Often, when inventors want to get a product out to market, they want to do it sooner than later. To quickly protect their invention, they will choose to file a provisional patent application in the interim. However, after they launch their product, they may learn about new features they want to include in their provisional patent application or in the product’s next release. But, can you amend a provisional patent application after it has already been filed?
You cannot amend a provisional patent application. You must file a second provisional patent application or a nonprovisional patent application that includes the new features or benefits. The priority date of the new features or benefits will be the filing date of the second PPA or the NPA.
Keep reading if you’re interested in how a provisional patent application works and the benefits of filing a PPA or NPA.
How A Provisional Patent Application Works
The main reason to file a provisional application is to delay costs associated with the nonprovisional patent application. The United States Patent and Trademark Office (USPTO) will not examine it when you file a PPA. They will assign a filing date and send you a filing receipt confirming the filing date, the application number, and other miscellaneous information. Nothing happens for one year. Within one year after filing the PPA, you have to file a corresponding NPA.
When you file an NPA, the USPTO will examine the form of the application and whether the invention is worthy of a patent. For example, they will check whether all of the drawings have a corresponding figure description, among other things. The examiner may send you a report (i.e., office action) to fix any formalities or explaining why you cannot get a patent. You will incur costs in responding to the office action.
By filing the PPA, you can delay the costs associated with the examination performed by the USPTO since the PPA is never examined.
Priority and Expiration
The filing date of the PPA is significant because it establishes the date that you invented your invention. Suppose another person claims that they invented it first. In that case, the PPA and its filing date establish the date of your invention.
Anyone who comes up with an idea similar to yours after your invention’s priority date will have inferior rights to the ones you have. They will not be able to obtain a patent if their invention is the same as yours.
The provisional patent application is only temporary, however, as its name implies. After filing, your invention will remain “patent pending” for 12 months. You must file a nonprovisional patent application within that time frame to maintain patent pendency beyond the 12-month time frame. The invention described in the nonprovisional patent application will have a priority date as the filing date of the provisional patent application.
When you have new features and benefits that you want to secure patent pendency or priority for, you have two options. Your first option is to file a second provisional patent application. Your second option is to file a nonprovisional patent application which includes the same information you included in your provisional patent application plus the new features and benefits. In either case, the information in your first provisional patent application will have a priority date as of the filing date of the first provisional patent application. The information related to the new features and benefits will have a priority date as of the filing date of the second provisional patent application or the nonprovisional patent application.
When should you file a second PPA versus NPA?
When you want to include new features and benefits in your patent application, you have a choice: file a second PPA or an NPA. Which one should you choose?
If you are close to the end of the 12 months, you ought to file the NPA, which claims priority back to the PPA and includes the new features and benefits information. If you are not close to the 12 months, you should file the second PPA, which contains the new features and benefits information. Remember that the due date to file the corresponding NPA is calculated from the filing date of the first PPA, not the filing date of the second PPA.
Filing NPA more than 12 months after the filing of the PPA
You cannot file the nonprovisional patent application more than 12-month after filing the provisional patent application. However, you may still be able to file after such 12-month deadline by filing a petition and paying a surcharge. However, this is not a preferred route since infringers will attack the validity of your patent by arguing that you filed the petition under pretenses. Preferably, you want to file the corresponding nonprovisional patent application before the 12 month period has ended.
Possible Solutions
Consider the following to cut costs but still file the idea soon enough to protect the priority date of the inventor.
Wait to File Until Testing is Complete
Hold off on filing your provisional patent application until you have developed a prototype and tested it. Holding off on the filing of the PPA may not always be feasible if the prototype of the invention will be costly to construct or challenging to complete without first establishing patent pendency.
But, if you can develop a prototype, this will help you better understand what aspects of the invention seemed like good ideas but did not pan out as planned. Identifying the prototype’s flaws allows the inventor to understand the changes that require an implementation of the product hitting the market. These changes may themselves be patentable.
Besides this, developing a prototype can also be very useful in understanding the aspects of the product that make up its minimum viable product.
Develop an Alternative Prototype
An alternative to developing a prototype is to establish a standard for the base model of the invention, a minimum viable product (MVP), before filing for the provisional application.
The MVP will establish the essential features of the product that cannot be changed so that the inventor knows what, at a minimum, needs to be described in the provisional patent application.
An MVP is usually still useful and could be incorporated into later product versions when you make product updates. You may exclude the other so called features and benefits to save time and money.
By being concise on the product’s description, an inventor can save money and time in preparing the patent application.
Getting Professional Help
It is advisable to get professional help even when you are filing a provisional patent application. While the process to apply may seem straightforward, a provisional patent application still requires a full-up description of the invention.
A competent patent attorney will help you establish the minimally viable product, variants, and bells and whistles worthy of inclusion in the patent application.
Conclusion
You cannot amend a provisional patent application. To establish patent pendency for new features and benefits, you need to file a second provisional patent application or file a nonprovisional patent application that includes the first provisional patent application plus the new features and benefits.