The U.S. Patent law allows an inventor to claim the benefit of an earlier filed provisional patent application IF that application is replaced by a non-provisional utility patent application within one year. Inventors file provisional applications for several reasons. The most common reason is that there is a need to "shop" the invention around before deciding to invest in the utility application filing. U.S. law prohibits the filing of a utility patent application more than 12-months after an invention has been sold, offered for sale, patented, published in a printed publication, or in public use. For this reason alone, it's essential to secure a filing date BEFORE the invention is presented to others. Provisional applications generally cost around $1,000 and have very low filings fees, which are usually only about $70 for most inventors. Utility applications, on the other hand, generally cost 3-4 times as much as a provisional and the costs of the associated prosecution average around $10,000. As such, provisionals offer a great alternative to those who have not yet decided to invest in a utility patent application.

Often, inventors miss the 12-month deadline for filing the utility application. All is not lost. There are options available:

1. There's a 2-month grace period! - A petition for reinstatement may be used to "revive" an expired provisional patent application filed no more than 14 months prior. The cost is high. Fees range from $850-$1,700, just for the petition alone. And, the petition may not be granted if the delay was not clearly unintentional.

2. Don't do anything - If there has not been an activity that would bar the patentability of the invention in a later-filed application, there's no need to worry.

3. File a new provisional - You may file a new provisional that includes that adds more detail or new features to what was disclosed in the previous provisional.

4. Refile the provisional - Again, if there has not been any activity that would bar the patentability of the application, you can merely refile the provisional. Just remember the one-year bar. Just know that the second provisional can't claim priority to the first. You'll only be able to use the filing date of the second in any later-filed utility application. There is some risk that another may have filed a patent application on the same invention before the filing of the second , so it's important to act quickly.

5. File a utility application - If there has been a public use, an offer for sale, a public disclosure, writing describing the invention more than 12 months prior to the filing date of the utility, (or any of ther other bars) then this is not an option.

Ahaji Amos is an attorney at Ahaji Amos, PLLC, and consultant at the Series A Institute.  The Series A Institute positions early-stage women and minority-led companies for equity financing through education. Series A multi-day workshops convene start-up businesses, with a focus on women and minority-led start-ups, for training sessions, roundtables, and networking events to assist them in positioning their companies for alternative financing. Through workshop sponsorship opportunities, we provide agencies and established businesses the chance to develop new business contacts, leads, and partnerships, to enhance brand awareness and recognition, to support local start-ups and to fulfill small and minority business commitments.  Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.  

This and all other writings are not legal advice. The writings highlight the services offered by Ahaji Amos, PLLC and are for advertising purposes.  You should consult legal counsel prior to making any legal or business decision. 


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