Next Steps: Provisional Patent Application

Congratulations!

Your provisional patent application is filed. You now have “Patent Pending” status.

Now what?

What to Expect After your Provisional Patent Application is Filed

A provisional patent application gives you an initial filing date for your invention(s) described in the application. If you want, you can indicate your “Patent Pending” status to others. However, you should discuss and understand the potential consequences of disclosing your invention, your filing date, or the actual contents of your application with others.

A provisional patent application only covers embodiments that are disclosed in sufficient technical detail. It does not cover any embodiments which are only superficially described or that might be developed after the filing date of this application. Schedule an appointment to discuss any versions of your invention that are not sufficiently described in your application before a possible public disclosure, sale of your invention, or offer to sell your invention.

Your provisional patent application expires in 12 months. Plan to make the following decisions at least 3 months before your provisional patent application expires:

• Will you file follow-on patent applications to protect improvements and changes? (see #1 below)
• List the countries in which you expect to pursue patent protection. (see #2 below)

Advance notice is necessary to adequately prepare and coordinate the filing of any follow-on applications, especially foreign applications which may require translations.

If you don’t make these decisions at least 3 months prior to the expiration of your provisional patent application, your provisional patent application will be allowed to expire without maintaining any priority to your invention. In other words, your time, money, and efforts so far will have been wasted. This will result a loss of priority and may result in a loss of additional rights due to intervening activities.

1. Pursuing Improvements and Related Inventions

Inventions are often improved over the course of research and development. Although provisional patent applications cannot be amended to add new content or disclosure, these improvements can be easily protected.

Applicants who have filed a provisional patent application should continue to use additional provisional patent applications to capture critical improvements of their inventions. Filing a new provisional patent application based on updates to prior provisional patent application documents can be very easy and efficient. Ultimately, multiple provisional patent applications can be referenced together in a single non-provisional patent application, making it possible to obtain an issued patent that covers the combined efforts of one or more inventors over the course of a product’s lifecycle.

Similarly, multiple inventions can be described in a single provisional patent application. However, the patent office will only allow claims to a single invention, so claims to separate inventions can be split out into separate non-provisional patent applications for examination and issuance.

The flexibility of the provisional patent application process can be a powerful tool for inventors and applicants. Schedule an appointment to discuss how you can optimize your use of these tools.

2. Pursuing Patent Protection in Each Country

In order to maintain the benefit of the filing date of the provisional patent application, you will need to file one or more follow-on applications prior to expiration of your provisional patent application in 12 months. These follow-on applications may include any of the following:

• A non-provisional patent application (in the US)
• An international PCT patent application (under international agreements)
• Foreign patent applications (in individual foreign countries or regions)

One common strategy is to file both a US non-provisional patent application and an international PCT patent application before your provisional patent application expires. Filing a US non-provisional patent application will start the examination process and, hopefully, result in the grant of a US patent. Filing the international PCT patent application allows an applicant to get some preliminary evaluation at an international level and, importantly, extend the timeline for filing in foreign countries for up to 30 months (in most countries) from your original provisional filing date.

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[This post was originally published August 10, 2018, on LinkedIn by Jeff Holman.]

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Legal Disclaimer: This general information does not establish a legal relationship with any attorneys or law firm without a written and signed legal representation engagement agreement.