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Can You Refile a Provisional Patent Application?

“Refiling a provisional is just a bad idea when you can, for a few hundred dollars more, keep hold of that earliest priority date and continue on the path to obtaining a patent.”

https://depositphotos.com/5073168/stock-photo-consequences-road-sign-clipping-path.htmlThe question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.

Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

The Consequences of Refiling

To understand the consequences of refiling a provisional patent application one must remember that a provisional patent application becomes abandoned 12 months after the filing date. Yes, there is an additional two-month period that is available if there is a mistake made, but this does NOT mean you have 14 months before a provisional application goes abandoned. The rule is 12 + 2, where the +2 additional months is available to revive lost priority from an abandoned provisional. The cost to revive as publication is $1,050 for a small entity or $525 for a micro entity, and revival is only available if there is error or mistake, such as you mistakenly marked your calendar with a note that you had to file a nonprovisional on January 15 rather than January 5, that kind of mistake. So, it is best for everyone to still think of a provisional abandoning 12 months after filing, which will be true in all but the most unusual circumstances.

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When a provisional application abandons, you lose the priority filing date that the provisional application establishes. If you refile a provisional patent application, you are establishing a new priority filing date. You are NOT entitled to capture the original provisional filing date. What this means is that anything and everything that has occurred after your first provisional filing date will be considered prior art. Furthermore, some things that occurred before your first provisional filing date that otherwise would not have been prior art will also now be prior art that will prevent a patent from issuing. Let’s go through an example to illustrate.

Example: Provisional #1 is filed on January 5, 2021. Provisional #1 goes abandoned on January 5, 2022. Inventor decides not to file a non-provisional claiming the benefit of the filing date of Provisional #1. Provisional #2, which is identical to Provisional #1, is filed on January 4, 2022, to keep the application in patent pending status.

First, it is worth specifically pointing out that you cannot claim priority in Provisional #2 to Provisional #1. If a provisional patent application is going to provide priority to another application, it must be used to establish priority within 12 months to either a non-provisional patent application or to an international patent application filed under the Patent Cooperation Treaty (PCT).

Second, as we parse the above example, the original priority filing date was January 5, 2021. If the priority filing date from Provisional #1 can be maintained, nothing from after January 5, 2021, can be prior art – no public use, no sales, no publications. Because Provisional #1 becomes abandoned, and no patent application is filed claiming the benefit of Provisional #1, the priority filing date of January 5, 2021, is lost. With the filing of Provisional #2, a new priority filing date is established as of January 4, 2022. Now, nothing from after January 4, 2022, can be prior art. So, you reset the prior art date and lose 12 months of priority, which may not seem like a lot, but which in many instances will be absolutely devastating.

In the United States, even though we have been a first inventor to file system since March 16, 2013, our system is really a hybrid first to file system. It is wise for everyone to interpret first to file as ‘file first’—this is the safest way to think about the law. However, U.S. patent law still retains a 12-month grace period, so it is possible for an inventor to remove their own disclosures as prior art. In other words, if an inventor were to demonstrate an invention at a trade show on February 10, 2021, that inventor would have until February 10, 2022, to file a patent application (i.e., 12 months after the demonstration).

This discussion of the grace period is important because most inventors are aware of its existence and frequently will disclose their invention in one way or another prior to filing a patent application, despite the best advice being not to disclose the invention to anyone who doesn’t have a legal obligation to keep the invention secret prior to filing even a provisional patent application. So, let’s say the inventor disclosed as above on February 10, 2021, and then, because of tremendous response at the trade show, decided to file a provisional patent application, which was accomplished on April 30, 2021. Then let’s say that as the deadline to file a non-provisional patent application approached the inventor lacks the funds, or feels they need more time for one reason or another, and instead of filing a non-provisional patent application on or before April 30, 2022, the inventor decides to refile a provisional patent application on April 30, 2022. Catastrophe!

As we parse what has happened in the previous paragraph, notice that the original priority filing date for Provisional #1 was April 30, 2021. The inventor was able to remove his or her own disclosure of the invention at the trade show as prior art because it occurred less than 12 months before the filing of Provisional #1 (i.e., the disclosure occurred on February 10, 2021). When Provisional #1 abandons the original priority date is lost and a new priority date of April 30, 2022, is obtained. The demonstration at the trade show is now more than 12 months before the new priority filing date of April 30, 2022, so the inventor’s own disclosure will forever prevent the inventor from obtaining a patent!

This is just one example of what can possibly go wrong. Because the loss of the priority date of Provisional #1 and the resetting of the priority date to one year later, there will be much more prior art of others that cannot be known. So, not only will the actions of the inventor possibly create an insurmountable hurdle to obtaining a patent, but the actions of others that cannot be known will present a hurdle to obtaining a patent. This is worth keeping in mind because if you talk with professional patent searchers, they will tell you that most of the best prior art is typically grouped in time about 18 months apart. So, resetting a priority date 12 months into the future is extremely problematic to say the least.

Often, if not nearly always, the decision to refile a provisional patent application is made due to lack of funds. As of publication, the filing fee for a provisional application for a small entity is $150, and $75 for a micro entity. The low cost of filing a provisional application is seductive, but the loss of the original priority date can be a disaster. So, what should you do?

In one instance, I talked an inventor who wanted to refile his provisional patent application into filing his provisional patent application as a non-provisional patent application. This provisional patent application was created with great care. In fact, I had drafted it for him personally, and with a lot of assistance from him, to come up with several dozen flowcharts explaining his software. We had always planned on going back and adding much more information at the time we filed the non-provisional patent application, but he was not yet making money from the invention, hadn’t licensed it, but didn’t want to give up yet. Sound familiar?

We wrote one claim and filed exactly what was filed as a provisional patent application as a non-provisional patent application. It was several years before the patent examiner picked up the application for examination, at which time the inventor did have money to proceed. He ultimately received a patent. This same story was repeated with another inventor in a very similar situation, where the provisional patent application I drafted was ultimately issued as a patent. Now, this is not what I would consider best practice, but if you do a good job on the provisional patent application it will be as detailed as a non-provisional at least with respect to everything you are in possession of as of the time of filing. Drawings are your best friend to make sure you are disclosing as much as possible, and then you write at least one paragraph (hopefully more) describing what is shown in each drawing. At least you can wind up with something.

As of publication, the fees due at filing (i.e., filing, search and examination fees) for a non-provisional patent application at the USPTO is $830 for a small entity, and $415 for a micro entity. And while $830 vs. $150 for a small entity or $415 vs. $75 is often not an insignificant amount for some independent inventors at a time when you are uncertain whether it is wise to cut and run or continue to pursue the commercialization and monetization activities, if there is hope on the horizon, keeping hold of that earliest priority date is extremely important from a patentability standpoint. And, if you wind up improving the original invention, you have the ability to file a continuation-in-part application, which is another non-provisional patent application that can add disclosure and claim priority going all the way back to the original provisional filing date.

For what it is worth, whenever a client requested that I refile a provisional even after explaining the potentially extreme negative consequences, I have required the client to sign a waiver explaining the risks and explaining that they understand this filing is being made against my advice. Refiling a provisional is just a bad idea when you can, for a few hundred dollars more, keep hold of that earliest priority date and continue on the path to obtaining a patent.

More Help for Inventors

Of course, as alluded to, a provisional is only good if it actually, fully and fairly describes the invention. We have numerous articles on IPWatchdog explaining the basics of writing an application and understanding how best to describe an invention. To learn how to fully and fairly describe an invention I recommend starting with the following articles:

We literally have hundreds of articles for inventors here on IPWatchdog.com. For more, I suggest starting with Invention to Patent 101 — Everything You Need to Know to Get Started. For those who are considering proceeding without professional representation, I also encourage you to take a look at our do-it-yourself provisional patent application system – The Invent + Patent System™ , which has literally helped thousands of inventors create provisional patent applications step by step.

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Author: kikkerdirk
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24 comments so far. Add my comment.

  • [Avatar for Particularly Pointing Out]
    Particularly Pointing Out
    November 28, 2021 03:43 pm

    Your article mirrors what I tell my own clients when they want to re-file a provisional. I also mention that some foreign jurisdictions have absolute novelty requirements and not being able to take advantage of the original provisional’s earlier filing date can have some negative consequences should there be any actions taken by the applicant that they might have “overlooked” in telling me when I asked them about public disclosures of their invention.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    November 28, 2021 03:48 pm

    Most “small” inventors are wasting their time filing any patent applications at all. At least if they merely keep refiling a provisional, they will never get to prosecution or grant, and thus never encounter the headaches that will come from those experiences.

    They would do best just to walk away. If they are going to file anything, however, then refiling their provisional is their most innocuous option.

  • [Avatar for Stephen Potter]
    Stephen Potter
    November 29, 2021 05:48 am

    Thanks, Gene: an excellent and useful note…

  • [Avatar for MaxDrei]
    MaxDrei
    November 29, 2021 09:57 am

    Two thoughts: 1) I wonder whether the idea of diligently re-filing your pro every year is a relic of “First to Invent” thinking. 2) Reliance on the grace period extinguishes the opportunity to procure patent rights outside the USA. If investors are looking to make money outside the USA, when they find out that Trade Show interest was encouraging enough to prompt drafting and filing a patent application, their interest in the patent application shrivels to nothing.

  • [Avatar for Benny]
    Benny
    November 29, 2021 11:59 am

    An abandoned provisional filing can’t be cited as prior art. An inventor who (justifiably) doesn’t trust the system to protect their IP, should at least ensure they publish an application as defensive publication, or they could end losing their own innovation.

  • [Avatar for Mike]
    Mike
    November 29, 2021 12:13 pm

    I totally disagree – there are times it is in your client’s best interest to refile a provisional. If there has been no disclosure, and no chance of getting scooped by the competition, then refiling in order to wait for more data or disclosure for a stronger conversion is often in the client’s best interest.

    Your one-size-fits-all advice does your clients a disservice. Refiling provisionals is a strategy that should be in every good patent lawyer’s arsenal.

    Also, don’t forget to expressly abandon the first provisional when you do file the second to avoid complicating your priority rights in Europe.

  • [Avatar for C. Whewell]
    C. Whewell
    November 29, 2021 01:08 pm

    I think you have to be careful also in some instances, abandonment of a provisional could be viewed as a indicia of the inventor abandoning the Invention, when other similar indicia might exist, if the argument ever comes up.

  • [Avatar for David Sheldon]
    David Sheldon
    November 29, 2021 04:40 pm

    “Example: Provisional #1 is filed on January 5, 2021. Provisional #1 goes abandoned on January 5, 2022. Inventor decides not to file a non-provisional claiming the benefit of the filing date of Provisional #1. Provisional #2, which is identical to Provisional #1, is filed on January 4, 2022, to keep the application in patent pending status.”

    It is also worth noting that if you try to claim priority under the Paris Convention, a priority claim to Provisional #2 will be invalid under Article 4(C)(4) because Provisional #1 wasn’t abandoned yet.

  • [Avatar for Sankara Sastiri]
    Sankara Sastiri
    November 30, 2021 01:05 am

    Wondering if the patent’s 20-year life term starts from the date of the first Provisional-Specification(which is the first Priority date) or from the date from which the Non-provisional Specification corresponding to that Priority date is filed in the PTO?

  • [Avatar for Mark Summerfield]
    Mark Summerfield
    November 30, 2021 03:34 am

    Gene, there is a flaw in your first example that has the potential to be absolutely fatal to any subsequent filing outside the US attempting to claim priority from the refiled provisional.

    Article 4.C.(2) of the Paris Convention requires that a foreign priority claim be based on ‘the date of filing of the first application‘ in respect of the invention. The refiled provisional is not the first application, it is the second, so a claim to priority under the Paris Convention is invalid.

    An exception is provided in in Article 4.C.(4), permitting a subsequent application to be treated as the first application where ‘at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding‘.

    So if you wait until after the first provisional has expired you are OK. But if, as in your example, you file the first provisional on 5 January 2021 and refile on 4 January 2022, then you are not OK. On 4 January 2022 the first provisional is still live, and there are rights outstanding – namely, the rights to claim priority from the first provisional, in the US and elsewhere.

    One case in which this actually occurred at the EPO, due to an inadvertent failure by the UK attorney to withdraw a first provisional application prior to refiling was T1056/01: https://www.epo.org/law-practice/case-law-appeals/recent/t011056eu1.html

    This just reinforces your point: naively refiling a provisional without the benefit of professional advice is a dangerous action to take!

  • [Avatar for Pro Say]
    Pro Say
    November 30, 2021 11:55 am

    So, given the above comments and Gene’s article, the bottom line on provisionals for the large majority of inventors is this:

    While working with a great patent attorney or patent agent is best, if you are going it alone . . . beg, borrow, or steal (O.K., except the steal option) the funds necessary to file your non-provisional + the virtually giveaway $99 for Gene’s Invent + Patent System (which you ideally invested in prior to filing your provisional application).

    Plus, if you haven’t already done so, read all of the previous “how to patent” articles he links to above.

    Get this wrong, and your dream will likely turn into a nightmare.*

    *Sadly given today’s U.S. patent world (PTAB, CAFC, SCOTUS), even a great patent on a great invention . . . may still leave you empty handed.

  • [Avatar for Night Writer]
    Night Writer
    November 30, 2021 12:14 pm

    @10 Mark

    But you could file the PCT and not claim priority to the first provisional application as long as you didn’t claim priority to the second provisional application.

  • [Avatar for MaxDrei]
    MaxDrei
    December 1, 2021 06:10 am

    Night, I for one am not clear what you are saying at #12. When filing outside the USA, under the Paris Convention, US applicants naturally assume that their declaration of the priority of their US pro filing will always be effective. But often it isn’t, with fatal consequences for the acquisition of any enforceable rights outside the USA.

    As Mark clearly explains at #10, the top two reasons why the US priority fails is i) the earlier USPTO filing is an application for protection of an invention that is not exactly the “same” as that of the claim contended for outside the USA, and ii) the US pro filing relied upon was not the “first” application for protection.

    I guess that you are observing that, so long as you don’t claim Paris Convention priority from any earlier USPTO fuiling, it doesn’t matter how many US pro’s you file before you file foreign. If so, then I agree with you. But what sort of an answer to the inventor client is that: when filing foreign, don’t claim priority?

    In a First to File world, Paris Convention priority is usually of decisive importance. Witness events at the EPO, involving the (at least three) entities scrapping over priority for CRISPR-cas9 filings, all originally at the USPTO.

  • [Avatar for Night Writer]
    Night Writer
    December 1, 2021 01:11 pm

    @13 Max

    I agree with what you wrote. I was just pointing out another oddity to the situation.

  • [Avatar for MaxDrei]
    MaxDrei
    December 1, 2021 02:56 pm

    OK, Night. Good. Then where we might differ is in your designation of the situation as an “oddity”. From where I’m looking in, I don’t see anything odd about it.

    I suppose you are thinking about discrepancies between the US and the rest of the world which, to you, understandably present themselves as “oddities”. To me, the situation is not “odd”, just normal reality.

    Or have I simply overlooked an aspect of the situation?

  • [Avatar for Steve]
    Steve
    December 2, 2021 07:59 am

    The author makes the following statement, but I’m unclear what path this takes

    “Refiling a provisional is just a bad idea when you can, for a few hundred dollars more, keep hold of that earliest priority date and continue on the path to obtaining a patent.”

    What is the intent here of “For a few hundred dollars more”? I’m not following the solution, anyone else?

  • [Avatar for Anon]
    Anon
    December 2, 2021 10:56 am

    Steve,

    I have remained distant from this thread, but your post may have some light shown upon it IF one remembers my prior biggest ‘complaint’ with provisional applications:

    TOO many treat a provisional application as something that could (should?) be “quick and dirty” – such as “just throw the marketing slides together and file that.”

    Provisionals that are intended to be the ‘support’ for a later filed non-provisional SHOULD be as diligently crafted as would a non-provisional itself.

    IF that path were to be taken, then the filing of a non-provisional could be obtained for that “few hundred dollars more,” and all of the benefits of the provisional/non-provisional combo would be maintained.

    Unfortunately, the down side of “quick and dirty” (well, at least one of the down sides) is that an actual first legally meaningful patent writing may be necessary to file a viable non-provisional patent application, incurring substantial costs over and above that ‘few hundred dollars more.’

    If you are of the camp of NOT having a non-provisional level writing of a provisional application, then that “few hundred dollars more” comment may leave you befuddled.

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