When Are Provisional Patents Effective?

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:

  1. 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
  2. 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.

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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