Six options to consider before your provisional patent expires

A provisional patent application expires 12 months after the filing date. As this deadline approaches, the applicant must decide what to do with the application. The options available depend on what happened before and after filing. One of the most critical factors is public disclosure. If you have publicly disclosed your invention, then one of the options not available to you would be re-filing the provisional application. In this case, in order to retain protection of the invention with the same priority date, a non-provisional (utility) application would need to be filed. Since this step is more costly, these choices can be critical for business plans. The following explains typical situations and what can or cannot be done.

SITUATION 1: You filed a provisional application, it expired after the one-year period, but you did not offer for sale or publicly disclose the invention. Provisional patents that are not referenced in a utility patent filed within one year are never published or otherwise made public. Therefore, if you have not lost eligibility in the interim, you should be able to file a new provisional or utility patent with the same idea, getting a new filing date. This new filing date becomes your new priority date and you will now have to consider any possible prior art that may have surfaced since your previous filing. Intervening prior art (inventions that became public between the previous filing date and your new filing date) can make it more difficult to obtain an allowance of your claims. For this reason, it is important to update your prior art search before filing another application, especially if the subject matter is in an art that is fast evolving.  There is a small risk in this approach because a later infringer may defend itself with claims of prosecution latches – seeking to invalidate the patent because the patentee exhibited unreasonable and unexplained delay during the patent process.

SITUATION 2: You filed a provisional patent application prior to a big tradeshow or industry conference. In this case, the provisional does offer protection on the material to be disclosed, but since this is a public disclosure, a non-provisional patent application must be filed within one year.  Resubmission of a provisional is not allowed where there has been public disclosure of the invention.

SITUATION 3: In pursuit of a license or sale of the invention, you engaged in a string of letters, phone calls, and emails to various companies disclosing the invention.  In this case, there is a statutory bar (offer for sale) and resubmission of the provisional is not allowed.  In order to continue seeking patent protection, a non-provisional application must be filed before the expiration of the provisional in order to keep the same priority date. If the provisional expires before you file the non-provisional application, when you do file the non-provisional application, the priority date will become the new filing date of the non-provisional application.

SITUATION 4: There are contests, grants, or awards for which you want to be considered.  These may be considered a public disclosure. In some cases, putting an NDA in place can protect it from being deemed a public disclosure. If that is the case, resubmission of the provisional is an option.

SITUATION 5: A company wants to evaluate your invention, but will not sign an NDA (doesn’t want to pay for an attorney to review, etc.).  Even if the company verbally tells the inventor that he will keep it secret, it may be deemed a public disclosure. You should be cautious of this situation. Not only will a public disclosure mean you are prohibited from resubmitting a provisional application, but without an NDA, you risk others taking your idea and creating their own version. If the company will not sign an NDA, see if they have their own confidentiality agreement. You should have an IP attorney review this document to ensure your rights are protected, and if the company does not have an agreement and does not want to sign your NDA, you should definitely seek the advice of an experienced IP attorney.

SITUATION 6: You received help from a neighbor, friend, etc. (no NDA was signed) to help build a prototype, make calls, send letters, and the like. You were working together for more than a year on this project.  Since there was no confidentiality agreement in place, this may be deemed a public disclosure. Even worse, the neighbor can run off with the invention!

It is important to know how your actions surrounding your invention can affect its protection. Your patent attorney can be a valuable resource for helping you decide what agreements your need or what route to take to best accomplish your goals.