Patent Express Logo
Contact us
Toll-free: (877)-794-9511
Ask a question
Ask a question
See Questions and Answers
See Questions and Answers
Discover more services
Discover more services
Search for Patent Questions:
 
All Questions in Patent Process >> Second Provisional Patent Application

Second Provisional Patent Application

Posted by Anonymous . updated on 2/26/2009
About mid December 2005 I filed and was granted a provisional patent application.  I have not made my invention public.  I have presented my invention twice to very reputable companies and under the protections afforded me by a very complete NDA.  I want the cost of both the utility patent and foreigh patents to be borne by whom ever I license my invention to.  Should I not locate the right entity to license my product to before expiration of my current PPA, can I refile another PPA, with product enhancements included, to give me another year to conduct my search?  (I am quite confident that my product is patentable)  Please help.  Thanks, rgbonk  
Answers (5)
 
Wiscagent
Yes you can file a 2nd PPA on the same or similar subject matter.  BUT your 1st PPA expires after 1 year and if you don't file a regular application before then, the 1st PPA becomes worthless.

To clarify, here's a hypothetical example.
-  You filed your PPA on Dec 15, 2005 discussing invention X, and did NOT follow up with a regular patent application.
-  On Nov 15, 2006 I file a regular patent application on related subject matter.  You have no way of knowing about my patent application.
-  On Dec 14, 2006 you file a second PPA discussing invention X and some new matter.

Because your first PPA expired on Dec 15, 2006 it can not be used as prior art against my patent application.

Also, if you subsequently file a regular application, using your second PPA as priority, you can not claim priority back to your first (expired) PPA.  Once the first PPA expired, it was gone, and of no further help to you.

Filing a second PPA in no way extends the life of the first one.

Richard
 
 
JimIvey
This may seem a bit nit-picky, but there's an important nuance in the original post that I think should be addressed.  No one is ever "granted" a provisional patent application.  The use of the word "granted" suggests some sort of conveyance of rights by the USPTO.  No provisional application results in the conveyance of any rights whatsoever until a real patent application claims the benefit of the PPA's filing date and then is issued (or "granted") as a US patent.

People seem to be fond of saying they've filed their PPA and so they're "protected".  The kind of "protection" offered by the mere filing of a provisional application is extremely narrow and limited and specific.  In fact, the protection offered, if any, is very much provisional itself in that you must take further steps to obtain any benefit whatsoever from the filing of the provisional application.

Regards.
 
 
jdg
Thanks for clarifying that nuance.  I find myself in a very similar situation to rgbonk above.  I understand that if I file a PPA in December '05 and do not convert it to a patent application by December '06 I lose the ability to claim protection as of December '05.  My question relates to future protection, not past: If I refile either (a) the exact same PPA or (b) the exact same PPA with a few improvements in December '06 or later, do I get another year of protection starting on the day I file?  Is there any limit to how many times I can re-file a PPA and get another new year of protection?

Thanks!
 
 
Wiscagent
?If I file [another provisional application] in December '06 or later, do I get another year of protection starting on the day I file??

Yes.  But see below.

?Is there any limit to how many times I can re-file a PPA and get another new year of protection??

No.  But see below.

Keep in mind the nature of the ?protection? that a provisional application provides.  Essentially the provisional application reserves a priority date if you file a regular application within one year of the provisional application.

Suppose (for some bizarre reason) you filed an identical provisional application each and every day from January 1, 2005 until December 31, 2005.  Then on January 2, 2006 you finally filed a regular application for the same invention.

I filed a regular patent application for the same subject matter on January 1, 2005.  I would have the earlier priority date because the last provisional application that was still ?alive? when you filed your regular application was dated January 2, 2005.  So while you can file a rolling series of provisional applications, that does not extend the one-year limit to file a regular application.
 
 
JimIvey
I would add that the thing that limits how late you can file your patent application (real or merely provisional) is prior art -- public printed descriptions of your invention, public uses of your invention, offers to sell or sales of your invention, etc.  And, remember that "your invention" means anything you hope to cover with your patent.  So, acts by others certainly qualify.  The longer you wait to file, the more you risk failure to get any protection at all.

And, if you know you sold some instances of your invention back in Nov '05, missing the Dec '06 filing would be fatal (your sales would predate your filing date by more than one year.  If you're at all unsure of the sufficiency of your provisional application (under the standards of sufficiency applied to real applications), I'd suggest filing your real application before the Nov '06 first anniversary of your first sale, so the sufficiency of your provisional application never comes up under US law.

Regards.
 
Related Questions
In Patent Process    -  posted on 4/22/2009
I was reading an article about a discovery made by a professor. While reading it, I came up with an application of the discovery that could be very successful. What are the approaches that I can use to get m...   Read MoreAnswer this question
In Patent Process    -  posted on 4/12/2009
This is to clarify a question that I asked earlier. I was reading an article about an invention made by a professor. While reading it, I came up with an application of the invention that could be very succes...   Read MoreAnswer this question
In Patent Process    -  posted on 4/23/2009
re: patenting an application Given that a technology has become protected under patent, and other, law, can an application of that technology be patented by someone other than the owner of the original techn...   Read MoreAnswer this question
In Patent Process    -  posted on 2/1/2008
sir, i am a docter,i have done( bams),and now i want to make a helicopter;with the help of some part of motorbike,so is any law which can stop me to do particular work.and 2nd thing i am not using any one''s...   Read MoreAnswer this question
In Patent Process    -  posted on 4/24/2009
what forms do i need to file a patent   Read MoreAnswer this question
Previous question: SPC >>
Next question: Patent Renewal >>
Why Patent Express?
  • Patent Express is the fastest and easiest way for an individual inventor to file a U.S. Patent or Trademark Application.
  • Patent Express fills the gap for those who cannot afford a U.S. patent attorney or agent, but want to have their patent drafted and issued.
  • Patent Express is backed by a 100% money back guarantee.
Save 95% more in register a trademark
Patent Express Services
 

PatentExpress.com is a website of Raj Abhyanker, a professional U.S. Patent Law firm, see: www.rajpatent.com for more. All non-do-it-yourself related services advertised on this site are supervised and managed by a U.S. patent attorney.

© PatentExpress.com All rights reserved. Disclaimer: The information provided in this site is not legal advice, but general information on legal issues commonly encountered. Please note that your access to and use of PatentExpress.com is subject to additional terms and conditions. 11-28-2014