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(Message started by: rgbonk on May 23rd, 2006, 8:24pm)

Title: Second Provisional Patent Application
Post by rgbonk on May 23rd, 2006, 8:24pm
About mid December 2005 I filed and was granted a provisional patent application.  I have not made my invention public.  I have presented my invention twice to very reputable companies and under the protections afforded me by a very complete NDA.  I want the cost of both the utility patent and foreigh patents to be borne by whom ever I license my invention to.  Should I not locate the right entity to license my product to before expiration of my current PPA, can I refile another PPA, with product enhancements included, to give me another year to conduct my search?  (I am quite confident that my product is patentable)  Please help.  Thanks, rgbonk  

Title: Re: Second Provisional Patent Application
Post by Wiscagent on May 23rd, 2006, 9:28pm
Yes you can file a 2nd PPA on the same or similar subject matter.  BUT your 1st PPA expires after 1 year and if you don't file a regular application before then, the 1st PPA becomes worthless.

To clarify, here's a hypothetical example.
-  You filed your PPA on Dec 15, 2005 discussing invention X, and did NOT follow up with a regular patent application.
-  On Nov 15, 2006 I file a regular patent application on related subject matter.  You have no way of knowing about my patent application.
-  On Dec 14, 2006 you file a second PPA discussing invention X and some new matter.

Because your first PPA expired on Dec 15, 2006 it can not be used as prior art against my patent application.

Also, if you subsequently file a regular application, using your second PPA as priority, you can not claim priority back to your first (expired) PPA.  Once the first PPA expired, it was gone, and of no further help to you.

Filing a second PPA in no way extends the life of the first one.

Richard

Title: Re: Second Provisional Patent Application
Post by JimIvey on May 24th, 2006, 11:58am
This may seem a bit nit-picky, but there's an important nuance in the original post that I think should be addressed.  No one is ever "granted" a provisional patent application.  The use of the word "granted" suggests some sort of conveyance of rights by the USPTO.  No provisional application results in the conveyance of any rights whatsoever until a real patent application claims the benefit of the PPA's filing date and then is issued (or "granted") as a US patent.

People seem to be fond of saying they've filed their PPA and so they're "protected".  The kind of "protection" offered by the mere filing of a provisional application is extremely narrow and limited and specific.  In fact, the protection offered, if any, is very much provisional itself in that you must take further steps to obtain any benefit whatsoever from the filing of the provisional application.

Regards.

Title: Re: Second Provisional Patent Application
Post by jdg on Sep 12th, 2006, 8:33am
Thanks for clarifying that nuance.  I find myself in a very similar situation to rgbonk above.  I understand that if I file a PPA in December '05 and do not convert it to a patent application by December '06 I lose the ability to claim protection as of December '05.  My question relates to future protection, not past: If I refile either (a) the exact same PPA or (b) the exact same PPA with a few improvements in December '06 or later, do I get another year of protection starting on the day I file?  Is there any limit to how many times I can re-file a PPA and get another new year of protection?

Thanks!

Title: Re: Second Provisional Patent Application
Post by Wiscagent on Sep 12th, 2006, 12:11pm
“If I file [another provisional application] in December '06 or later, do I get another year of protection starting on the day I file?”

Yes.  But see below.

“Is there any limit to how many times I can re-file a PPA and get another new year of protection?”

No.  But see below.

Keep in mind the nature of the “protection” that a provisional application provides.  Essentially the provisional application reserves a priority date if you file a regular application within one year of the provisional application.

Suppose (for some bizarre reason) you filed an identical provisional application each and every day from January 1, 2005 until December 31, 2005.  Then on January 2, 2006 you finally filed a regular application for the same invention.

I filed a regular patent application for the same subject matter on January 1, 2005.  I would have the earlier priority date because the last provisional application that was still “alive” when you filed your regular application was dated January 2, 2005.  So while you can file a rolling series of provisional applications, that does not extend the one-year limit to file a regular application.

Title: Re: Second Provisional Patent Application
Post by JimIvey on Sep 12th, 2006, 1:43pm
I would add that the thing that limits how late you can file your patent application (real or merely provisional) is prior art -- public printed descriptions of your invention, public uses of your invention, offers to sell or sales of your invention, etc.  And, remember that "your invention" means anything you hope to cover with your patent.  So, acts by others certainly qualify.  The longer you wait to file, the more you risk failure to get any protection at all.

And, if you know you sold some instances of your invention back in Nov '05, missing the Dec '06 filing would be fatal (your sales would predate your filing date by more than one year.  If you're at all unsure of the sufficiency of your provisional application (under the standards of sufficiency applied to real applications), I'd suggest filing your real application before the Nov '06 first anniversary of your first sale, so the sufficiency of your provisional application never comes up under US law.

Regards.



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