Can You Refile a Provisional Patent Application?

While you cannot extend a provisional patent application, you can refile a provisional patent application instead of filing a non-provisional application but doing so carries some inherent risks (see below).  However, your second provisional patent application cannot claim priority to your first provisional patent application's filing date (i.e. your new effective filing date will be the date when you file the second provisional patent application).

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 establish a filing date at least one year before 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.

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.

When You Can Refile a Provisional Patent Application

You can refile your provisional patent application in the following two situations:  (1) you have not made a public disclosure of your invention, or (2) less than one-year has passed from your first public disclosure of your invention.  Regarding the latter, it is important to note that many foreign countries are not so generous so if you need to preserve your foreign patent rights contact your patent attorney immediately.

Below is an example illustrating when you can refile a provisional patent application (assuming you are not interested in foreign patent rights):

- 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.

- 12/31/09.  You refile the original provisional patent application (or an updated version thereof).

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

Because you filed the second provisional patent application within one-year of the January 1, 2009 public disclosure, you are able to refile the second provisional patent application without losing any United States patent rights.  However, you would not be able to refile again and you would have to file a non-provisional patent application claiming priority to the second provisional patent application.

How to Refile

There are two main ways of refiling a provisional patent application:

1. Identical Provisional.  Simply file the same provisional patent application that you originally filed without any changes or updates.  This is a conventional "refiling" of a provisional patent application.
    
2. Updated Provisional.  Update your original provisional patent application to include additional subject matter (e.g. recent improvements, subject matter accidentally left out, etc.) and then file the updated provisional patent application.

Benefits of Refiling a Provisional Patent Application

The main benefit of refiling a provisional patent application is expense.  You are continuing to delay paying a patent attorney to prepare a non-provisional patent application and you are also delaying the payment of the larger non-provisional filing fee.  This theoretically gives you another year of "patent pending" to determine the market for your product.

Detriments of Refiling a Provisional Patent Application

There are more detriments than benefits when refiling a provisional patent application.  Below is a listing of potential detriments of refiling a provisional patent application versus filing a non-provisional application.

• You lose your earlier filing date for the original provisional application.
   
• You lose the USPTO filing fee paid for the original provisional application.
   
• You are delaying examination of your patent application another year (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).
   
• Third-party patents filed after your original provisional application's filing date but before your second provisional patent application can now be considered "prior art" by the U.S. Patent Office to reject your later non-provisional application.
  
• You will lose the ability to "swear behind" any third-party patents granted more than one-year before the filing date of your second provisional application.

Conclusion

Refiling a provisional patent application is appropriate in situations where you have not publicly disclosed your invention and you are confident that third-parties have not developed any prior art that could affect the patentability of your patent rights.  There are many potential detriments that you should make yourself aware of before attempting to refile a provisional patent application and understand you cannot revive/extend your original provisional application.