitor, if you don’t file before that competitor, and keep your date, that competitor may jump in front of you. It’s all about the filing date and who has the earliest date!
Further, your new date could affect if your invention is still patentable under the 1 year grace period rule. Under this rule, a patent application must be filed within 1 year of your first public disclosure of the invention. For example, if you showed your invention to the public, on a website or YouTube, for example, your patent application must be dated within 1 year of that date of public disclosure. If you file a new provisional patent application, your date is the new date. Your old date is lost if you did not convert that old provisional patent application into a non-provisional patent application. If your new date is more than 1 year after your first public disclosure, the patent office may reject your patent application when you convert the provisional patent into a non-provisional patent. For more detail on this, please see When Should I File a Patent Application?
The conclusion is that you should always try to convert your provisional patent into a non-provisional patent application before the provisional expires, to keep the earliest filing date. If unable to do so, you can re-file a new provisional patent. However, your old provisional patent will continue to expire and disappear, and you will lose your old filing date and get a new filing date, potentially allowing someone who used to be behind you in line to become in front of you in line, or potentially having a patent application date that is more than 12 months past your first public disclosure. Both of these situations may prevent you from getting a patent application approved.
© April 3, 2014 Thoughts to Paper LLC