Plymouth, MA asked in Intellectual Property and Patents (Intellectual Property) for Massachusetts

Q: Is there a way to get a patent issued if I failed to file within the year of getting a provisional patent?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: That is a very common question. Many times inventors get side-tracked, or funding dries up, or they simply forget.

The good news is that provisional patent applications are not published, so once the provisional patent application expires and is not used as a priority document, it is as if it never existed in the first place. So yes, you can file another patent application, identical, or similar to the provisional patent application.

The bad news is that you are going to reset the priority date. You will no longer be able to claim the priority date of the filing date of the provisional application, but your priority date will be the filing date of the new application. The reason this might be a problem is due to intervening prior art. Intervening prior art is that prior art which is published after the filing date of the provisional application and the filing date of the new filing application. This intervening prior art can be someone else's publication, but unfortunately, many times the intervening prior art comes from the inventors themselves.

In summary, if you already started selling products based on your invention, or written about them in trade publications, etc., you generally won't be able to get a patent (I say "generally", because you could still get a US patent, though not any patent outside of the US, if your publication is less than a year prior to new filing).. But if you didn't do anything with your invention, just forgot about it, and no one else picked up on it, there is a good chance that you might still get a new patent.

Good luck!

Kevin E. Flynn agrees with this answer

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

A: Mr. Mlynek is correct that failing to file a non-provisional application within the one year of filing a provisional application is not a violation of a rule. It does mean that you lose the ability to claim the benefit of the earlier filing date of the provisional application. Depending on what has happened since you filed the provisional application until today, the consequences can range from nothing to a forfeiture of your ability to seek patents rights for the invention.

This is a fact dependent analysis and not well-suited for a website Q&A. If you are really interested in seeking patent protection on this idea, you need to consult with a patent attorney. The patent attorney may find that some of your invention has been disclosed to the public through a public use or public sale but you have some unreleased improvements that can be patented.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at .

Kevin E Flynn

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