What Happens After Filing a Provisional Patent Application?

You filed your provisional patent application (“provisional application”) on your new invention and are wondering “so what happens next?” 

No much. 

It’s Reviewed (sort of)

The United States Patent and Trademark Office (USPTO) does not examine provisional applications. That’s right, your newly filed provisional application will not be examined and will not issue as a patent unless you do something. To learn how to get your provisional application examined, read How do I Turn my Provisional Patent Application Into a “Full Patent”?

What the USPTO will do is electronically record your submission and give you an electronic filing receipt. The filing receipt confirms the USPTO received the submitted parts and the filing fee. 

A few weeks after you file your provisional application, the submission will be reviewed to make sure all the required parts are there, including:

  1. A written description of the invention describing how to make and use the invention
  2. Drawing(s), if necessary to understand how to make and use the invention
  3. A filing fee
  4. A cover sheet

What if Something is Missing?

If a part of your provisional application is missing when the provisional application is filed, the USPTO will send a Notice to File Missing Parts. The Notice to File Missing Parts gives notice as to what part is missing and a time frame (usually two (2) months) to reply to the Notice. Failure to respond to the Notice will result in abandonment of the provisional application.

And if no Parts Are Missing? 

If all parts are successfully filed, you will receive an Official Filing Receipt from the USPTO. The filing receipt includes some useful information about the provisional application. For example, the receipt includes the application number, filing date, inventor name(s), title of the invention, etc.

OK, it’s Filed. Now What?

After filing your provisional patent application, there are several things to consider. These include:

Filing a Nonprovisional Application

The benefit to the filing date of the provisional application cannot be claimed if a nonprovisional application is not filed within twelve (12)-months from the filing date of the provisional application.

During this 12 month window, it’s common to perfect your invention add new subject matter to the nonprovisional application that was not included in the provisional application. However, such new subject matter will not be entitled to the earlier priority date of the provisional. As such, if the nonprovisional application includes new subject matter, consider filing the nonprovisional application as early as possible to secure a more favorable filing date for the new subject matter. 

For an overview of how to turn your provisional application into a nonprovisional application, read How do I Turn my Provisional Patent Application Into a “Full Patent”? 

Refining Your Technology

As you continue to work on your technology, you will likely improve it and want to capture those improvements. To capture an improvement, you can file a subsequent provisional application. In fact, you can file multiple provisional applications, and within 12 months of the filing date of the first provisional application, you can submit a nonprovisional application that claims priority to each of the provisional applications. This allows you to capture these later developments in a single nonprovisional application.

Determining the Value of Your Technology

During the 12 months from the date of filing the provisional application to converting the provisional application to a nonprovisional application, you can market your idea to companies, establish a business plan, find investors, etc. If you decide your technology is worth protecting, you can submit a nonprovisional application and claim the filing date of your provisional application. 

Often, businesses find themselves needing to file a provisional application before an upcoming public presentation, product release, or product announcement. In these situations, a provisional application can be prepared and filed quickly to secure a filing date. However, you may not have had enough time for a patentability search before filing. Before moving forward with a nonprovisional application, consider a patentability search to determine whether you can get a patent to avoid needless expenses and work. 

Engaging in Business Activity

Once the provisional application is filed, you will likely engage in business activity such as fundraising, marketing, and selling of the invention described in the provisional application. To protect your invention, be sure to follow up with a nonprovisional application within 1 year of the provisional application’s filing date. 

For new features that were not included in the provisional application, consider filing a provisional application before presenting your product/service at a trade show, selling your product/service, or releasing your product/service to preserve patent protection for the new features. 

Filing a Foreign Application

As with filing a U.S. nonprovisional application, the benefit to a provisional application’s filing date cannot be claimed if a foreign application is not filed within twelve (12)-months from the filing date of the provisional application. 

To gain more time to determine whether to file in foreign countries, you can file a PCT application which would extend having to file in foreign countries by an additional 18 months.

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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