United States Provisional Patent Applications And Their Dangers

Filing a patent application can be an expensive undertaking and it is important for your patent applications to be prepared properly. Filing a US provisional application can provide you with a priority date which can be very important during prosecution of a patent application and later on in the event of infringement and validity proceedings. There are many reasons why a person might choose to file a provisional application before filing a regular application in Canada and/or the United States. These include, but are not limited to:

A provisional application is cheaper to file than either a regular Canadian or United States patent application. A provisional application provides you with some protection while you “shop” around your idea to potential interested parties

It can give you additional time to see if your idea is viable and potentially create a prototype. You never know, while you prepare your prototype, your idea may evolve and these changes can be disclosed in a regular patent application that claims priority from your provisional application

It is important, however, to understand the potential dangers associated with a provisional application. A provisional application only provides protection for one year and after that year is automatically abandoned. It is not published and never undergoes an examination. That means that you must file regular patent applications before the expiry of that year. But, another danger related to the filing of applications in Canada is also present.

The best way to explain this is to provide an example. In Canada and the United States, you have one year from the first public disclosure of your invention to file a patent application, let’s say on October 8, 2014, you took your invention to a trade show and showed it off. This starts a clock for filing your application in Canada and the United States and will also bar you from registering a patent in many other countries who do not permit disclosure prior to filing a patent application. So, you now have until October 8, 2015, to file your Canadian and US patents. You decide to file a US provisional application on June 3, 2015, which effectively stops the clock in the US. Your provisional application is now good until June 3, 2016, at which point you will have to file a regular application in the US or lose your rights to patent your invention. But what about Canada? Unfortunately, filing a US provisional patent application after disclosing your invention does not stop the clock in Canada, so despite the fact that you now have until June 3, 2016, to file your US application, your Canadian application is still due October 8, 2015, For anyone who is not familiar with the patent system, this is an easy mistake to make and can result in the loss of patent rights in Canada.

Lorraine Prowse – Patent and Trademark Agent 888 725 9930

Information on this website is for informational purposes only. It is not, and should not be taken as, legal advice. You should not rely on or take any action based upon this information. This website should not be used as a substitute for professional legal advice. Prowse Chowne LLP professionals would be pleased to advise you.