When Are Provisional Patents Effective?

A USPTO provisional patent application simply secures your ‘spot in line’ or patent priority date to a later patent application filing. After you file a provisional application, you will have one-year to follow with a non-provisional (full) patent application to maintain the patent priority date secured by the non-provisional. It’s important to secure your patent priority date since the inventor with earliest patent priority date may be the only one to win any potential patent rights to an idea in a FIRST-TO-FILE patent system.

Here are two weakness of the the provisional patent application:

If you have a provisional patent application securing a spot in line, and a third party files a non-provisional on a similar/same invention after your provisional filing date, their application will enter examination before yours and the patent examiner will not have access to your provisional filing to ‘reject’ their non-provisional application until you convert your provisional to a non-provisional. To make matters worse, if the third party files for a non-provisional with an ‘accelerated examination’ request the USPTO, there is a chance that they might be granted a patent before you even have a chance to convert your provisional to a non-provisional. This puts the burden on you to monitor the patent filings and inform the patent examiner of your earlier filing date – this is time consuming, prone to problems, and can cost you more than having filed a non-provisional in the first place; and
Often times, provisional patent application don’t give you secure coverage for international rights. Not every country has a provisional filing system, and claiming priority to a provisional in an international patent, or PCT application, means that the provisional application claimed has all of the elements that a non-provisional patent application would have per international standard – which, in the US, is not required by law.

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

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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