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The Importance of Provisional Applications in the Patent Process

Do you have a provisional patent application that you want to convert to a non-provisional patent? As seasoned patent attorneys, we often receive questions on the conversion process and what documents are necessary in order to successfully convert a provisional patent application to a non-provisional patent application.

Here are the key considerations to keep in mind.

When you file a provisional patent application, you secure a place in line for obtaining a patent. The 12-month clock starts ticking as soon as you file your provisional, and provides you time in developing your innovation, securing funding for your product, and providing you time to complete the full patent application.

A non-provisional application also gives you the opportunity to present your claims in greater detail and which may result in stronger legal protections for your innovation.

Filing a provisional first can also save you money in the long run, as non-provisional filing fees are higher than provisional filing fees.

However, provisional patent applications do not provide patent rights- they simply secure your spot in line with the filing date. To receive patent protection, you must file a non-provisional patent application within 12 months of your provisional and meet all the requirements for patentability.

If you need assistance in determining whether a Provisional Patent Application or Non-Provisional Patent Application, see our guide and video here.

Converting Your Provisional Patent Application to a Patent

Filing a Non-provisional Patent Application

An applicant who files a Provisional Application for Patent must file a corresponding Non-Provisional Patent Application within 12 months to benefit from the priority date of the provisional filing. The corresponding Non-Provisional Patent Application must specifically refer to the Provisional Application.

For instance, the non-provisional patent application would contain a paragraph reciting “The present applications claims priority to the earlier filed provisional application having serial no. XX/XXX,XXX, and hereby incorporates subject matter of the provisional application in its entirety.”

The USPTO will then compare the Non-Provisional Patent Application with the earlier-filed Provisional Application. If the subject matter of the descriptions is determined to be the same in both applications, the USPTO will grant the applicant the provisional application’s earlier filing date for any patent that issues.

Converting to a Provisional Application to a Non-Provisional Application

Alternatively, an applicant can convert a Provisional Application for Patent to a Non-Provisional Application. This option saves the applicant little effort, however, and virtually no money. Furthermore, the Provisional Application’s filing date is lost and the filing date for any patent that issues will be the date of conversion.

To better understand this concept, we must consider that a patent expires 20 years after its filing date.

If you file your non-provisional patent application on Jan. 1, 2022, then it will expire on Jan. 1, 2042.

Now let’s consider the following scenario – you had filed a provisional application on Jan 1, 2021, and then filed a non-provisional on Jan. 1, 2022, claiming priority to the provisional filing. Your non-provisional filing will be examined with the priority date of Jan. 1, 2021, but your patent protection (if granted) will expire 20 years after the filing of the non-provisional application (Jan. 1, 2042).

Yet, if you decided to convert your provisional into a non-provisional application, you would only be eligible for patent protection through Jan. 1, 2041.

So the benefit of filing a non-provisional patent application is that the year of provisional protection does not count against your 20 year period of patent rights.

What’s the Purpose of Converting?

So why would anyone want to convert the provisional filing to a non-provisional? The question can be answered when considering public disclosure.

A non-provisional application must be filed within one year of the invention’s public disclosure. Let’s analyze this scenario with an example.

If you publicly disclose your invention on June 1, 2021, then file a provisional on Jan. 1, 2022, you have until June 1, 2022, to file a non-provisional patent application. Even though provisional patent protection lasts through Jan. 1, 2021, it would be too late to file a non-provisional application at that point. So, if it is now June 2, 2022, you can no longer file a non-provisional patent application since you had disclosed your invention more than a year ago. In this case, you should convert your provisional into a non-provisional filing since it will retroactively apply your provisional filing date to your non-provisional conversion date.

When Should I Convert My Provisional Patent Application to a Non-Provisional Utility Patent?

We usually get asked the question: If I rush to convert my provisional to a non-provisional patent filing, does that reduce the risk of someone having a third-party receiving a patent on the same subject matter?

Typically, there is NO rush in filing the non-provisional utility patent application once you have already secured a provisional patent application. Whether you file the non-provisional patent application the next day or 11 months and 20 days from the priority date established by the provisional, your patent priority rights will be the same.

In fact, the longer your wait, the longer your effective patent coverage may actually be. Consider that a utility patent grants the inventor rights to exclude others from making, using, and selling the patent invention for a period of 20 years after the non-provisional patent filing date. So, if you have a priority date 1 year prior to the non-provisional filing date, that creates an effective patent priority of 21 years.

But there’s a catch to waiting – Warning:

The longer you wait to convert your provisional patent application to a non-provisional, the greater the potential of someone obtaining a patent on the same subject matter as you – even if you have an early patent priority date established by your provisional patent filing.

Here is why: consider that a provisional patent application is never disclosed to the public. It’s kept confidential by the USPTO, and not even patent examiners assess provisional patent applications when they examine non-provisional utility patent applications.

This means that, while you are ‘patent pending’ with a patent priority date secured by a provisional patent filing, another applicant may apply for a non-provisional patent. In some instances, the patent examiner may begin examining their patent application while your provisional patent is still pending under confidentiality. This means that your provisional patent application may not be used as prior art against the subsequent patent filer. In turn, the subsequent patent filer may be granted a patent, even though you had an earlier filed provisional.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Get Proper Patent Assistance

The patent process can be daunting, and it’s important to have the right team on your side. If you have any more questions or want to discuss converting your provisional patent application to a non-provisional utility patent filing, don’t hesitate to reach out.

It is highly advisable to seek the assistance of a registered patent attorney or agent when preparing, filing, and prosecuting your provisional or non-provisional patent application.

At Founders Legal, we have a team of experienced patent attorneys and advisors that can help you with your provisional or non-provisional patent application, as well as all other aspects of the patent process. Contact us today to schedule a patent consultation.

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