Intellectual PropertyPatents

Can You Refile a Provisional Patent Application?

If you are in the United States, you can resubmit a provisional patent application (PPA), but we do not recommend that you do so. The patent rights you hold will be lost along with the priority date of the first PPA. 

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You can file a second PPA rather than a non-provisional application as Provisional Patent Application cannot be extended, but doing so involves major risks.

Introduction

If your US provisional patent application is just about to expire, you have three options:

  1. Do not file any documents – let your first PPA expire before filing any further patent applications.
  2. Submit a second provisional (we do not suggest) – let your first PPA expire before filing a second PPA, acknowledging that you might lose your priority filing date for the first PPA.
  3. Fill out a non-provisional patent application (we suggest this) – Claiming priority from the first PPA filing date.

The alternatives you select today may have the effect of receiving a patent to protect your invention for future use and also the significance of any approved patent. If you wish to file a non-provisional patent application in the United States, you must contact a patent attorney at the earliest before the given deadline expires. Don’t take longer than three weeks as they need time to prepare your non-provisional patent application as well.

When You Are Not Able to ‘Refile’ Your PPA

You cannot refile if you publicised your invention more than a year before the original filing date of your refiled PPA. According to the US law, you are not permissible to refile your second PPA as your filed time was taken more than one year after your first public disclosure. . Here’s an example of when you couldn’t refile a provisional patent application:

  • January 1, 2009 – You make your invention public by displaying it on a website or at a trade show
  • February 1, 2009 – You submit the first provisional patent application
  • January 7, 2010 – Instead of filing for a non-provisional patent, you choose to file for a provisional patent.

February 2, 2010 – the original PPA has expired (the deadline for claiming priority with a non-provisional application was February 1, 2010). It makes no odds 9. If you want to file the second PPA before the first PPA expires.

You need to file a nonprovisional patent application claiming priority since your invention was made public more than one year before filing a PPA.

You should be aware that filing a non-provisional patent within the one-year period, i.e. February 1, 2010, cannot be extended.

FILE YOUR PROVISIONAL PATENT NOW

Deadline for Refile is Expired

People have mistaken that they must refile their PPA prior to the original PPA expires. This is not true as the second PPA cannot claim the priority of the first PPA and it will only be labeled to its original filing date at the US Patent and Trademark Office.

The deadline given for refiling your PPA is similar to the deadline for filing any patent application. Therefore, the patent application must be filed within one year after the invention has been disclosed publicly.

If you wish to protect your foreign patent rights, you must consult with the foreign counsel in the belonging countries where you aim to file to govern the timing of your filing. If you ever want to refile provisional patent applications, always consult with your patent attorney about any owned public disclosures and how it will affect your patent rights.

Let lastly assume that you don’t have a one-year statutory bar, the best answer is to refile your second PPA at the earliest which can be prior or after a month of the actual PPA expiry.

Conclusion

Note losing your first provisional patent application filing date will be quite worrisome and you can go for it only if you can’t afford to file a non – provisional patent application in the United States as this involves risks of losing your patent rights.

If you are ready to take the risk of refiling a provisional patent application, you should hire a patent attorney at the earliest to file a non-provisional patent application in the United States to help fill in any gaps in the disclosed subject matter.

When you refile a PPA that involves losing your patent rights, so the money invested today to file the US non – provisional patent application helps to claim priority to your first PPA will be worth it

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