Almost all foreign countries have an absolute prohibition against obtaining a patent if the applicant has already disclosed the invention. The logic of this is that the patent is a reward for disclosing a previously undisclosed invention to the public so if invention has already been disclosed to the public already, no reward is appropriate. This is consistent with and goes hand in hand with the first to file concept where the first one to disclose the invention to the public is deemed the first inventor and entitled to the patent, because that is the person that has given the public something they did not have previously.
The USA, is rather unique in allowing a "grace period" in order to allow inventors, particularly small inventors, a chance to see if their invention will sell before having to pay the expense of filing a patent application. Big companies generally oppose this and have tried repeatedly to eliminate this grace in order to sink small inventors and steal their inventions. Big companies were successful in moving the USA to a first to file system where big companies have a big advantage and to institute new expensive procedures to challenge patents so that small inventors cannot afford to assert them. The trade-off for those was to give small inventors a grace period. The net result is that US inventors who make a disclosure of their invention thereafter have a year to file a patent application, either a provisional or non-provisional.
One year provisional period
Because the Japanese patent system allows the filing of a very simplified application in comparison to the complicated "written description" and sophisticated patent claims of a US patent application, both big and small companies in the US were losing out to Japanese patent applications in first to file countries. So big companies lobbied, and small inventors agreed, that there should be a simplified form of patent application that can be more quickly filed to put American inventors on an equal footing with Japanese inventors. That simplified application is the provisional patent application. It is called provisional because it only lasted a year and then expires unless converted into a regular patent application, a non-provisional patent application. However, conversion never happens because if a non-provisional application is filed within that one year (and thus is co-pending at the time filed), it will game the benefit of the filing date. And, the one year period of the provisional patent application does not count against patent term, so I provisional can add a year of patent term.
Extension of patent term
The term of a US patent dates is 20 years from the actual filing date of the earliest non-provisional patent application upon whose date it relies. While a non-provisional patent application gains the benefit of an earlier filed provisional patent application, that date is not counted in determining patent term. This effectively gives a patent term that ends 21 years from the filing of a provisional patent application rather than the 20 years if a non-provisional were first filed. So, for an invention that will not make it to market for at least a year, there is a distinct advantage to filing a provisional over a non-provisional. This would be especially true for a product whose primary commercial value will be in the later stages of the patent, such as is usually the case for a pharmaceutical patent.
24 month provisional
What? I just said a provisional can only last a year and then expires. How can it last 24 months? Well, the US patent and trademark office has instituted a program called a "missing parts "program that effectively does just that. It works this way. The normal practice when a patent application is missing something when it is filed is for the US PTO to issue a requirement that the missing parts be supplied within 60 days or the application will be considered abandoned. However, for small inventors the US PTO has instituted a procedure where that 60 days will be expanded to 12 months upon the filing of a request to be part of that program, called the "missing parts pilot program". So the reason it is in effect a 24 month provisional is that the inventor can just file the provisional application (together with at least one patent claim) again as a "non-provisional" and only pay the basic filing fee and then have a year to pay the rest of the fees (examination, search and surcharge) and supply the other missing parts like the oath and rest of the patent claims. So this really works somewhat like a group one year grace period for the small inventor to file a regular patent application beyond the normal one year term of the provisional, so that the non-provisional is really being filed 24 months after the filing date of the provisional, hence the name 24 month provisional. Don't even think of trying this without a very experienced registered patent attorney assisting you.
What is the take away from all this?
The thing you should take away from this legal guide is that you must use a registered patent attorney when you file a patent application. There is just no way you are likely going to know all of the details listed above and all of the various nuances under each one of these details. The above discussion is a very simplified summary. Do not think that you understand it from this summary. All you can hope to do is realize there are a lot of options and a lot of deadlines that must be kept in mind.
Our Rating is calculated using information the lawyer has included on their profile in addition to the information we collect from state bar associations and other organizations that license legal professionals. Attorneys who claim their profiles and provide Avvo with more information tend to have a higher rating than those who do not.
What determines Avvo Rating?
Experience & background
Years licensed, work experience, education
Legal community recognition
Peer endorsements, associations, awards
Legal thought leadership
Publications, speaking engagements
This lawyer was disciplined by a state licensing authority in .
Disciplinary information may not be comprehensive, or updated. We recommend that you always check a lawyer's disciplinary status with their respective state bar association before hiring them.