WHAT SHOULD I DO WHEN MY ONE YEAR IS EXPIRING ON MY PROVISIONAL PATENT APPLICATION?

QUESTION: I filed a provisional application almost one year ago, so it will soon be expiring. I'm not sure what are the next steps for my patent protection in the US and in foreign countries. What should I do?


ANSWER: You can consider re-filing your provisional patent application or filing a non-provisional patent application.


A US provisional patent application gives you patent pending status for one year. During the one year period, you can mark your product or process as patent pending. However, during the one year period, you do not have patent rights that enable you to stop a patent infringer.


One Option

If, during the one year period, you have NOT found that there is a significant market for your product or process, but still want to try to develop your market, one option is to refile your provisional patent application to obtain another year of patent pending status.


Your refiled provisional application can include changes or improvements to your product or process. More details about your original idea can be added.


Generally, including more specifics about your invention is better than fewer specifics. One reason is that the law requires your patent application to have enough detail to enable another person to make and use your invention.


But a disadvantage to refiling a provisional patent application is that you receive a new filing date which is later in time than your original filing date. Having an early filing date is important because a patent is awarded to the person who first filed the patent application.


Therefore, when you refile your patent application, you might be losing up to one year in filing priority.


Second Option

On the other hand, if you been successful in selling your product or process during the past one year, you can convert your provisional patent application into a US non-provisional patent application.


What is meant by "convert" is that you can use your provisional application and modify it to meet the additional legal requirements of a non-provisional application. Some of those additional requirements may include descriptions of your drawings, an abstract of your invention, and claims that define the legal boundaries of your patent coverage.


By converting your provisional and filing a non-provisional, you then have the opportunity to obtain an issued patent. Your issued patent can then by used to prevent others from stealing your idea and stop patent infringement.


Third Option

Again, if you have had success during the past year, you can file for patent protection in foreign countries. Those foreign patent applications can be based on your provisional patent application.

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