Provisional Patent Buys You a Year … Well, Not Really

“Seven Minutes to Midnight” by woodleywonderworks from Flickr (Creative Commons License)

When you have an invention, and you are not ready to file a complete non-provisional patent application with the United States Patent and Trademark Office (USPTO), you can file a provisional patent application. If you file the non-provisional patent application that corresponds and claims priority to this provisional patent, the USPTO will treat your non-provisional patent application as if you filed it on the date you filed the provisional patent application – called the “priority date.”

This may be important if another inventor files a patent application after you filed your provisional application that contains some of the claimed subject matter in your later-filed non-provisional patent application. But because you filed a provisional application, the USPTO will give your claims priority over the other inventors’.

If you file a provisional patent application, you may think that you’ve bought yourself 365 days to complete your patent application, but that’s not exactly true. You can’t wait until the last minute to draft your non-provisional patent.

How Long Can You Procrastinate on Your Patent Application?

“A Reminder to Slay the Procrastination Beast!” by Walter Lim from Flickr (Creative Commons License)

I kicked this question to Venjuris patent attorney Carey Anthony, and she said the nature and complexity of your patent will determine how long you can put off drafting your non-provisional patent application, or hiring a patent attorney to do it for you. “If you are filing a patent for a device and you have to submit drawings with your application, you need to allow more time to work with a draftsman to make sure the drawings reflect the specifications.”

In general, Anthony recommends at least six weeks to draft your non-provisional patent application, but three months is better. How much time a patent attorney needs to write your patent depends on how complicated your invention is and how much prior art exists related to your device.

Remember, you can only get a patent for inventions that are new or a non-obvious variation of an existing invention. Your patent must be written to exclude inventions that could result in the USPTO rejecting your application.

If you are down to three weeks in your one-year window in which to file and maintain your priority date and, if you can find a lawyer and draftsman who can work with you, expect to pay a rush-fee because your patent may require your patent attorney and/or draftsman to drop everything else to finish your patent application. At this point, “you’re almost cutting it too close,” says Anthony.

How We Work on Patents from Provisional Applications

Anthony explained how Venjuris works with clients who file provisional patents to help them file their non-provisional patents to maintain the priority date for their inventions:

  • At six months after filing the provisional with the USPTO, we send the client a reminder that they must file their non-provisional patent application in the next six months to take advantage of the priority date from their provisional application.
  • At nine months after filing, we send another reminder about filing their non-provisional patent application.
  • At six weeks out, we send a final notice to the client letting them know that after this time, we may not be able to file a patent application within the 12-month window, especially if their application is complex or requires professionally-create drawings.

Of course, every patent matter is different, and needs to be evaluated on its merits. There are no one-size-fits-all answers. If you need more information about filing for or obtaining patent, please send us a message. Our attorneys have over 100 years of combined experience and are licensed in Arizona, Connecticut, and New York. We can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, sure to connect with us on Facebook.

Post written by social media attorney Ruth Carter and edited by patent attorney Carey Anthony.

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