Your company is going strong. R&D efforts are paying off, and innovation is in the air. You’ve filed a provisional patent application, which is often a great option if you’re short on time or still working out some features. But US provisional applications expire after 12 months. What happens then? Is there something you need to do before yours expires?
The first thing to know is that your provisional application is essentially a secret during its year-long life. Anyone searching the patent records won’t be able to find it. If you do nothing, and let it expire, it will be as if it never happened. Of course, you might make your invention public in the meantime, whether that’s by selling it, presenting it in a research paper, showing it at a trade show, or disclosing it in some other public manner.
The second thing to know is that a provisional patent application is the first step in a multi-step process. Provisionals don’t get examined at the Patent Office. They’re reviewed to make sure the paperwork is all in order, but after that? Your provisional will sit on a virtual shelf, waiting for you to either let it expire or take the next step to obtain an actual patent.
Your company wants to take that next step. You want to continue pursuing patent protection, and building your portfolio. So what do you do?
A Provisional’s Expiration Date is an Important Deadline
The main benefit of a provisional application is that you can use it to establish your filing date. It’s important to establish the earliest possible filing date, because patents are basically first-come-first-served. That filing date is your place in line, and you’d like to keep it if at all possible.
You can choose the countries where you want to keep your place in line. But no matter which countries choose, you must follow your provisional with a nonprovisional patent application sometime during the 12-month window. If you do, you can keep your existing filing date. If you don’t, you can’t.
That means the one-year mark is a hard deadline for taking the next step. And it’s a deadline everywhere, not just the United States.
What Are Your Options?
As discussed above, the provisional expiration deadline applies to the mandatory next step for both US and international patent protection. To meet the deadline, you must file a nonprovisional patent application in every country of interest. You may also choose to miss the deadline and let the provisional expire – in some cases, it becomes clear that patent protection is no longer a viable or valuable option.
If you’re like most American companies, though, you probably want protection in the United States for sure. But you’re not yet certain where else to file. It might help to think about three options:
1. US Nonprovisional: To meet the deadline in the US, you can file a US nonprovisional application. This full-blown version of a patent application also triggers the US examination process.
2. PCT Application: To meet the deadline internationally, you could file directly into one or more countries of your choosing. However, you probably don’t have those figured out yet, and it’s an expensive proposition. Because this is a common scenario, most nations participate in the Patent Cooperation Treaty (PCT). That means you can file a single international application, known as a PCT application, and hold your place in 152 countries at once. A PCT application effectively postpones the process by another 18-20 months.
3. Both: You can file a US application to get examination started in the United States, and also file a PCT application to preserve your rights internationally.
The twist to remember here is that a PCT application also satisfies the US requirement. Accordingly, filing a PCT application keeps everything going, including in the US. However, a PCT application adds a lengthy step to the process, and you’ll still need to file in the US eventually. In any case, there are downstream costs associated with the examination process in each individual country.
What Else Should You Take Into Account?
There are a few other items of interest here, and you should bring them up with your patent attorney:
1. A PCT application is a complete, formal patent application, just like a US nonprovisional, and therefore requires the same level of preparation. Patent claims, formal illustrations, extensive written description, etc., mean these applications are likely to be longer and more thorough than your provisional application. And more expensive.
2. You can use the same (or a very similar) application when filing a US nonprovisional and a PCT application. They will need to be filed separately, but the majority of the work only needs to be done once. That means if you file both ways (option 3 above), the patent attorney’s fee for the PCT preparation will be much less than for the US nonprovisional preparation.
3. Official government filing fees are very different, depending on the option(s) you choose. For a small entity, PCT filing fees are in the $2500-$3000 range, while US filing fees are around $800.
4. Remember that the PCT application is only a next step, not the final step. You’ll need to enter into the actual examination process later, with all its costs, in each country of interest.
5. If you do not file a PCT application, you will likely lose all rights outside the US. This may or may not be a concern for you.
After you file a provisional application, you’ll probably breathe a sigh of relief. However, there’s still a lot to think about, and that 12-month deadline can sneak up on you quickly. As always, if you have any questions, please feel free to contact us. Good luck!
Blog Post © 2019 Kolitch Romano LLP
Photo © 2013 Dave Bourgeau
If your company’s intellectual property protection isn’t where you want it to be, book a time to talk to one of our IP attorneys. We’d love to learn about your business, explain your strategic options, and work with you to secure your vital IP assets.
Click the link below and get in touch. We look forward to speaking with you!
DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.