Patent Strategy Early Disclosure Prior Art Shoot in Foot

Introduction

In the words of the U.S. Patent and Trademark Part ("USPTO"): "A provisional patent awarding allows you to file without a formal patent claim, oath or declaration, or whatsoever data disclosure (prior fine art) argument," yet such an application "provides the means to found an early on effective filing engagement" and "allows the term 'Patent Pending' to be practical in connection with the description of the invention."

Just inventors would be wise to not allow the informal nature of provisional patent applications ("PPAs") lull them into a false sense of security. If a PPA is not prepared with sufficient detail to meet an applicant's priority goal, or if it is not followed up on correctly, then the intended priority rights may not be fully realized or worse, lost in their entirety – with the potential result of preventing whatever patent from always issuing for the invention.

Points to Consider Regarding Conditional Patent Applications

PPAs are much less expensive to prepare and file than are the more than formal regular patent applications, technically known as "nonprovisional" or "utility" patent applications. PPAs may exist perceived as a manner for the inventor / would-be patent owner to get a "foot in the door" toward obtaining an early priority engagement for the invention before committing the more substantial fourth dimension and resources required for preparation of a regular patent application. While a PPA tin can indeed provide that priority benefit, certain points must be kept in heed, most importantly:

• Merely 12 months to alive.PPAs remain live for simply 12 months subsequently filing, after which time they are automatically abandoned. They are not examined, and patents practise not consequence from PPAs. Instead, a patent problems, if at all, from a regular application that may (or may not) merits the benefit of the PPA filing appointment.
• Priority claim must exist timely.A merits to the do good of the PPA filing date can just be fabricated in a regular U.S. or foreign patent application filed inside the aforementioned 12-month period. Equally discussed in the linked article, the resulting priority benefit can be critically important to minimize the universe of "prior art" citable confronting claims in the regular patent application – a universe that tin otherwise include the inventor'southward own public activities surrounding the invention. One can submit a delayed benefit merits betwixt 12 and fourteen months after the PPA filing date, just the delay must accept been unintentional and, as mentioned in the linked article, certain USPTO fees must exist paid to make a delayed claim. See a USPTO web page for a more than detailed discussion of requirements.
• Priority benefit is proportional to quality of invention disclosure in the PPA.Even if timely claimed, the priority do good from the PPA filing engagement merely extends to discipline matter that is common to the PPA and to the regular patent awarding. Therefore, the degree to which a PPA serves every bit a priority document is directly proportional to the quality and detail of the invention disclosure in the PPA. Every bit the linked commodity states: "Drawings are your best friend to make certain y'all are disclosing as much equally possible, and and then you write at least one paragraph (hopefully more) describing what is shown in each drawing." Of course, the higher the quality and detail desired in the PPA, the more than expensive the PPA will be to set up, if prepared by a patent attorney or agent (highly recommended!). The inventor must therefore balance budgetary and timing considerations against how much detail is desired in the PPA.
• Inventor can claim priority to more than than one PPA.Additional invention evolution commonly occurs after the filing of a PPA. One or more than subsequent PPAs tin can disclose the new developments. A regular patent application can and so merits the do good of the filing dates of all of the PPAs, if that regular application is filed inside 12 months from the filing engagement of the earliest PPA disclosing the invention. Care should be taken in this circumstance that the PPAs are consistent with one another in their terminology describing the invention.
• Severe consequences may event from "refiling" a PPA. It is possible to "refile" a PPA past filing a new PPA plus an express abandonment of a previously-filed PPA. However, the linked article warns: "information technology is critically important for everyone to empathize that if a provisional patent application is refiled it may become impossible for a patent to ever exist obtained, period." That is because: "If you refile a conditional patent application, you are establishing a new priority filing appointment. You are NOT entitled to capture the original provisional filing engagement." If invalidating "prior art" arises between the time the two PPAs were filed, then the inability to merits priority to the original PPA would directly consequence in destruction of any take chances of getting a patent. Although, as mentioned in a comment to the linked article, certain circumstances may counsel in favor of refiling a PPA or otherwise abandoning an original PPA, such actions need to exist considered very advisedly in view of the stated run a risk.

Conclusion

PPAs provide a user-friendly fashion to obtain an early priority date for one's invention, merely to actually accomplish that benefit, and to avoid possible destruction of the ability to become a patent, PPAs need to exist handled correctly. Consultation with a USPTO-registered patent chaser or agent in this area volition maximize the likelihood of a successful upshot.

The problem for you lot, as an inventor, withal, is the consequence of refiling a provisional awarding. And then, while it may be very easy to do, and seem like you've just extended the life of your original provisional awarding, that is precisely NOT what has happened, and yous may take – indeed likely have – fabricated it incommunicable to ever obtain a patent anywhere in the world.

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Source: https://insights.taylorenglish.com/post/102hcsx/provisional-patent-applications-convenient-to-file-but-handle-with-care-to-avoi

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