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Possible new inventor here provisional vs non provisional patent

Flushing, NY |
Filed under: Patent infringement

So I created something and have been making it for my friends and they all suggest that I should protect and license it. So I thought why not? I have been selling it for about eight months to friends and from my readings here, I have up to 1 year to file.

Since I publicly disclosed my invention, does a provisional patent application give me an additional year to decide on a non provisional patent or do I have only 4 months left to file a non provisional since I disclosed it? I couldn't find that out in my readings and am confused which option to choose from.

It would be great to use my earnings to cover the cost and I have enough for provisional but if not I think this is a good investment and I can find a lawyer here in the process. Thank you

Attorney Answers 5

  1. Q: "Since I publicly disclosed my invention, does a provisional patent application give me an additional year to decide on a non provisional patent or do I have only 4 months left to file a non provisional since I disclosed it?"
    R: You have only four months left. Once disclosed, a non-provisional patent application that claims the invention must be filed within one year. There really is no good alternative to spending some time with your own patent attorney -- preferrably one licensed to practice in your state because, at the end of the day, you simply want to make money selling your product, not look at a nifty patent that claims the product. Your in-state attorney can help you create a company and work with you on the million and one things that a new business must attend to properly. Good luck.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

  2. Attorney Ballard is wrong. A provisional filed within the remaining four months of your grace period will give you an effective priority date within the one year grace period under 35 USC 102(b), and under 35 USC 119(e) gives you 12 months from the filing date of the provisional to file a non-provisional based on that provisional and still have the copendency needed in order to claim the benefit of that effective priority date under 35 USC 119(e). So if you filed the provisional now you would gain an extra 8 months (12 months instead of 4 months) to file the non-provisional. If you wait until close to the end of the one year grace period to file the provisional, you could in fact stretch that to close to 12 months.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

  3. You need to get something on file in the next four months. A provisional patent application is a good way to get started. You have to convert the provisional patent application to a non-provisional (utility) patent application within one year of filing your provisional. Your biggest issue is that you likely waived your foreign filing rights by disclosing your invention prior to filing a patent application. Contact a patent attorney soon for some more information. You need to move quick in order to get something of any reasonably quality on file.

    The answer to this question is for informational purposes only and does not form an attorney-client relationship.

  4. Short Answer: Consult a lawyer

    You are correct that you have a year to file a U.S. Patent Application after your first public disclosure. However, your international rights are almost all gone as most countries require filing before any public disclosure. As for the provisional, yes, you can file it (as you could a regular application) within the same year that you have from the initial public disclosure. Once you file the provisional, that will give you one year from the filing date of the provisional application to file a regular application. Good Luck.

  5. You should consult a lawyer and file a patent application very very promptly. You have one year to file a nonprovisional patent application in the US after filing a provisional patent application. Your disclosure could be problematic if you have any interest in filing any applications in countries outside the US. I will say that you would be better served by speaking directly with an attorney confidentially about your issues. For example, you now have memorialized 8 months of an alleged public disclosure. This could be problematic if you go back and look at your notes and you only actually sold for 7 months.

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