What If a Full Patent Is Not Approved and You Have a Provisional Patent?

by Terry Masters

In the United States, intellectual property rights are protected by the Constitution. Creative individuals are allowed the exclusive right to control and profit from their works, even if only for a specified amount of time. The U.S. Patent and Trademark Office (PTO) awards patents to inventors upon making a finding that an invention is unique and non-obvious. The patent application process is complicated and expensive, and it typically takes the PTO more than a year to complete its investigation and make a decision. One of the options that an inventor has to control the process is to submit a provisional patent application in lieu of a full non-provisional application; however, the provisional patent application process can mislead the filer into thinking he has existing rights that can be protected.

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Definitions

A provisional patent application essentially is a placeholder. It enables an inventor to provide the PTO with notice of an existing invention and gives the inventor 12 extra months to prepare a non-provisional patent application to claim actual patent rights. A non-provisional patent application is a full application that the PTO will use to decide whether to award the inventor a patent. When it is submitted within the 12-month window, the full application is placed in line for review as of the date of the provisional application.

Effect

A provisional patent application is not a patent. It is merely a summary of the invention that allows the PTO to identify the work with enough specificity to prevent an overlapping application by another inventor from taking precedence. People who have filed a provisional patent application often mistakenly believe that they have some sort of provisional patent; however, the filing of the application grants no intellectual property rights to the filer. The PTO does not examine the provisional patent application, perform any type of patent search for conflicting claims or make any sort of preliminary determination on the merits of the claim.

Expiration

A provisional patent application expires automatically 12 months from the date of filing. Within that 12-month period, the inventor must file a non-provisional patent application. If the inventor does not file a full patent application within that time, the provisional patent expires and the inventor loses the benefit of referring back to the provisional application for any future filings. If the inventor files a full application and the claim for a patent is denied, the provisional patent still expires in 12 months. The provisional patent filing merely gives the inventor a 12-month extension to file a full patent application and nothing else.

Options

If a non-provisional patent application is denied, the inventor has the right to appeal the PTO’s decision. The prior filing of the provisional patent application has no bearing on any right to file an appeal. An inventor can submit a continuation or continuation-in-part application to appeal a final office action denying the patent that refers back to the original non-provisional patent application and amends it as necessary.