What is the difference in utility patent application vs provisional? 14 Answers as of March 26, 2013

I have recently become a partner of an inventor's group. Prototype #6 is ready to take to market. Prototype #1 had a provisional patent applied in early 2010. It expired without any further actions. Prototype #1 has been sold repeatedly on the Internet for the past 3 years. Prototype #6 has the same utility function as #1, although designed differently. What type of protection/action can we take to protect our investments before continuing on to market with #6? Is it possible to file a utility patent on #6?

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Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Yes - bit is very possible that it can be filed as what is known as an improvement patent over the first device. However i would have to know more of the details as to what the actual design changes and improvements were.
Answer Applies to: Oregon
Replied: 3/26/2013
Law Office of Mathew R. P. Perrone, Jr. | Mathew Roy Patrick Perrone, Jr.
If Prototype #6, is patentable over Prototype #1, search it. If Prototype #6 appears to be patentable, file a patent application quickly. If Prototype #6 not patentable over Prototype #1, your sales of Prototype #1 say do not file.
Answer Applies to: Illinois
Replied: 3/24/2013
Turner Padget Graham & Laney, P.A. | Bernard S. Klosowski, Jr.
A utility patent application (UPA) is a "formal" application that will be examined and has the potential to result in an issued patent. A provisional patent application ("PPA") is basically a placeholder - it buys the applicant up to a year to decide whether to pursue a UPA. Unless "converted" a PPA does not become a UPA and will not be examined. Based on your facts, it appears that sales of prototype #1 will be viewed as "prior art" to prototype #6; however, based on its different design, a patent application on #6 may be possible. It would be prudent to discuss your facts with an experienced patent attorney before you take #6 to market because once you publicly disclose the invention, you will trigger certain deadlines and possibly jeopardize international patent opportunities.
Answer Applies to: South Carolina
Replied: 3/22/2013
Banner & Witcoff, Ltd. | Ernie Linek
A provisional application protects the invention described therein for one year - then it expires. If no action is taken to convert the provisional application into a formal utility application before the provisional expires - there is no more patent protection available for that invention. This is especially true when there has been a public disclosure of the invention - since that creates "prior art" - and adds to the body of knowledge against which other inventions will be tested for (1) novelty, (2) utility and (3) non-obviousness - the three requirements for an invention to be patentable. Here, prototype #1 is prior art against which prototype #6 must be sufficiently different to be patentable. Novelty is easy if #6 is different from #1. Utility is easy if the prototype has a real world "use." The hurdle to overcome is the last requirement - is #6 sufficiently different from #1 that the changes would not have been "obvious" to persons having ordinary skill in this art - based on the knowledge of #1 and other known prior art. Big differences are often not obvious. Minor differences, giving the expected results, are often obvious. If prototype #6 is still secret - you can file an application. If #6 has been made public - the critical question is - when did this occur? A one-year grace period from public disclosure is still available in the US - but filing first is now required under US Patent Law for the best chance of obtaining a patent.
Answer Applies to: Massachusetts
Replied: 3/22/2013
Mark Torche | Mark Torche
This is a great question and there is a lot of misinformation regarding what a provisional patent application is. The law regarding what a patent application needs to include are exactly the same for both a provisional and a utility application except; and of course this is a big except, that a provisional application does not have any claims. The claims of a patent application are the heart of the patent application and they are what actually protects your invention should you ever need to go to court. They define your invention. However, although the provisional application lacks claims, it must be able to support the claims that will appear in the full utility application. Unfortunately, as long as you pay the filing fee and call it a patent application, you will receive a very official looking filing receipt saying that you have a patent application and allow you to claim "patent pending" status. I say unfortunately, because if your provisional application does not support your future claims, you have no protection, and it is worse than not filing any application because you think you are protected. Of course, if your invention is not successful, none of this matters, but if you are successful and you bring an infringement lawsuit, the opposing side will have access to the provisional application and if they can show that your application was not enabling, your patent may be invalidated. I am all for provisional applications for the private inventor as they give you time to pursue your invention under the patent pending status while postponing some of the costs of trying to obtain patent protection, but you really have to have a very thorough provisional application in order to be protected. In the long run, it costs more to file a provisional application since you are not required to file provisionally, but it can delay some of the costs until you have a chance to test the market. As to the other part of your question, provisional applications by themselves are confidential and do not count as public disclosure. This is not the end of the analysis; you also have one year from the time of a public disclosure to file a patent application or you lose the right to file for the patent. The provisional application will not prevent you from filing for a patent application, but a public disclosure over a year will. If you needed the date of the provisional to preserve the one year filing window, and the provisional lapses, you will be out of luck. Of course if you have made significant improvements in the invention and the new improvements were not publically disclosed, you may be able to file a new application to cover the improvement. You really need to speak to a patent attorney or agent to determine to get a more specific answer to your question. Good luck.
Answer Applies to: Iowa
Replied: 3/22/2013
    Eminent IP, P.C.
    Eminent IP, P.C. | Paul C. Oestreich
    A provisional patent application establishes a filing date for the contents disclosed in the provisional application. It expires automatically one year after filing and is never reviewed on the merits. The contents of a provisional patent application are never published and only become public upon being cited, typically as a priority document, in a subsequent nonprovisional (utility) application, or if you otherwise publicly disclose, sell, or offer for sale the invention, *e.g.*, "Prototype #1 has been sold repeatedly on the Internet for the past 3 years". The nonprovisional or utility patent application is usually published 18 months after filing and is reviewed on the merits by a patent examiner, thus forming the basis for patent rights if any are forthcoming as an issued patent. Because prototype #1 has been publicly sold for more than one year, patent rights to that invention have likely been forfeited. The invention in prototype #6 may or may not be patentable depending on whether it is novel and nonobvious in view of what others have done in the past (prior art). Prototype #1 is now prior art to prototype #6. It is not clear what you mean by "prototype #6 has the same utility function as #1". Prototype #6 may be patentable over prototype #1, if it has at least one feature that is novel and nonobvious over the prior art including prototype #1. A good strategy includes regular provisional patent application filings, followed-up, or preceded by, patentability searches to determine some confidence in obtaining a patent. In the favorable instances of patentability search results, you should consider filing utility patent applications (and international or foreign filings depending on your business strategy) within one year of provisional filing to secure the patent rights. To answer your last question, you could certainly proceed to filing a utility patent application, and the quicker you do so, the quicker you will obtain any patent rights forthcoming. Since you are ready to market prototype #6, the utility application makes more sense than filing a provisional because you don't need the extra year to determine whether you are ready to go to market.
    Answer Applies to: Utah
    Replied: 3/21/2013
    DANIEL NESBITT | Hasse & Nesbitt
    Yes it is "possible", but the details are essential to the question "is prototype #6 patentable over "prior art" prototype #1. A patent attorney can help you evaluate this essential point.
    Answer Applies to: Ohio
    Replied: 3/21/2013
    Ochoa and Associates
    Ochoa and Associates | Susan Ochoa Spiering
    Utility patent application is examined and may lead to grant of a patent. Provisional application is not examined and will void after 12 months. To preserve the priority date of the provisional application, you need to convert it to a non-provisional appl.
    Answer Applies to: Texas
    Replied: 3/21/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    Because #1 has been on the market for more than a year, it cannot be patented. You may be able to obtain a design patent on #6. Check with a patent attorney before you apply with the USPTO.
    Answer Applies to: Nebraska
    Replied: 3/21/2013
    Tran & Associates | Bao Tran
    A provisional application has to be converted into a utility application within one year or it is abandoned. Yes, you can file utility application even if the provisional application had expired but you just can't claim the filing date of the provisional app.
    Answer Applies to: California
    Replied: 3/21/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    Your problem is that prototype one is prior art to prototype six and could block you from getting a patent on prototype 6 unless the design changes are significant and non-obvious. A provisional is a cheap placeholder that buys a year of time before you file a utility. A utility is a full scale patent application with claims and a detailed specification with examples and drawings. You urgently need to file a utility for prototype 6 or find another way to protect yourself via trade secrets or trademark or copyright law. Failure to retain counsel and deal with this immediately would be a huge mistake. This is especially true because on March 13 we moved to a first to file patent system. The first to win the race to the patent office gets credit as inventor. You are in a race now and you cannot afford to waste any more time. Your failure to file a utility for Prototype one is already a major mess.
    Answer Applies to: New York
    Replied: 3/21/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    A provisional application does not get examined. It just grants the inventor a place holder for a future filed utility patent application. A provisional application gives one year of patent pending status. If a utility version is not filed within the year the priority date of the provisional is lost. A properly prepared provisional application will have everything except for the claims. The USPTO provisional application filing fee is about 1/5 the the USPTO fee for the utility application. Let me know if you have any questions in regard to this issue.
    Answer Applies to: California
    Replied: 3/21/2013
    Shimokaji & Associates
    Shimokaji & Associates | Michael Shimokaji
    You may be able to file a provisional or non-provisional application based on the design differences between prototype #1 and prototype #6, assuming the latter has not been sold in the past year, among other things.
    Answer Applies to: California
    Replied: 3/21/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    It might be possible. You need to have an attorney review the particulars.
    Answer Applies to: Utah
    Replied: 3/21/2013
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