Can and Should You Refile a Provisional Patent Application?
You can "refile" a U.S. provisional patent application. However, the real question is should you refile a U.S. provisional patent application. 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.
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.
How to Refile a Provisional Application
If you decide to take the risk of refiling a provisional patent application, we can file a self-drafted provisional patent application "as-is" without any changes with our Provisional Filing Service or file it yourself at www.uspto.gov. Please keep in mind that you take the risk that a third-party has filed a patent application before your second provisional patent application filing date and that your second provisional patent application may not disclose all of your invention. There are two main ways of refiling a provisional patent application:
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.
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.