Colorado Springs, CO asked in Patents (Intellectual Property) for Colorado

Q: hi i have a patent and am wanting to do something with it but it runs out in march

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: I am guessing that you have a pending provisional application that has a one-year anniversary in March. If you do not file a non-provisional application by the one-year anniversary, the provisional application will simply expire.

So your options are

1) File a non-provisional US application by the one-year anniversary.

2) File non-provisional applications in other countries under the Paris Treaty by the one-year anniversary.

3) File a Patent Cooperation Treaty patent application (PCT application) which serves as the front end for 152 systems including the US and then you have some extra time to decide about filling in various countries including the US. So rather than having to file at the 12 month anniversary, you can file at the 30 month anniversary. (even later in some countries).

4) If you have not had any public sales, any public uses, or any public disclosures -- you may want to simply refile the same provisional application and start a new one year clock if you do not have the funds to prepare non-provisional applications.

All of these items should involve working with a competent patent attorney. It is possible that your provisional patent application lacked sufficient substance on how to make and use your invention. If so, then there may not be anything to convert and you still need to develop your idea. It is also possible that your idea is too close to some earlier patents or publications and you are unlikely to get a patent.

For a discussion on the needs to have substance in your provisional application there is a link on my website to various PowerPoint slide sets including a presentation provisional applications.

I hope this helps.

Kevin E Flynn

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