Q: Do I have to file a provisional patent or can I file a nonprovisional patent right away?

A: If your first provisional patent application expired, then it is as if it did not exist. It is gone.

Typically, I recommend skipping a provisional patent application and filing a non-provisional patent application right away. However, there are a number of instances when filing a provisional application is appropriate. For example, if you have an invention completed but you want to expand it and you want to file internationally (thus cannot file a CIP on it later), then it might be appropriate to file a provisional application.

You really should talk more about this with your patent agent or patent attorney.

Good luck!

A: Given that you filed a provisional application 14 months ago, it may be worthwhile to check to see if you have done anything since then that has caused you the loss of the option to seek a patent.

Starting in March of 2013, the rules for what could be patented changed. See https://www.law.cornell.edu/uscode/text/35/102

The relevant text is

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

It is believed that the term sale is meant to be a public sale not a sale under a non-disclosure agreement. As this change to the law is new and there have not been many cases tried with respect to patents issued under the revised law, we have a hard time answering all questions with confidence.

The concept of not being able to get a patent after putting an idea into the public domain is linked to the information being accessible to the public. An argument can be made that a trade secret not available to the public that is used in making a product is still a trade secret and thus could possibly be patented later. The process for getting nooks and crannies in a Thomas English Muffin is still considered a trade secret.

So the question remains -- did you have any public sales or public uses? Did you have a public disclosure before April 3, 2017?

You may need so sort out close calls with your patent attorney but you may need to hurry to beat a one year anniversary of a public disclosure made in reliance of your then patent-pending status.

I hope this helps.

Kevin E Flynn