How do I Turn my Provisional Patent Application Into a “Full Patent”?

You filed a provisional patent application (“provisional application”), secured a filing date, and have enjoyed designating your product as patent pending. Now what? First:

A provisional application is not examined and cannot issue as a patent.

That’s right, filing a provisional application and designating your product as patent pending carries no legal effect. Additionally, the benefit of the provisional application’s filing date cannot be claimed if a nonprovisional patent application (“nonprovisional application”) claiming priority to the provisional application is not filed or the provisional application is not converted to a nonprovisional application within twelve (12) months from the filing date of the provisional application. 

Also, a provisional application is not examined and cannot issue as a patent. However, if one of the following two events occurs within 12 months of the provisional application’s filing date, a nonprovisional application which can be examined will result:

  1. Filing a full patent application (e.g., a nonprovisional application or PCT International application) that claims priority to the provisional application.
  2. Filing a petition to convert the provisional application into a full patent application.

1. Filling a Full Patent Application That Claims Priority to the Provisional Application

This approach is the one that is usually taken. That’s because most provisional applications will take significant work to turn them into a useful nonprovisional application, and it’s easier to file a new nonprovisional application claiming benefit of the provisional application than by revising the provisional application.

Also, the patent term of the patent which will issue on the nonprovisional application will be 20 years from its actual filing date, not the filing date of the provisional application.

For a nonprovisional application to benefit from the provisional application’s filing date, the nonprovisional application must include a claim for the benefit of the earlier filed provisional application. Additional information may be required that was not required when filing the provisional application. For example, provisional applications do not require the submission of oaths or declarations from inventors or formal claims. For the nonprovisional application to benefit from the provisional application’s filing date, these will need to be included with the nonprovisional application.

The effective filing date of the nonprovisional application is the filing date of the provisional application, providing an earlier filing date for priority purposes but not reducing the 20-year term of the utility patent.

2. Filling a Petition to Convert the Provisional Application Into a Full Patent

For this approach, the process can be initiated by filing a petition to convert the provisional application into a nonprovisional application and paying a corresponding fee. As in the first approach, the same additional information may be required. That is,  upon requesting to convert the provisional application to a nonprovisional application, a preliminary amendment to include at least one claim, if not already included, will need to be filed as well as submission of an oath or declaration by all inventors. 

Conversion of a provisional application will set the nonprovisional application filing date as the filing date of the provisional application.

The conversion will affect the patent term. For example, the term for a utility patent in the United States is set for a maximum of 20 years from the filing date of the earliest nonprovisional application. When a provisional application is converted to a nonprovisional application, the patent term will be counted from the filing date of the provisional application, rather than from the date of the later filed nonprovisional application. As such, you lose up to a year of patent term with this approach. 

What’s the Same About the Two Approaches? 

In both approaches, to benefit from the provisional application’s filing date, the claimed subject matter in the later filed nonprovisional application must have support in the provisional application and the disclosure of the invention must describe the invention with enough detail that someone skilled in the relevant technical field can understand how to make and use it. 

This is why it’s important that the disclosure of the invention in the provisional application is as complete as possible.

This is also why it’s important to include drawings with your provisional application. For example, you may be able to rely on your drawings from your provisional application to include a disclosure of your invention in your nonprovisional application that was not adequately described in the provisional application. For tips on writing a provisional application, check out How do I Write a Provisional Patent Application That Protects my Invention? 

What’s Different About the Two Approaches? 

Although both of these approaches result in a nonprovisional patent application having an earlier filing date for priority purposes, the overall patent term will differ. 

With the first approach, the patent term will be counted from the filing date of the nonprovisional application. 

With the second approach, the patent term will be counted from the filing date of the provisional application. Thus, the first option allows you to effectively receive an extra year of protection for your invention. 

For example, if you file a nonprovisional patent application on January 1, 2020, then it will expire on January 1, 2040, for a 20-year term for a utility patent.

In the situation you file a provisional application on January 1, 2019, and then file a nonprovisional on January 1, 2020, claiming priority to the provisional filing, your nonprovisional filing will be examined with the priority date of January 1, 2019, but your patent protection (if granted) will expire 20 years after the filing of the nonprovisional application (January 1, 2040). 

However, if you decided to convert your provisional into a nonprovisional application, you would only be eligible for patent protection through January 1, 2039. In essence, the year of provisional protection counts against your 20 year period of patent rights.

Questions or Suggestions?

It’s important to me that this article is helpful to you. If you have any questions on the article or suggestions for further clarification, please reach out to me and let me know.

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