Where Americans File Foreign Patents

We recently spoke with an inventor who asked a number of questions about filing patent applications overseas. His invention was in the construction technology area. He expected that his product would sell well in a number of foreign countries, and he wanted patent protection in those markets.

However, the cost of filing a patent application in each of his anticipated foreign markets would be well over his IP budget. So, his question was, which foreign countries should he file patent applications?

Start by considering any country where the applicant will make, sell, or license the product. Although, this is a general rule that may be cost prohibitive or excessive for some inventors. With budgets and costs in mind, which countries should applicants file patent applications?

The chart below illustrates the number of patents filed by US applicants in respective countries. The red line indicates the percentage of filings by Americans in each country.

Where Americans File Foreign Patents

(https://www.wipo.int/ipstats/en)

As shown, American companies tend to file a large number patent applications in China, Japan, Canada, Australia, Brazil, and Korea. But these numbers only provide half of the answer.

The technology areas of the invention may also influence foreign filing decisions. In this regard, another metric to consider is the technology areas are most popular for fling in a foreign jurisdiction.

Where Americans File Foreign Patents

(https://www.wipo.int/ipstats/en)

Here we see that 15 percent of all applications filed in the German patent office are transport related. Nine percent of the patents filed in China are for computer technology. Korea is strong in electrical machinery, while the US and Japan receive many applications computer technology and electrical machinery.

Another consideration for an applicant is whether the applicant can enforce their patent rights in the foreign jurisdiction. Indeed, Japan, Canada, and Korea for example, offer judicial systems that are amenable to enforcing a patent as a foreigner. China and Brazil, for example, have judicial systems that are less predictable for foreign litigants enforcing their patent rights.

Many decisions on where to file a patent application overseas are the result of a business interest in the region. Thus, the decision of where to file may be divorced from the intellectual property considerations and made as a business decision.

In sum, when considering where to file a patent application, one should first consider where the product will be made or sold. Then look to the countries that receive the most foreign

patent applications in the technology areas of your invention, and consider filing there. Finally, consider business interests in the region to help make a better decision.

Regardless, your patent attorney should have experience guiding an applicant through the domestic and foreign application process. Best of luck with your patent applications!

US and Foreign Patent Office Updates as of March 31, 2020

As COVID-19 continues to spread and disrupt industries across the globe, patent offices in Coronavirus affected countries are, for lack of better term, not immune. These patent offices are responding by implementing deadline extensions, office closures, and delays in services.

Below is a list of relevant patent offices divided by region and their respective statuses as of March 31, 2020:

NORTH AMERICA

  • United States Patent and Trademark Office (USPTO)
    • All offices closed from March 16, 2020 until further notice – all USPTO operations will continue without interruption
    • Original handwritten signature no longer required for certain correspondence with the Office of Enrollment and Discipline (OED) and certain payments by credit card
    • Petition fees waived in certain situations for customers impacted by the coronavirus, but does not grant waivers or extensions of dates or requirements set by statute
  • Canadian IP Office (CIPO) 
    • All deadlines occurring March 16 – April 30 extended until May 1, 2020
    • Expect significant delays in all services
    • Multiple CIPO offices are no longer receiving correspondence, including in Edmonton, Montreal, Toronto and Vancouver

EUROPE

  • World Intellectual Property Organisation (WIPO) 
    • Reserving access to its headquarters to only personnel essential personnel
    • Processing of applications filed via WIPO’s IP services are so far not affected
    • Will be delivering electronic versions (pdf) of the following documents for the foreseeable future:
      • Certified copies of certificates of international registration and renewal,
      • Attestations, and
      • Detailed certified extracts
  • European Patent Office (EPO) 
    • All deadlines due between March 9 and April 16 are now due April 17, 2020
    • The extension also applies to PCT applications handled by the EPO
    • Affected parties are not required to file a request to the office for the extension of the time limit to take effect
  • Belgium, the Netherlands, and Luxembourg
    • No requests or procedures will be withdrawn because a deadline has not been met during the period of public health restrictions caused by COVID-19
    • This is applicable to payments not received on time
  • United Kingdom IP Office (UKIPO)
    • Deadlines extended and IP rights reinstated for those affected by the virus, granting on a case-by-case basis
    • All physical hearings cancelled until June 1
  • Italian IP Office (UIBM)
    • Any certificates and IP titles that expire between January 31 and April 15 will remain valid until June 15, 2020
  • The German IP Office (DPMA) 
    • The following are closed or unavailable until further notice
      • Information centres
      • Research rooms
      • On-site consultations
      • Initial consultations for inventors
  • French IP Office (INPI) 
    • All buildings closed to the public
    • Most IP-related deadlines occurring “in the period between 12 March and one month after the end of the state of health emergency” are now postponed by either one month after the end of this period (if the initial period was one month) or two months after the end of this period (if the initial period was two months or more)
  • Czech Republic IP Office (UPV) 
    • Open with reduced hours
  • Norway IP Office (NIPO) 
    • Customer service centre will “hold normal office hours, but staff will be taking the calls from home
    • No in-person meetings
    • NIPO headquarters are closed to the public until further notice
    • If specific deadlines or lost registered rights occur during this period, applicants and registrants can request re-establishment of those rights
  • Finland IP Office (PRH) 
    • Customer service building in Helsinki is closed
  • Portugal IP Office (INPI) 
    • All employees will be working from home from March 16, 2020
    • In-person services only available through pre-scheduling
  • Austrian IP Office
    • All office deadlines in proceedings before the registry are extended by two months without the need for users to request a further extension
    • However, all deadlines directly resulting from the law cannot be extended

ASIA/PACIFIC

  • Chinese Patent and Trademark Office (CNIPA)
    • Unaffected
    • Anyone in China who would miss the deadlines with regard to patents due to the coronavirus can apply for restoration of their rights
  • Hong Kong IP Office
    • Extended all patent, design and trademark deadlines for any filing date that fell between January 29 and February 21
    • Deadlines that fall after these dates are currently unaffected
  • India Office of the Controller General of Patents, Designs and Trademarks
    • Closed for 21 days from March 25
    • Due dates during this period are delayed until the office reopens (Projected April 15, 2020)
    • Delayed due dates are applicable to:
      • completion of various acts/proceedings,
      • filing of any reply/document, and
      • payment of fees
  • South Korea – Korean Intellectual Property Office 
    • Granting of automatic deadline extension for applicants who have failed to comply with the statutory time limits for submitting documents or paying fees to KIPO, for any reasons relating to COVID-19.
      • Applicants will be asked to submit a relief measure request or statement of payment with an explanatory statement and evidence of impairment due to COVID-19
  • Australian IP Office 
    • Requests for extensions can be made “in the normal way” and will be considered on a case-by-case basis
    • However, “some time periods cannot be extended” and suggested that brand owners reach out to IP professionals to check if an extension is possible
  • Philippines IP Office (IPOPHL) 
    • Moved to an “online only” service
    • From March 16 until April 14, all manual IP filings are suspended
  • New Zealand IP Office (IPONZ) 
    • All services are currently operating as usual
    • Users can request an extension of time should they be affected by the virus

MIDDLE EAST/AFRICA

  • Israel Patent Office 
    • Do not visit the registry’s headquarters until further notice
    • Can contact the Authority by phone as usual, and submit documents online
    • Regular hearings in the Tribunal are cancelled, and new dates will be adjusted
    • Extensions will be granted where applicants can demonstrate COVID-19 epidemic resulting in an inability to meet ILPO deadlines
      • To allow applicants time to submit extension requests, no files will be closed before May 1 for failure to answer ILPO correspondence
  • South African Companies and Intellectual Property Commission (CIPC)
    • Closed through April 16, including online systems.
    • Certain automated services will become available again on April 1
    • Deadlines for filing Annual Returns between March 25 and April 15 will be automatically extended until April 30, 2020
  • Saudi Arabia IP Office 
    • Suspended operations for at least 16 days from March 16, 2020
  • African Regional IP Office (ARIPO) 
    • Closed to the public from March 25 until April 30.
    • All IP deadlines are extended until May 1, 2020

CENTRAL/SOUTH AMERICA

  • Mexican Institute of Industrial Property (IMPI)
    • Closed to the public,
    • All terms suspended and extended at least until April 20, 2020
    • All deadlines will be moved to April 20, 2020, when applications/responses can be filed before IMPI
  • Brazilian IP Office (INPI) 
    • Face-to-face service is now suspended indefinitely
  • Peru IP Office (Indecopi) 
    • Suspended all public meetings indefinitely
    • All deadlines being processed are now suspended
  • Chilean IP Office (INAPI) 
    • Public opening hours reduced essential queries and procedures that cannot be carried out by other means
    • Extension of terms for administrative procedures

US and Foreign Patent Office Updates as of March 20, 2020

As COVID-19 continues to spread and disrupt industries across the globe, patent offices in Coronavirus affected countries are, for lack of better term, not immune. These patent offices are responding by implementing deadline extensions, office closures, and delays in services.

Below is a list of relevant patent offices divided by region and their respective statuses as of March 20, 2020:

NORTH AMERICA

  • United States Patent and Trademark Office (USPTO)
    • All offices closed from March 16, 2020 until further notice – all USPTO operations will continue without interruption
    • Original handwritten signature no longer required for certain correspondence with the Office of Enrollment and Discipline (OED) and certain payments by credit card
    • Petition fees waived in certain situations for customers impacted by the coronavirus, but does not grant waivers or extensions of dates or requirements set by statute
  • Canadian IP Office (CIPO)
    • All deadlines extended until 31 March
    • Expect significant delays in all services
    • Multiple CIPO offices are no longer receiving correspondence, including in Edmonton, Montreal, Toronto and Vancouver

EUROPE

  • World Intellectual Property Organization (WIPO)
    • Reserving access to its headquarters to only personnel essential personnel
    • Processing of applications filed via WIPO’s IP services are so far not affected
  • European Patent Office (EPO)
    • All deadlines due between March 9 and April 16 are now due April 17
    • The extension also applies to PCT applications handled by the EPO
    • Affected parties are not required to file a request to the office for the extension of the time limit to take effect
  • United Kingdom IP Office (UKIPO)
    • Deadlines extended and IP rights reinstated for those affected by the virus, granting on a case-by-case basis
  • Italian IP Office (UIBM)
    • Any certificates and IP titles that expire between January 31 and April 15 will remain valid until June 15, 2020
  • The German IP Office (DPMA)
    • On-site consultations
    • The following are closed or unavailable until further notice
      • Research rooms
      • Information centers
      • Initial consultations for inventors
  • French IP Office (INPI)
    • All buildings closed to the public
  • Czech Republic IP Office (UPV)
    • Open with reduced hours
  • Norway IP Office (NIPO)
    • Customer service centers will “hold normal office hours, but staff will be taking the calls from home
    • No in-person meetings
    • NIPO headquarters are closed to the public until further notice
    • If specific deadlines or lost registered rights occur during this period, applicants and registrants can request re-establishment of those rights
  • Finland IP Office (PRH)
    • Customer service building in Helsinki is closed
  • Portugal IP Office (INPI)
    • All employees will be working from home from March 16, 2020
    • In-person services only available through pre-scheduling
  • Austrian IP Office
    • All office deadlines in proceedings before the registry are extended by two months without the need for users to request a further extension
    • However, all deadlines directly resulting from the law cannot be extended

ASIA/PACIFIC

  • Chinese Patent and Trademark Office (CNIPA)
    • Unaffected
    • Anyone in China who would miss the deadlines with regard to patents due to the coronavirus can apply for restoration of their rights
  • Hong Kong IP Office
    • Extended all patent, design and trademark deadlines for any filing date that fell between January 29 and February 21
    • Deadlines that fall after these dates are currently unaffected
  • Australian IP Office (IP Australia)
    • Requests for extensions can be made “in the normal way” and will be considered on a case-by-case basis
    • However, “some time periods cannot be extended” and suggested that brand owners reach out to IP professionals to check if an extension is possible
  • Philippines IP Office (IPOPHL)
    • Moved to an “online only” service
    • From 16 March until 14 April, all manual IP filings are suspended
  • New Zealand IP Office (IPONZ)
    • All services are currently operating as usual
    • Users can request an extension of time should they be affected by the virus

MIDDLE EAST/AFRICA

  • Israel Patent Office
    • Do not visit the registry’s headquarters until further notice
    • Can contact the Authority by phone as usual, and submit documents online
    • Regular hearings in the Tribunal are cancelled, and new dates will be adjusted
  • Saudi Arabia IP Office
    • Suspended operations for at least 16 days from 16 March
  • African Regional IP Office (ARIPO)
    • Discouragement of walk-in enquiries and strongly encourage users to take advantage of the office’s online services and email/phone communications

CENTRAL/SOUTH AMERICA

  • Brazilian IP Office (INPI)
    • Face-to-face service is now suspended indefinitely
  • Peru IP Office (Indecopi)
    • Suspended all public meetings indefinitely
    • All deadlines being processed are now suspended
  • Chilean IP Office (INAPI)
    • Public opening hours reduced essential queries and procedures that cannot be carried out by other means
    • Extension of terms for administrative procedures

Should a New Company File Multiple Patents or One Big Patent?

A client recently asked: I have a few inventions and I’m wondering if I can save money by combining them into a single provisional patent application?

Your Patent Portfolio should always be developed with your business goals in mind. I passed the question back to the client and asked, what do you intend to do with these three innovations? If licensing is a potential goal, then combining all into one filing should be avoided.

In general, if you can afford to – file multiple applications. There are far more advantages that, depending on your financial situation, may outweigh the cost savings of filing a single provisional. The list of the advantages are referenced in Part 2/3 of my three part article about multiple patent applications.

If you are a cash-strapped start-up, having a master single filing serves a considerable purpose. A single ‘master’ provisional may also be split up into multiple non-provisional filings down the road (and you would be required to do so by the USPTO). There is, however, a distinct risk in combining filings: the subject matter of all three inventions enters the public domain at the same time. First – consider that provisional applications do not become publicly available until you convert the filing to a non-provisional filing. If you never convert to a non-provisional and let the provisional expire (12 months after filing), it will always be kept in confidence by the USPTO. This leads us to the risk: If you combined three inventions in a single provisional filing, and only choose to pursue one or two of those three in a non-provisional conversion, the third invention will still enter the public domain without any claim to protection (since it was mixed in with the other inventions in the single provisional filing). Thus, you’ll be out of luck if you decide to keep the subject matter of any one of the three inventions a ‘trade secret’ at any point in time after the ‘master’ provisional filing.

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.

yuri

 

Source: smartup

Why Is a Provisional Patent Important for Your Invention?

A provisional patent application is a 12-month place-holder for a utility patent. The USPTO allows you to label your invention as Patent-Pending during this 12 month period. If a utility patent is not filed within the 12-month period, your spot in line is lost! Once the utility patent is filed, your utility patent filing claims the patent priority date as the provisional filing date. The patent priority date is the date from which you have a legal claim as the first inventor to have invented the subject matter of your patent application. As such, the patent priority date is an important factor for the examination process through which the utility patent undergoes.

The provisional patent application never gets examined for patentability, it only serves as a place holder for examination – however, the patent examiner will carefully scrutinize the content of the provisional patent application during the non-provisional patent application process. So it’s important to have your provisional patent application compliant with all applicable laws in order for it to preserve the patent-priority claim – otherwise, the Examiner can withdraw the patent priority claim and inventors are put in a bad spot, thinking they were patent-pending during the provisional patent process when in fact their patent pending status gets withdrawn upon the examination of the non-provisional utility patent application!

So, a provisional saves your spot in line for a utility patent. It is especially important in our first-to-file patent system. It is especially important as you market and as you share your invention/idea with engineers, developers, or those with deeper pockets than you! It always preserves your claim to the invention as those engineers/developers further improve on the invention.

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, Georgia Institute of Technology, and Coca-Cola. 

yuri

 

Source: Smartup Legal

How Do I Add Details to My Invention After I Filed for a Patent?

I’ve added additional details to my invention/idea but I’ve already filed for patent. Can I modify my patent application after I’ve already filed it?

A very common question indeed. The break down is quite easy to understand when following this logic:

 

ADDING NEW SUBJECT MATTER

  1. Any Patent-Pending Application, whether it is Provisional or Non-Provisional, cannot be modified to include additional details (referred to as “New Subject Matter”) after its filing date.
  2. To add New Subject Matter to any pending application (referred to as the “priority application”), an additional patent application for the New Subject Matter must be filed before the priority application is granted or expires.
  3. The additional patent application is known as a CIP Application.

CIP EXAMINATION

  1. The CIP Application, in its documentation, establishes a priority claim to the previously pending patent application to which the new subject matter relates.
  2. The CIP Application receives a separate patent examination from the priority application.
  3. During Examination, New Subject Matter receives a patent priority date even with the date of CIP filing while the Subject Matter Included in the Priority Application retains its earlier patent priority date.

CIP TIMING

  1. Therefore, the timing of the CIP filing is important.  It should occur as soon as the new subject matter is conceived and the value of the subject matter is confirmed for patent filing.
  2. The CIP Application can be filed as either provisional (informally) or non-provisional application. However, filing a CIP as a provisional is only recommended if its priority application is also a provisional AND the applicant is still not prepared to convert the provisional patent application to a non-provisional patent application.

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.

yuri

 

Source: Smartup Legal

What Does International Patent Protection Mean?

A question I get asked rather often – what does International Patent Protection mean? Then, after I recommend the filing of an international patent application (known as a PCT application, but will get to that later), my clients frequently ask: “wait, I have to file for an international patent application and it’s not even a patent recognized around the world?” Yep, that’s right.

There is no single “Patent” that is recognized around the world.  Rather, 148 countries (listed here: http://www.wipo.int/export/sites/www/pct/en/list_states.pdf) have entered into a Patent Cooperation Treaty (known as the PCT).  Under the PCT, each country must recognize a single international patent application (known the PCT application) and its patent priority date.

A PCT application may be filed up to 12 months after a national application has been filed in any one of the 148 countries that are members to the PCT.  This means within 12 months of filing either a US provisional patent application or non-provisional utility patent application, you may decide to step up and take your patent protection to the international level.

Prior to the PCT, if you were interested in international protection, you would have to file a patent application in each country all within 12 months of your national patent filing date under the Paris Convention for the Protection of Industrial Property (established back in 1883)!  This would be rather difficult and expensive experience.

With the PCT, a patent applicant need only file a single PCT application within that same 12 month period.  This single application is examined by a recognized international authority which issues a ‘patentability opinion’.  This patentability opinion, however, does not serve as a granted patent or a patent right. The Applicant has the opportunity to persuade the international authority of the patentability opinion if the opinion is not favorable.

In order to convert the patentability opinion to an actual patent, the PCT applicant may take the opinion and present it to any of the patent offices of the 148 countries that recognize the PCT applicant.  This must be done within 30 months of the applicant’s patent priority date (the date of the earliest national filing, if there was one).

If the patentability opinion issued by the international authority is favorable, the national patent office frequently adopts the opinion (subject to some local, national laws and exceptions) and grants a patent within its jurisdiction.  Even if the patentability opinion issued by the international authority wasn’t favorable, the applicant may still submit it to the national patent office and attempt to persuade the national patent examiner of the application’s patentability on the national level.

If you’ve understood my explanation correctly – you’ll see that there is no such thing as an international patent.  Rather, there is an internationally recognized patent examination process used to streamline the prosecution of patent rights when the patent applicant is seeking patent protection in many countries.

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.

yuri

 

Source: Smartup Legal

Can I Infringe on a Patent Application That Is Currently Pending?

Clients often present to me some ‘patents’ they found through Google and ask me if they infringe the subject matter of the patent. This is a very loaded question and difficult to answer. But before even getting to the answer, it’s important to understand what the “patent” document cited by the client actually is.

First, it is important to distinguish a granted patent from a patent application publication. A granted patent entitles the patent owner 20 years of rights to exclude others from making, using, and selling the patent invention (as listed in the patent claims portion of the publication). A patent application publication (which is what you listed) only discloses to the public that the patent applicant has applied for a patent. It does not mean that a patent has been granted.

Both patent applications and granted patents are published. This means that a single patent filing will publish twice if it passes examination: first prior to commencement of the patent examination and again after examination has determined that the patent application is to be a granted patent. The first publication is mean to put the public on notice of a patent-pending examination, while the second publication is meant to put the public on notice of an actual granted patent.

Almost every non-provisional patent application that is filed to the USPTO gets published 18 months after its earliest filing date (whether the filing date of a related provisional or the filing date of the non-provisional patent filing itself). Sometimes, and for strategic reasons, the patent application may request that the patent application remain unpublished unless a patent is granted (in which case publication occurs post patent-grant).

Until a patent is granted, it is hard to determine what activity would constitute an infringement – simply because we do not know 1) whether the patent application will be issued as a patent by the patent examiner; and 2) what scope of patent protection will ultimately be granted to the patent application. This is an important distinction as the subject matter a patent applicant hopes to obtain patent (and as applied for in the published patent application) usually differs from the subject matter that is actually granted patent (due to patent examination requirements).

So, if you are trying to determine if you would be potentially infringing a patent application – It is important you monitor this application, and any other related application, to see what might issue to patent. Until then, you may act at your own discretion, knowing that there is a risk of patent infringement if the patent is to be granted. Until a patent is granted, infringement cannot occur.

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.

yuri

 

Source: Smartup Legal

If I Withdrew My Patent Litigation Claim, Can I Re-File It Later on?

In general, there is no statute of limitations on a claim for patent infringement. However, the Patent Act specifies a time limit on monetary relief for patent infringement claims – damages are available only for infringement that occurs within the six years prior to the filing of the complaint. In general, a voluntary dismissal (unless it’s the second such dismissal associated with that particular claim) just serves to wipe the slate clean – it is as if the suit was never filed. In that sense, it does not serve to toll any limitation period.

In the event the suit has been dismissed twice, the claim is most likely barred by res judicata as the second voluntary dismissal of an action operates as a dismissal with prejudice.

One other issue to point out on the topic of time limitations associated with patent infringement claims, while there is no formal statute of limitations, a defendant can still assert the affirmative defense of laches to prevent a patent holder from pursuing a claim, asserting that the delay in bringing suit is unreasonable, and the defendant will suffer material prejudice due to the delay. There is no formal time for the application of laches – it just depends on the situation.

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

Megan K. Johnson is a business lawyer with over 7 years of experience. She helped champion securities crowdfunding at the local level and worked with the first company to successfully close an equity crowdfunding involving everyday investors. She is a partner at Founders Legal and can be reached at [email protected]

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Source: Smartup Legal

Can I Break a Provisional Patent into Multiple Filings?

One provisional may serve the basis to as many non-provisionals as you would like. As long as you file at least one non-provisional within 12 months of the provisional, you can continue to file additional non-provisional claiming priority back to the same provisional SO LONG AS you do not add ‘new subject matter’ that was not covered/anticipated by the provisional.

This means that you can split the provisional into two or more non-provisional utility patent filings claiming priority back to the same provisional, so long as you don’t add anything new to any application. If you have additional subject matter you would like to include, the additional subject matter should be filed in a separate filing known as a Continuation-in-Part (CIP). For CIPs, the new subject matter gets a patent priority date even with the CIP’s filing date, while the originally presented subject matter keeps its original patent priority date.

Exception: if you come up with NEW ideas that aren’t covered by the provisional, but it’s still too soon to file the non-provisional (your product isn’t at its final stage), it would be advisable to file a second provisional. Then, a non-provisional utility patent can claim patent priority back to multiple provisional applications. In this way, you get the earliest possible priority date for each of your inventions.

Consider this article for further reading.

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.

yuri

 

Source: Smartup Legal