Can and Should You Refile a Provisional Patent Application?

You can “refile” a U.S. provisional patent application but it is not recommended because of the loss of your priority date for the first provisional application and the potential loss of some (or all) of your patent rights.  While you cannot extend a provisional patent application, you can file a second provisional patent application instead of filing a non-provisional application but doing so carries significant risks (discussed below).  For example, since your second provisional patent application cannot claim priority to your first provisional patent application’s filing date, you may lose some or all of your patent rights to a third-party that files a patent application before your second provisional filing date under the new U.S. first to file system.

If your U.S. provisional patent application is about to expire, you have three choices to make:

– Option 1: Don’t File Anything.  Allow your first provisional application to expire and don’t file any additional patent applications.
 
– Option 2: File 2nd Provisional (Not Recommended).  Allow your first provisional application to expire and only file a second provisional patent application with the understanding that you lose your priority filing date for the first provisional patent application.
 
– Option 3: File Non-Provisional (Recommended).  File a non-provisional patent application that claims priority to the first provisional patent application’s filing date.

 

The option you choose today can determine whether you receive a patent later to protect your invention and the value of any granted patent.  If you are considering proceeding with a U.S. non-provisional patent application, you should contact your patent attorney at your earliest convenience and no later than 3 weeks before your expiration deadline to provide them with sufficient time to prepare the non-provisional patent application.

 

When You Cannot Refile a Provisional Patent Application

You cannot refile your provisional patent application if you have publicly disclosed your invention more than one-year before the actual filing date of your refiled provisional patent application.  The reason you cannot refile is because your filing date of the second provisional patent application is more than one-year after your first public disclosure which is not allowed under U.S. law.  Below is an example illustrating when you could not refile a provisional patent application:

– 1/1/09.  You publicly disclose your invention on a website or a trade show.

– 2/1/09.  You file the original provisional patent application.

– 1/7/10.  You decide to refile a provisional patent application instead of filing a non-provisional patent application.

– 2/2/10.  Original provisional patent application is expired (last day to claim priority with a non-provisional application was 2/1/10).

It doesn’t matter that you want to file the second provisional application prior to the expiration of the first provisional patent application.  Because you publicly disclosed your invention more than one-year before being able to file a second provisional patent application, you will have to file a non-provisional patent application claiming priority to your January 1, 2009 first public disclosure.  It should be noted that you cannot extend the one-year deadline for filing the non-provisional patent application which is February 1, 2010.

 

Detriments/Risks of Refiling a Provisional Patent Application

Below is a listing of detriments and risks of refiling a provisional patent application instead of filing a non-provisional application.

• Risk of Losing Your Patent Rights.  Unfortunately, a second provisional patent application cannot claim priority to the first provisional patent application’s filing date like a non-provisional can.  Under the new first to file patent system implemented by the United States on March 16, 2013, losing your earlier filing date for the first provisional application could result in the loss of your patent rights in one or more of the following scenarios:
  
  • 3rd Party Files Before Your 2nd Provisional Filing Date.  If a third-party files a patent application (provisional or non-provisional) before your second provisional patent application for the same invention, the third-party will be entitled to the patent on the invention (even if you were the first to invent).
     
  • 3rd Party Files After Your 2nd Provisional Filing Date.  If you file a second provisional patent application that is self-drafted and does not fully disclose your invention, a 3rd party can potentially file a patent application after even your second provisional patent application to acquire superior rights to your invention since you are only entitled to a filing date for subject matter fully disclosed.  This is why it is prudent even with your first provisional patent application to have a professionally drafted non-provisional patent application filed sooner than later.
     
  • 3rd Party Publicly Discloses Invention Before Your 2nd Provisional Filing Date.  If a third-party publicly discloses the invention before your second provisional patent application’s filing date, the prior public disclosure will (1) prevent you from receiving a patent and (2) entitle the third-party to receive a patent if they file a timely patent application within one-year of their first public disclosure.
     
• Delayed Patent Rights.  By filing a second provisional patent application instead of a non-provisional patent application, you are delaying examination of your patent application another year since a provisional patent application is not examined (the average pendency of a non-provisional patent application is approximately 30 months – by filing two consecutive provisional applications this pendency period is effectively increased to 54 months).
   
• Increased Expense.  You lose the USPTO filing fee paid for the original provisional application and end up paying a second provisional filing fee.
   
• Lose Right to Stay on Old “First to Invent” System.  If your first provisional patent application was filed before March 16, 2013, any patent application that claims priority to the same subject matter is entitled to the “first to invent” system that existed prior to the March 16, 2013 change to a first to file system.  This can be important if you have an early invention date that could help you get around other patent references.  However, if you allow your first provisional patent application to expire and file a second provisional with a filing date on or after March 16, 2013, the patent application will be examined under the new first to file system and not the old first to invent system.

 

Absolute Deadline for Refiling

Many people mistakenly believe they need to refile their provisional patent application prior to the original provisional patent application expiring.  This is not true since your second provisional patent application will not be able to claim priority to the original provisional application and will only be entitled to its actual filing date at the U.S. Patent & Trademark Office.

The deadline for refiling your provisional patent application is the same as for any patent application.  In other words, you need to file the patent application within one-year of any public disclosure of the invention.  If you want to preserve your foreign patent rights, you will need to contact foreign counsel in the countries you want to file in to determine the timing of your filing (typically you need to file your provisional prior to any type of commercial activity).  As always, talk to your patent attorney about any public disclosures you may have and how this may affect your patent rights by attempting to refile a provisional patent application.

In the end, the best practice is to refile your second provisional patent application as soon as possible which can be months before or after the expiration of the original provisional patent application – assuming you do not have a one year statutory bar.

 

Final Thoughts

The choice is yours to make as to whether to (i) not file any additional patent applications, (ii) file a non-provisional patent application or (iii) file a second provisional patent application.  As you can see, giving up your first provisional patent application’s filing date can be very risky and should only be done in situations where you simply cannot afford to file a U.S. nonprovisional patent application because of the inherent risks of losing your patent rights.  If you do decide to take the risk of refiling a provisional patent application, you should retain a patent attorney sooner than later to file a U.S. non-provisional patent application to help fill in any voids in the disclosed subject matter that may exist. 

Considering the risks of losing your patent rights by refiling a provisional patent application, the money you invest today to have a U.S. non-provisional patent application filed that properly claims priority to your first provisional patent application could be the smartest and most financially rewarding investment you make in your life.