Expired Provisional Patent? - You're still OK

By Christopher Rogers

Provisional patent applications are only valid for one year, giving you time to get the more complex non-provisional patent application drafted and filed. But what happens after one year if you haven't filed a non-provisional patent application. Are you out of luck? No, you're probably OK.

Our latest client had a provisional patent application drafted by another patent professional. The provisional expired after a year, and she was told that the USPTO rules prohibited her from ever getting patent protection for her invention.

This advice was wrong. The USPTO rules prohibit the granting of a patent for an invention that was filed more than a year after the invention was disclosed. If you publish details of your invention, that would be an example of disclosure, but merely filing a provisional patent application is not disclosure.

In our new client's case, she had not disclosed her invention to the public. We filed a new provisional patent application to give her some protection while we drafted the non-provisional. One month after she was told that she was out of luck, she instead had a full non-provisional patent application filed with the USPTO.

File your patent application before you disclose your invention to the public. Our advice to clients is to hold off on disclosure until after the non-provisional patent application is filed. With provisionals it's just too easy to let it lapse after a year. If you do publish your invention and you then let your provisional lapse, then you really are out out of luck.

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