Our latest client had a provisional patent application drafted by another patent professional. The provisional expired after a year, and she was told that the USPTO rules prohibited her from ever getting patent protection for her invention. This advice was wrong. The USPTO rules prohibit the granting of a patent for an invention that was filed more than a year after the invention was disclosed.
If you publish details of your invention, that would be an example of disclosure, but merely filing a provisional patent application is not disclosure. In our new client's case, she had not disclosed her invention to the public. We filed a new provisional patent application to give her some protection while we drafted the non-provisional. One month after she was told that she was out of luck, she instead had a full non-provisional patent application filed with the USPTO. File your patent application before you disclose your invention to the public.
Our advice to clients is to hold off on disclosure until after the non-provisional patent application is filed. To me, the risk of filing a patent on an idea that you are never actually going to profit from is simply too great -- especially when you have the option of filing a PPA first.
After you file a PPA, you are legally entitled to describe your invention as "patent pending" for the next 12 months. Does your idea have merit? Is it worth investing in further? You can use those 12 months to test the market and find out. This is a good time to point out that ideas differ -- and therefore so does intellectual property strategy. If you have a game-changing innovation, you are going to need much more than a single patent to effectively establish and maintain perceived ownership over it.
In some industries, like medical, auto, and hardware, patents are highly valued. This advice is geared towards simple improvements made to existing consumer products. In other words, the kinds of ideas that are most likely to be licensed and brought to market quickly. My recommendation is this: Be prepared to hit the ground running the second you file your PPA. One year may sound like a lot of time, but really, it's not.
You need to make every minute of those 12 months count. So prepare your marketing materials in advance. Be ready to begin contacting potential licensees for product licensing consideration the day after you file your PPA. Establishing a rapport will take time.
So will negotiations. Stay focused! Follow up with every company you submit your idea to until you get a yes or a no. Be unafraid to ask the employee you've been corresponding with pointblank over email: Are you interested? But, life doesn't always work out that way. People get busy. Maybe you weren't fully prepared to hit the ground running after you filed your PPA. Maybe you haven't made as much progress as you had hoped.
Maybe you haven't quite cut your deal. And now your provisional patent application is about to expire. I get asked this question a lot. Like everything having to do with intellectual property, there are no hard and fast rules.
You can see above that once your Provisional A expired and disappeared, you are left with only Provisional B. Your competitor previously was after you in line when you had Provisional A.
However, once Provisional A expired, you lost your Provisional A date. Even though you re-filed a new Provisional B, the filing date of Provisional B is later than when the competitor filed. The competitor has now moved in front of you and the Patent Office will allow him first opportunity to get the patent before you.
The key concept here is that when re-filing the provisional patent, you get a new date. Your old date will continue to disappear if you do not file the non-provisional before the old provisional patent expires. Once the old provisional patent disappears, someone who used to be behind you line may suddenly become in front of you in line. First to File means that the patent office will look at patentability based on who is first to file the patent application. Further, your new date could affect if your invention is still patentable under the 1 year grace period rule.
Under this rule, a patent application must be filed within 1 year of your first public disclosure of the invention. For example, if you showed your invention to the public, on a website or YouTube, for example, your patent application must be dated within 1 year of that date of public disclosure. If you file a new provisional patent application, your date is the new date.
Your old date is lost if you did not convert that old provisional patent application into a non-provisional patent application.
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