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Failure to File a Timely Provisional Patent, Whether Early or Late
Chris Daming, J.D., LL.M.
:
Apr. 18, 2023
What does this mean?
You may file a provisional patent when your invention is almost complete or if you’re ready but haven’t quite perfected your patent application. People do this in order to get a filing date earlier than the day when they can actually file their patent application. When you have a provisional patent application, your application will be considered filed from the day you filed the provisional one, not the regular one.
However, you only have 12 months to file the non-provisional one, otherwise the provisional patent will lapse and you won’t get that earlier filing effect.
Does this apply to me?
If you have an invention in the works that is close to completion, then yes.
Why is making this mistake going to harm my business?
From the day you file your provisional patent, you only have 12 months to file the complete non-provisional patent.
If you file too early, meaning you will not be able to complete your invention or your application within 12 months, the provisional patent will lapse. Your application later on may be defeated by patent applications which were filed during those 12 months. Also, the lapsed provisional application may be considered as a “prior art” which will prevent you from being able to patent your invention. (Checkout AM58 for what happens when you fail to get a patent for your product when it’s necessary)
If you file too late, then other people may beat you to patenting your invention or something equivalent to it. Which means, you may even be precluded from using, making, selling, and distributing the invention.
You could avoid this by:
Carefully estimating the time when you will be able to accomplish the non-provisional application. Also, avoid unnecessarily making your invention public this will only make others more likely to compete with you in patenting it.
Example:
Will wanted to get a patent for his automated sales system. Since he was in the final stages of development of his system, he filed a provisional patent on December 15, 2015. To protect his chances as getting his patent, he held off on any public disclosure about his invention.
On August 31, 2016, Chet, Will’s old business partner, filed his own patent application for essentially the same thing. Claiming that he thought of it on his own because “great minds think alike.” Will wasn’t worried because he knew he had priority right with his provisional patent.
As Will’s 12-month deadline approached, he got bogged down in marketing his product and adding additional features. As a result, he wasn’t able to file his non-provisional patent by the year deadline.
Since Will’s provisional patent application lapsed, he lost his earlier filing date preference over Chet. This allowed Chet to be the “first to file.” Will could’ve prevented this by planning better to ensure he had a timely filed patent.