What to Worry About After Filing a US Provisional Patent Application

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Smith Rock near Bend, Oregon

 

As patent attorneys, we do our best to understand the needs of your business, providing helpful advice and adding value where we can. We also try to avoid slowing down your decision making process as much as possible. But every so often, you’ll probably hear something like this: “It would have been great for us to know about that before it happened.” That’s a lawyer’s version of “Wait! Why the heck didn’t you tell me about that!?”

Here’s a scenario to consider: your company filed a US provisional patent application on a product you have under development. Everything was disclosed to your patent attorney, and he or she did a great job documenting all the important features in the filed application. So far so good. You’ve got twelve months before the provisional expires.

Trouble Brewing

Development continues, and your team makes some breakthroughs in new functionality. Features are changed or added, and you’re really happy with the way it’s turning out. Time to launch it to the public! So, that’s what you do, and sales are brisk.

Here’s the problem. Some of those new features aren’t described in your pending provisional application.

Is That a Problem?

In the US, it’s not a deal-breaker. You have a one-year grace period to get those new features into a utility patent application. However, most countries outside the US have what’s called an “absolute novelty” requirement. In general, that means when you begin to sell anything or disclose it to the public, you immediately forfeit your patent rights unless it’s already been described in a filed patent application. As a result, you may be out of luck if you wanted to patent your invention outside the US.

Furthermore, even in the United States, obtaining the earliest possible filing date can be extremely important. In effect, you need to secure your place in line, and your place is only secured for the subject matter that’s actually in the application. As patent applications queue up, it’s first-come-first-served. If you wait to include your new developments until the full-blown nonprovisional application is prepared, several months of potential competition could get into line ahead of you.

What Can We Do?

If the cat’s already out of the bag, so to speak, your patent attorney will simply ensure the new features are at least fully disclosed in your next filing (usually the nonprovisional application). However, if you haven’t disclosed your new features yet, then there are a couple ways to make sure you preserve as many rights as possible:

  • First, you could get the nonprovisional prepared and filed immediately, once you have a final product ready. Don’t wait for the 12-month deadline, and do your best to get it filed before any public disclosure.
  • Second, you could file one or more supplemental provisional applications as the need arises during your 12-month window (i.e., before the first provisional expires). Then, your nonprovisonal application can wrap all of those provisionals into one filing. In terms of timeliness, every new feature will have been documented as closely as possible to when it was developed, and hopefully before it was made public.

Considerations

To avoid the problems discussed above, you should consider notifying your patent attorney if any of the following things happen with respect to your invention:

  • new features are added
  • changes are made to existing functionality
  • research & development reveals new benefits or surprising results
  • you have a breakthrough in a problem you’ve been trying to solve
  • you find a solution to a problem you didn’t realize you had

Events like the ones listed above may indicate a need to file a new or supplemental provisional application. Your patent attorney is the best person to help you make that determination.

Conclusion

After you file your provisional application, you’ll probably breathe a sigh of relief. However, there’s still a lot to think about, and you must remain vigilant to secure your patent rights properly.

Don’t forget about the next steps of the process, and keep your attorney in the loop on any new developments. As always, if you have any questions, please feel free to contact us. Good luck!

 

Blog Post © 2019 Kolitch Romano LLP

Photo © 2019 Dave Bourgeau


DaveIf 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.

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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.