Next steps after filing a provisional patent application

So you’ve filed a provisional patent application. Now what? The next steps depend upon a few factors. Keep in mind the 1-year deadline as you think through these factors.

Are you further developing the concept?

If your concept is at an early stage of development, you may be anticipating further development in the coming months. If so, it may make sense to hold off the filing of the non-provisional application until development is finalized or nearly complete.

Filing subsequent provisional applications

Within 12 months of your first provisional application, it may make sense to file subsequent provisional applications that capture incremental improvements. You will end up with a series of provisional applications which can all be consolidated into a non-provisional application to be filed within the 1-year anniversary of your first provisional application.

Patentability search

If your provisional application was urgently filed to beat a particular date, you may not have had enough time for a novelty search prior to filing. Consider whether a patentability search would be helpful prior to filing a non-provisional application.

Raising capital

If your plan to fund your non-provisional application requires investors, then start immediately. You have only one year to file the non-provisional application, and most patent attorneys prefer not to wait until the last minute to begin drafting.

Business activity

Once your provisional application is filed, you may engage in marketing, selling and fundraising for the concepts included in your provisional application as long as you follow up with a timely non-provisional application within 1 year of the provisional filing date. Make sure you do not publicly disclose any new features that were not included in your provisional application.

Filing the non-provisional application

While the non-provisional deadline is 12 months from the provisional filing date, it’s best to file the non-provisional application as soon as possible. It’s common to add new matter to the non-provisional application that was not included in the provisional application. Such new subject matter will not be entitled to the earlier priority date of the provisional. If it’s likely that your non-provisional application will contain new matter, you should file the non-provisional application as soon as possible to secure an earlier filing date for the new matter.

Keep in mind that the non-provisional application will begin the examination process that will hopefully lead to a granted utility patent. Therefore, you should expect and budget for ongoing prosecution costs such as responding to Office Actions.

Foreign filing considerations

The 1-year anniversary of the provisional filing date is the deadline for not only the US non-provisional application, but also for any foreign filing. You can buy more time by filing a PCT application which would extend the national stage deadline for desired foreign countries by an additional 18 months.

If you want to file both the PCT and US non-provisional applications, one option is to file only the PCT application initially. Doing so will save some cash flow in avoiding at least the USPTO fees for the non-provisional application. You can then wait to get the International Search Report in the PCT application, file any desired claim amendments in the PCT application and then subsequently enter the US national stage application with the amended claims.

You must file in any non-PCT countries by the 12-month deadline.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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