If I get a Provisional Patent and things go well, do I then need to get a Full Utility Patent? 12 Answers as of October 18, 2012I'm just trying to decide where I should start. I'd prefer to not spend as much money as the Utility Patent but if I'll hopefully need it eventually, I'm thinking it might be worth it.
Eminent IP, P.C. | Paul C. Oestreich
Yes. A provisional patent application automatically expires one year after it is filed. In and of itself, a provisional patent application will never become enforceable patent rights and it is never reviewed by an examiner at the Patent Office. To perfect your provisional patent rights you must file a non-provisional utility patent application claiming priority to the provisional patent application and within the year after filing the provisional patent application, *i.e.*, before the provisional application expires. A provisional patent application can be a cost effective way to initiate patent rights and it gives you one year after filing to determine whether you want to invest in the more expensive utility patent application.
Answer Applies to: Utah
Shimokaji & Associates | Michael Shimokaji
If you want to get an issued patent, you will need to file a non-provisional (utility) patent application. Only an issued patent will give you the right to sue an infringer. The cost of filing a utility application can vary a lot.
Answer Applies to: California
Law Office of Kirk Buhler | Kirk A Buhler
The current rule is "first to file". You should file a provisional application and then file the Non-Provisional or Utility application within one year of filing the provisional application. Once you file the Utility version you can't make improvements without filing another Utility version. It is best to file a Provisional application initially to give you the opportunity to make improvement unless you have a finish working unit. Generally if you can't get the product working or can't generate sales within the year you should consider abandoning the Provisional application.
Answer Applies to: California
Turner Padget Graham & Laney, P.A. | Bernard S. Klosowski, Jr.
A provisional patent is a bit of a misnomer. It is not a patent per se - it is more of a placeholder; something to buy time to determine the commercial feasibility of your invention, for example. You would have to file a corresponding utility patent application on or before the 1st year anniversary of the provisional to be able to claim its filing date. If you don't file the utility in that timeframe, the provisional simply expires after a year and you lose the ability to claim its filing date. That may be critical because other people may have come up with similar inventions in that one year window. Without the benefit of the provisional's filing date, those intervening inventions might be used against a later filed utility application. A word of caution: a provisional has to be written in sufficient detail to support the claims of the ultimate utility patent application. It's sort of a garbage-in, garbage-out situation. If the provisional is so thinly written, lacks sufficient technical detail, etc., it may not support the claims of the utility application. In that event, even if you file the utility by the one year anniversary, the provisional may not be able to shield your utility's claims against others' intervening inventions, applications, publications etc. The old saying "you pay for what you get" applies to a utility patent. A properly prepared utility patent application that can avoid prior art, become a patent and stand up to infringers or invite licensees or buyers simply isn't cheap.
Answer Applies to: South Carolina
Webb IP Law Group | Jason P Webb
If you file a provisional patent application then you have one year from the date of filing to file a non-provisional patent application otherwise you will lose the benefit of the provisional filing. Sometimes losing the benefit of the provisional filing has no consequences, sometimes the consequences are more serious and sometimes it can be catastrophic. However, it is usually virtually impossible to know what the consequences will be at the time of the deadline.
Answer Applies to: Utah
Ochoa and Associates | Susan Ochoa Spiering
If you file a provisional patent application, that is only good for 1 year, and to continue with the patent process you must convert your provisional to a non-provisional patent application, which would be examined and hopefully mature into a granted patent.
Answer Applies to: Texas
Banner & Witcoff, Ltd. | Ernie Linek
Somebody needs to file a formal patent application before the provisional application expires - one year from the filing date. Otherwise - the invention is lost, assuming that it has been made public, or sold after the provisional filing date. That somebody can be you, the inventor, or anyone that you sell or license the invention to. Beware of the expiration date of the provisional!
Answer Applies to: Massachusetts
Barton Barton & Plotkin | Maurice Ross
A provisional patent application is a mere placeholder-it buys you a filing date but not much else. And from the that you file it, you have a one year deadline for filing a utility application. Only a utility application can mature into a patent. Thus, you absolutely must plan to file a utility application. Further, your provisional must be drafted with the same care as a utility application. It buys you time, but if you do not prepare it with great care (which means retaining counsel), it may not be worth the paper its printed on . Finally, it is critical for anyone in your position to retain patent counsel. Filing patent applications is not a "Do It Yourself Job". Nine times out of ten if a lawyer is not involved in filing the patent application, mistakes will be made that render it worthless.
Answer Applies to: New York