In what circumstance will I lose the right to patent when provisional patent expires? 12 Answers as of April 28, 2013

Say I file a provisional in 01/2014 and publish it in a journal in 04/2014 invoking "patent pending." Do I have to file a non-provisional before 1. 01/2015 (1 year after provisional, claiming the priority date) or 2. 04/2015 (1 year after public disclosure, assuming I do not claim the priority date of my expired provisional AND nobody else tried to patent it after the disclosure)?

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Gerald Walsh | Gerald Walsh
You need to file the nonprovisional application within one year of the filing date of the provisional application to claim priority of the provisional application filing date for the nonprovisional application. You have to file the nonprovisional application within one year of the publication date of the invention in the journal or you will lose your right to file a patent application on the invention. The safest approach is to file the nonprovisional application based upon your provisional application, claiming priority of the provisional application date for your nonprovisional application. The first to file a patent application on an invention will prevail over anyone who files later, so it is best to claim priority of your provisional application filing date for your nonprovisional application.
Answer Applies to: Alabama
Replied: 4/28/2013
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
First, your dates are incomplete and I'll assume that you meant the first day of each month, i.e., 1 January 2014 (filing date of the provisional application) and 1 April 2014 (disclosure date). In either case your provisional patent application will expire on 2 January 2015 and you will lose the right to claim priority to the filing date of your provisional application. The wise thing to do is to file your non-provisional application on or before 1 January 2015 claiming priority to your provisional application in which case the effective filing date of your non-provisional application will be 1 January 2014. If you decide to file your non-provisional application after that date, say on the one year anniversary of your disclosure 1 April 2015, then the effective filing date of your non-provisional application is the day you filed it, i.e., 1 April 2015. As such, you will allow 15 months of potential prior art to be used against you. These prior arts can be anything that becomes available to the public during those 15 months, including printed publications, patents, published patent applications, use or sale anywhere in the world, etc. The exceptions to the prior art that can be used against you would cover your disclosure only, i.e., the disclosure you made on 1 April 2014 could not be used against you because it's within the 12 months grace period. However, disclosures (which includes printed publications such as articles, or patents and published patent applications with effective filing dates prior to the effective filing date of your non-provisional application) made by others whose subject matter was not obtained from your disclosure (independent work) can be used against you.
Answer Applies to: California
Replied: 4/25/2013
Banner & Witcoff, Ltd. | Ernie Linek
You are better off if you select the first choice - file by the one year deadline and claim priority to the provisional filing date. The second choice "assumes" that another party does not see your publication, modify the idea (even slightly) and then they file a patent application on "their" version of your invention. If you wait the one year from publication - the other party is now the "first inventor to file" - and you may not be able to patent your invention.
Answer Applies to: Massachusetts
Replied: 4/23/2013
Webb IP Law Group
Webb IP Law Group | Jason P Webb
You lose the right to file a patent application in the United States once it has been one year from the date you publicly disclosed your invention. You lose the right to claim priority to a provisional patent application once is has been one year from when you filed the provisional patent application. The rule about provisional patent application priority does not overwrite the rule about the one year deadline from public disclosure. So, even if you filed a provisional patent application and it has expired, if it has not been a year yet since your first public disclosure, you can still file a patent application.
Answer Applies to: Utah
Replied: 4/23/2013
Ochoa and Associates
Ochoa and Associates | Susan Ochoa Spiering
You will lose the rights one year after filing. A provisional application will be expired 12 months after the filing date. If you do not refile a non-provisional application claiming the priority date, you will be deemed to have abandoned the provisional application. It is not advised to publish the information or disclose your provisional application without a non-disclosure agreement. Otherwise, if you chose not to convert your provisional application, you risk having placed the information in the public domain for all to use.
Answer Applies to: Texas
Replied: 4/23/2013
    Eminent IP, P.C.
    Eminent IP, P.C. | Paul C. Oestreich
    As is frequently the case, the answer is: "it depends". Patent rights may include foreign and/or domestic (U.S.) patent rights. So, it depends on which rights you are trying to preserve. Under U.S. law, you only lose patent rights if the invention has been on sale, offered for sale, or publicly disclosed for more than one year and you have not filed a patent application (often referred to collectively as "the on sale bar") . So, under your fact scenario, and assuming you have not otherwise publicly disclosed the invention prior to 04-01-14, and no one else has filed an application for the same invention since 01-01-14, the provisional patent filing gives you the option of seeking patent rights with priority from as early as 01-01-14, but not the obligation to do so. Your provisional application will automatically expire and never be published unless you do the publishing. However, by self-publishing the provisional on 04-01-14, you have until 04-01-15 to file your U.S. nonprovisional application or you will lose your U.S. patent rights. If you fail to file a U.S. nonprovisional, international, or foreign national patent application by 01-01-15, your public disclosure on 04-01-14 eliminates your foreign patent rights in all countries that require absolute novelty (*i.e.*, all foreign countries that matter), but you would still have another 4 months to file a U.S. nonprovisional application and avoid the on sale bar, thus, preserving your U.S. patent rights only.
    Answer Applies to: Utah
    Replied: 4/22/2013
    Law Office of Mathew R. P. Perrone, Jr. | Mathew Roy Patrick Perrone, Jr.
    If the patent application is not within one year of the provisional filing date, you lose the date advantage of the provisional. You must also remember, first to file wins. Disclosure or offer for sale more than one year before the effective filing of the patent application, means unpatentable.
    Answer Applies to: Illinois
    Replied: 4/22/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    Based upon your question your date is 04/2015. If you do not file a non-provisional application by 1/2015 you will lose the priority date of 1/2014 and if someone else files an application prior to 04/2015 they will have priority.
    Answer Applies to: California
    Replied: 4/22/2013
    Gerald R. Black, Esq.
    Gerald R. Black, Esq. | Gerald R. Black
    This is an excellent question. The U.S. has always provided inventors with a 12-month grace period from the date of a public disclosure until the Patent Application is filed. No other country in the world does this. If the inventor's publication pre-dates the filing date of the Patent Application, rights to the invention are jeopardized in the rest of the world. If the priority date is lost (01/2014 in your example) all international patent rights have been jeopardized. Another important issue that needs to be examined here is does the scope of the publication match the scope of the Provisional Application" For example, if the publication discloses "X" and "Y", but the Provisional Application only discloses "X", international rights to "Y" have been jeopardized. To prevent this from happening, the inventor can file a 2ndU.S. Provisional Application prior to the publication date (04/2014). The right to file a U.S. Patent Application using the priority date of a U.S. Provisional Application expires on the anniversary date that the U.S. Provisional Application was filed. At the end of the 12 month period, the inventor can file either a U.S. Patent Application, or an international (PCT) Application, designating all countries, including the U.S. Additional subject matter may be added in the U.S. Patent Application, or international (PCT) Application. The U.S. Provisional Filing System enables the Applicant to *PRESERVE* an early filing date for a fraction of the cost of filing a U.S. Patent Application; and *DEFER* most filing, translation, prosecution, issue, and maintenance costs for up to 12 months if only U.S. rights are sought, and for up to 30 months if worldwide rights are sought. At the end of the 12 or 30-month period, the Applicant will be able to make a more informed decision about whether to pursue patent protection, or to abandon rights without incurring any further legal costs. There will be no substantive examination of the Provisional Application. The U.S. Provisional Filing System is designed to be *inexpensive* and * simple*, and is particularly useful if the invention is in a state of development and it is expected that additional inventions will be soon made and added. The one-year provisional period is *NOT* counted as part of the new 20-year patent term. Accordingly, the Applicant has acquired an extra year at the end of his patent term. The Provisional Filing System is *simple* with minimal formal requirements - since it requires no claims; no oaths; no signatures; no abstracts; and no prior art statements.
    Answer Applies to: Michigan
    Replied: 4/22/2013
    Ference & Associates LLC
    Ference & Associates LLC | Brian Samuel Malkin
    The provisional patent application memorialized you as the first inventor to file and gives you 12 months to file a non-provisial patent application. The subsequent public disclosure by you or co-inventors in a public journal does not accelerate the time.
    Answer Applies to: Pennsylvania
    Replied: 4/22/2013
    Tran & Associates | Bao Tran
    If you have publicly used or sold or disclose all details of the provisional application, then you can't apply for a patent on the same concept. However, if you have not disclosed to anyone the details, i.e., the invention is still secret, You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era. I would recommend the use of software from called ProvisionalBuilder. A feature summary is at THe software helps you organize information, and through your summary description, brings back sample patents in the same field for you to use as examples.
    Answer Applies to: California
    Replied: 4/22/2013
    Shimokaji & Associates
    Shimokaji & Associates | Michael Shimokaji
    If you are not concerned about maintaining the benefit of your provisional filing date, then you can file by April 2015.
    Answer Applies to: California
    Replied: 4/22/2013
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