What are 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.
Need help with filing a provisional patent application or converting to a nonprovisional application? Contact US patent attorney Vic Lin at vlin@icaplaw.com to request a flat rate quote for filing your utility patent application.
Are you further developing the concept?
If your concept is at an early stage of development, you might anticipate further development in the coming months. If so, it may make sense to hold off the filing of the nonprovisional application until development is finalized or nearly complete.
Can you file subsequent provisional applications?
Within 12 months of your first provisional application, it may make sense to file subsequent provisional applications that capture incremental improvements and then consolidate all of the provisionals into a single nonprovisional application.
The nonprovisional application should be filed within the 1-year anniversary of your first provisional application.
Need to raise capital after filing a provisional?
If your plan to fund your nonprovisional 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 after provisional patent application filed
Once your provisional application is filed, you may engage in marketing, selling and fundraising for the concepts disclosed in your provisional application as long as you follow through with a timely nonprovisional application. The nonprovisional must be filed 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 nonprovisional application
While the nonprovisional deadline is 12 months from the provisional filing date, it’s best to file the nonprovisional application as soon as possible.
It’s common to add new matter to the nonprovisional 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 nonprovisional application will contain new matter, you should file the nonprovisional 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.
Need help with next steps after filing your provisional patent application?
Reach out to US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help navigate your next steps.
