At my patent and commercialization workshops across the country, I’m always asked about provisional patents, and more specifically if another provisional patent can be filed once the original has expired. I’m quick to explain there’s no such thing as a “provisional patent.” What they intended to ask about is a provisional “patent application,” or PPA. My answer to that question is “yes,” a new PPA may be filed under certain circumstances. But, it’s important to have a sound appreciation for the PPA and its purpose. There are tripping points to avoid.
PPA’s are filed for (at least) two key reasons: (1) to establish an early filing date recognized throughout the world as an invention priority date; (2) to acquire patent pending status for applicant’s invention (clearly and fully described in the PPA*) for up to 12 months following the priority date. *Note: Without this, it’s worthless.
The PPA itself is never examined by the US Patent & Trademark Office (USPTO). If the inventor wishes to file an application that will be examined and hopefully mature to a patent grant, a “non-provisional patent application,” or NPA, must be filed. Further, if the inventor wishes to enjoy the benefit of the earlier PPA priority date, the NPA must be filed within the PPA 12 month period and include a specific claim to that benefit. As a caution, I always point out the potential stumbling blocks when it comes to filing a PPA and/or NPA.
First of all, inventors can lose patent rights if they make a public disclosure of their inventions more than a year before establishing an application filing date. Putting this another way: Under US Patent Law, once an invention is disclosed to the public, a patent application (PPA or NPA) must be filed within a one year “grace period,” if a patent grant is to be pursued. Otherwise, the inventor is “barred” from obtaining the patent. Notably, patent laws of other nations do not (yet) include a grace period. If the inventor’s objectives include retaining rights to foreign patents, the PPA or NPA must be on file before any public disclosure takes place.
So, here are the most common tripping points. When an inventor files a US PPA, the subsequent NPA and any foreign filing must be executed within the PPA 12 month timeframe. When an inventor publicly discloses an invention and later files a PPA or NPA under the US grace period invoked by the disclosure, essentially all foreign filing rights are lost.
This leads us back to the initial question: Can one file another PPA when the first PPA expires? The answer is yes, assuming the inventor remains diligent, and that such filing is not barred by expiration of a grace period invoked by public disclosure. Of course, the previously established PPA goes to Provisional Heaven at the end of its 1-year lifespan, and takes its filing date with it.
PPA’s do provide advantages but, as pointed out, they do have an ugly underside. If there seems to be interest in this subject, Part II will reveal still more tripping points…along with some underappreciated advantages of the PPA.
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About Don Kelly (in his words): Hi…I’m Don Kelly, patent agent, certified licensing professional…and an ardent fan of Yakaboutit. I live at I live at www.patentagentplus.com …and can always be tapped for some free advice…for what it’s worth 
) Above are some tips for inventors with great ideas. Please let me know what you think…especially if you have informative comments or additions. I’d like to make this a highly interactive, informative blog…but not so complex that it defies understanding. Feedback on this sample would be most enlightening. And don’t pull any punches. I’ve been around so long those punches simply add to my addled nature.
