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.
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, 2000, then it will expire on Jan. 1, 2020. Now let’s consider the following scenario – you had filed a provisional application on Jan 1, 1999 and then filed a non-provisional on Jan. 1, 2000, claiming priority to the provisional filing. Your non-provisional filing will be examined with the priority date of Jan. 1, 1999, but your patent protection (if granted) will expire 20 years after the filing of the non-provisional application (Jan. 1, 2020). Yet, if you decided to convert your provisional into a non-provisional application, you would only be eligible for patent protection through Jan. 1, 2019. In essence, the year of provisional protection does not count against your 20 year period of patent rights.
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 inventions public disclosure. Let’s analyze this scenario with an example. If you publically disclose your invention on June 1, 1999, then file a provisional on Jan. 1, 2000, you have until June 1, 2000 to file a non-provisional patent application. Even though provisional patent protection lasts through Jan. 1, 2001, it would be too late to file a non-provisional application at that point. So, if it is now June 2, 2000, 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 ñ since it will retroactively apply your provisional filing date to your non-provisional conversion date!
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal