Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[slsaw]

I have a product that has been "on sale," as of June 1, 2010 (less than one year).  If I want to ultimately obtain a US patent for it, do I have to file the full Non-Provisional patent application before June 1, 2011?  Or am I able to just file a Provisional Patent before June 1, 2011?  If I file a Provisional Patent, do I have one year from the date I file the Provisional Patent to apply for a full Non-Provisional Patent?  Or do I have to file for the full Non-Provisional Patent by June 1, 2011 regardless of whether I file a Provisional Patent between now and then?

My preference is to file a Provisional Patent before June 1, 2011, and then have a full year from that date to file for a full Non-Provisional Patent.  However, I want to make sure that this will be allowed. 

According to the "Provisional Application for Patent" document issued by the USPTO, it says,

"Provisional Application for Patent Filing Date Requirements.  It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention." - http://www.uspto.gov/web/offices/pac/ProvApp.pdf

The code 35 U.S.C. 102 says,

"35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.  A person shall be entitled to a patent unless -(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or"

[MLM]

The term "on sale" has a particular legal meaning in this context, but I will presume that your product has in fact been "on sale" since June, and that there were no prior public disclosures. Thus you will have one year from June 1, 2010, to file either a provisional or non-provisional in the U.S. If you file a provisional, there is one year to file a non-provisional claiming the benefit of the provisional.

The risk of filing a provisional first and then waiting to file a non-provisional later is that if your invention is not adequately described in the provisional application, you will lose any right to a patent in an application filed after June 1, 2011, at least with respect to the aspects of the invention that were not sufficiently described in the provisional. This is mentioned several times in the USPTO document that you linked to, and is very important:

"The written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later-filed non-provisional application in order for the later-filed non-provisional application to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed non-provisional application."

Many people do not recommend provisional applications because, unless they are prepared as thoroughly as a non-provisional application should be prepared, they do not offer much, if any, value, and perhaps also a false sense of security.

[MYK]

First, just because this is actually really important -- you don't "get" a "non-provisional patent", you FILE a non-provisional patent APPLICATION.  Anywhere from one to five years from now, your might (or might not) get an issued patent.

From the very limited information you've given here, yes, you are still able to file an application.  There are other statutory bars, though (offers to sell, public disclosure).  Also, you may have already lost your rights to patents in other countries, many of which require what is called "absolute novelty" or which have much shorter grace periods.

For example, I was told yesterday (information deemed reliable but not guaranteed) that Japan has a six-month grace period.

The sooner you file, the more rights you will preserve.  The longer you wait, the more countries will slip from your grasp.  (Sorry, channeled Star Wars there for a sec.)