Patent Expiration – Should You Reapply on Your Provisional?

I have not started manufacturing and my provisional patent application has expired. Should I re-apply for a provisional patent or apply for a full utility patent?

Once a provisional patent application has expired, you may refile the same provisional application on condition that you have not publicly disclosed the subject matter of the application more than a year prior to the second filing.

Once you make a second provisional patent filing, you should then ‘convert’ your second filed provisional to a utility application within a year from your public disclosure date. Alternatively, you may file the utility application immediately (without filing a second provisional), as long as you are public disclosure date was less than a year prior.

If you are outside of the 1-year period of public disclosure, you have forfeited your patent rights to the subject matter that was publicly disclosed. See What is a public disclosure? Improvements you’ve made since the public disclosure may still be patentable, so long that the improvements haven’t also been publicly disclosed more than a year prior.

Note: Although you are permitted to file a US utility patent application within 1 year of the subject matter’s public disclosure date, most other countries in the world will not grant you patent rights if you’ve publicly disclosed the subject matter prior to a patent filing in at least one nation.

If no public disclosure has been made on the invention, you may keep refiling provisional applications upon expiration, as long as you see fit. However, when you decide to convert the provisional to a utility patent, you may only claim the patent priority date of the latest filed provisional. The earlier provisional filing dates will no longer be considered priority date eligible.

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