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.

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When Should I Convert My Provisional Patent Application to a Non-Provisional Utility Patent?

I usually get asked the question: If I rush to convert my provisional to a non-provisional patent filing, does that reduce the risk of someone having a third party receiving a patent on the same subject matter?

Typically, there is NO rush in filing the non-provisional utility patent application once you’ve already secured a provisional patent application. Whether you file the non-provisional patent application the next day or 11 months and 20 days from the priority date established by the provisional, your patent priority rights will be the same.

In fact, the long your wait, the longer your effective patent coverage may actually be. Consider that a utility patent grants the inventory rights to exclude others from making, using, and selling the patent invention for a period of 20 years after the non-provisional patent filing date. So, if you have a priority date 1 year prior to the non-provisional filing date, that creates an effective patent priority of 21 years.

But there’s a catch to waiting – Warning: The longer you wait to convert your provisional patent application to a non-provisional, the greater the potential of someone obtaining a patent on the same subject matter as you – even if you have an early patent priority date established by your provisional patent filing.

Here is why: consider that a provisional patent application is never disclosed to the public. It’s kept confidential by the USPTO, and not even patent examiners assess provisional patent applications when they examine non-provisional utility patent applications.

This means that, while you are ‘patent pending’ with a patent priority date secured by a provisional patent filing, another applicant may apply for a non-provisional patent. In some instances, the patent examiner may begin examining their patent application while your provisional patent is still pending under confidentiality. This means that your provisional patent application may not be used as prior art against the subsequent patent filer. In turn, the subsequent patent filer may be granted a patent, even though you had an earlier filed provisional!

Correcting this is an up-hill battle and the subject of a different article.

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.

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Can I Add to My Invention? Continuation Patent Application

What if you come up with ‘new subject matter’ for your invention after you’ve already filed a non-provisional?  No problem – the USPTO accounts for this and allows what is known as “continuation-in-part” (CIP) applications.  CIP applications allow you to expand the scope of your patent application while it’s still pending, without losing the patent priority date you have established for the subject matter of the original or “parent” patent application.  Typically, unless you’re adding a lot of new subject matter in the CIP, they are not as expensive as an originally filed patent application.

Take, for example, that you have two pending provisional applications.  One of the  If you are looking to save money, you can file just a single non-provisonal application that claims priority to both of those pending provisionals.  However, the ‘subject matter’ you enter into examination (known as “claiming”) should only be of one of the provisional applications.  By claiming priority to both the provisionals, you have the entire duration of the examination period (sometimes, up to 3-5 years) to enter into examination (or “claim”) the subject of the second provisional application.  This is a good way to extend the tendency of your applications until you enter development.

For example, as the Business Method patent will not likely change, I would recommend you start a non-provsional filing on the business method. Then, you will have an additional two years to enter the System Patent into examination.  This will give you plenty of time to develop, test, update, implement the system before the non-provisional filing for the system.

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.

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Can I Talk about Things Not in My Patent?

I have a provisional patent filed, and I am speaking at a Conference about my invention.  However, at the conference, I intend to disclose new features that aren’t covered by the provisional patent.  Big companies, including competitors, will be at the conference.  What should I do?

To the extent that you will be disclosing, at the conference, subject matter that was not originally covered in the first provisional patent, you will be 1) forfeiting your international patent rights to that un-covered subject matter, 2) you risk misappropriation of your uncovered subject matter to the competitors; and 3) keep in mind, we have a ‘First-to-File” patent system – if someone else files a patent on your uncovered subject matter before you do, it will be an uphill and costly battle for us to prove that the patentee derived the invention from your public disclosure.
To resolve this issue, I would recommend another provisional filing on the new subject matter.  A patent attorney can do this for you at a reasonable fee.  Then, when we’re ready for the non-provisional – you can claim priority to both of the provisional filings.  This is a very common strategy for incremental improvements prior to the ‘final product’.

Please keep in mind – I am a patent attorney and am advising you as to the legal implication of your questions.  The ‘Business’ decision should take into account other factors – including budget, risks, and rewards.  In other words, I will advise you on how to move forward in a legally ‘sound and secure’ way – but I am only considering the legal implications and no other implications.

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.

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How Do You Prevent Provisional Patent from Expiring?

One way to prevent the provisional from expiring is to continuously have a provisional one file (just updated to the latest version of your back-end). If you let the provisional expire (and your back-end isn’t receiving a lot of press), you are back to square one.  For the provisional to save you the risk of challenging a Patent, you must timely file a non-provisional before the provisional expires.

Having a provisional on file is the best way to go – they were established to level the playing field against large entities To prevail for the patent rights (before anyone else can get a patent to assert over you in the first place), you must be the first-to-file. Having prevailed to the patent rights is a way of saving in legal fees, building a fence around your technology, and growing your intangible asset portfolio.

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.

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How Do I Convert My Provisional Patent Application into a Non-Provisional Application?

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.

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How Long Does a Provisional Patent Protection Last?

The USPTO gives you one year to convert your provisional patent to a formal patent. If you do not convert your provisional patent to a formal patent, your provisional patent protection simply expires. If you are still not ready to file for a formal patent after the one-year period, you can renew your provisional patent protection by simply refilling for a provisional patent – if and only if you haven’t publically disclosed the subject matter of your provisional more than 12 months prior to the re-filing date. However, you will only be allowed to claim priority to the date of filing for the non-expired provisional patent.

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.

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What if I Disclosed My Idea before Filing for a Provisional Patent or Formal Patent?

The USPTO allows you one year from the date of your first public disclosure to file for patent or provisional patent on your idea. This one-year period is known as the ‘grace period’. If you do not file for a patent or provisional patent within one-year of your first public disclosure, you will have been deemed to have legally abandoned your patent rights to the idea. When considering a public disclosure, keep in mind most countries don’t give you this one-year grace period – you will have forfeited your patent rights in those foreign jurisdictions upon your first public disclosure.

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.

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What’s the Difference between a Provisional Patent and a Non-Provisional Patent Application?

A patent grants an inventor rights to exclude others from making, using, or selling the idea claimed in the patent for a period of 20 years. A non-provisional patent application begins the examination process to determine if an idea is eligible for patent grant. This examination process (known as “Patent Prosecution”) can be long, highly technical, and expensive.

A Provisional Patent legally establishes the date from which an inventor claims priority to any potential patent rights for his or her idea. Though it begins the “Patent Pending” process, it does not begin the examination process, nor does it grant the inventor a right to exclude others from making, using, or selling his or her idea. Rather, a Provisional Patent is a quick and inexpensive means for an inventor to claim patent priority to his invention. This is important since the first inventor to file his idea with the USPTO wins the priority to the patent rights for the idea! Moreover, it provides an inventor with time to decide whether or not he would like to pursue the more resource intensive endeavor of Patent Prosecution for formal Patent grant.

When the inventor decides to begin the Patent Prosecution process, he must convert his provisional application for patent to a non-provisional patent application. The USPTO treats the filing date of the inventor’s provisional application or patent as his priority date for the examination process of the subsequent non-provisional patent application. A provisional patent application is the only legally recognized means by which an inventor can establish a priority date that is earlier than the filing date of his or her non-provisional patent application.

During the Patent Examination process of a non-provisional application, your patent attorney advocates your patent rights to the USPTO and persuades the Examiner, under a strenuous proceeding that has 1000 pages of rules (not exaggerating!), to grant you a patent on the application. The Examiner then decides whether or not to grant you a patent. If they Examiner declines, then your patent application goes ‘abandoned’. If the Examiner believes your invention is novel and non-obvious (inventive), then you’re granted a patent. There are appeal procedures in place to contest the Examiner’s patentability opinion.

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.

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When Should I File a Non-Provisional Patent Application?

You do not need to have realized, developed, implemented the subject of a patent application in order to be granted patent protection.  Many inventors and companies file non-provisional patent applications on simple ideas and they are awarded patents.  The USPTO, or most any jurisdiction of the developed world, does not require that the subject of the patent is developed or brought to reality.  This enables the inventors and companies to patent their ideas and the license out the patent rights to entities that will develop the idea, collecting royalty.  Unfortunately, this may result in Patent Trolls and Patent Trolling.  Sometimes, it’s wise to start with a provisional patent filing on an idea will you expand upon your idea. Follow the link for the reasoning.

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.

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