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.

As most people know, trademarks are designed to protect, not your product, but your “brand.”  A trademark is a name, logo, “tag line,” and can be a color, sound, or package design, and is intended to protect the reputation of your company.  Trademark rights exist as soon as you use your mark in interstate commerce in association with your product or service.  Your rights exist, geographically, wherever you use your mark.

Even though trademark rights exist at the time you begin using your mark in association with your product in interstate commerce, there can confusion as to where exactly your rights extend.  A federal trademark registration can eliminate this confusion.  Once you have obtained a federal trademark registration from the United States Patent and Trademark Office (USPTO) your rights exist over the entire United States (with the caveat that a prior non-registered user may have superior rights in certain geographic regions).  A federal registration is a useful and advisable way to protect your brand.

Trademark applications are filed with the USPTO and can be filed as either intent-to-use (ITU) or use-based applications.  The ITU application allows you to file an application for a trademark prior to actually using the mark in interstate commerce.  In order to file an ITU you only need a genuine intent to use the trademark.

An attorney is not required for the filing of a trademark application.  However, there are some pitfalls to be aware of if you decide to file the application yourself.  First, you must ensure that the applicant you list on your trademark application is correct.  On its face, this may seem obvious, but if you get it wrong, your entire trademark application can be considered void.  This typically occurs when you have formed a corporation.  If you have formed a corporation, that typically means that your product is being sold by your company, not you individually, which usually means that the trademark is being used by your company, not you individually.  Therefore, the trademark application would need to be filed in the name of the company.

A second issue involves the mark itself.  If you are using a logo or a tag line, make sure that it is the same all of the time.  The USPTO is very particular about changes in trademarks once they have been filed.  So, if you have a logo design, make sure that it is the one you want to keep prior to filing a trademark application.  Also, many times people will use a logo, a word mark, and a tag line together.  In order to provide yourself with the broadest protection, I would recommend filing separate applications for each one, so that if someone copies only one of the three you still have a trademark registration that covers it.  Another issue with logos is color.  In a trademark application, you can claim the color as part of the trademark or not.  Not claiming color provides broader protection.

A final issue is the listing of goods and services.  Once you have filed the application, you may amend the listing of goods and services, but you cannot add new ones.  So, make sure that you list all of the products on which you are using the mark.  When listing the goods try to be as broad as possible in your description.  If the USPTO would like you to use different wording, they will let you know.  It is easy to go from broad to narrow.

Trademarks can be a valuable asset to your company, and should be protected and treated appropriately.

About the author Daniel A. Thomson:  Expertise lies in intellectual property (which of course includes Trademarks).  Making sure hard earned and created brands are protected.  Dan has also authored “A Brief Overview of an Effective Practice” in Intellectual Property Client Strategies, and “The Shifting IP Landscape: Dealing with Change Domestically and Abroad” in Intellectual Property Law 2008: Top Lawyers on Trends and Key Strategies for the Upcoming Year.  Daniel is with Emerson, Thomson & Bennett, located in Akron, OH.  Feel free to contact at dat@etblaw.com.