You can “refile” a provisional patent application in the United States, although doing so is not encouraged due to the loss of your priority date for the original provisional application and the risk of losing part (or all) of your patent rights. While you cannot prolong a provisional patent application, you can file a second provisional patent application instead of a non-provisional application, but this is fraught with danger (discussed below). Because your second provisional patent application cannot claim priority to your first provisional patent application’s filing date, you risk losing some or all of your patent rights to a third party who files a patent application before your second provisional filing date under the new United States first to file system.
If your provisional patent application in the United States is set to expire, you have three options:
- Option 1: Don’t File Anything. Allow your first provisional application to expire and don’t file any additional patent applications.
- Option 2: File 2nd Provisional (Not Recommended). Allow your first provisional application to expire and only file a second provisional patent application with the understanding that you lose your priority filing date for the first provisional patent application.
- Option 3: File Non-Provisional (Recommended). File a non-provisional patent application that claims priority to the first provisional patent application’s filing date.
The option you select now may influence whether or not you acquire a patent to protect your innovation in the future, as well as the value of any awarded patent. If you plan to file a non-provisional patent application in the United States, you should contact your patent attorney as soon as possible and no later than three weeks before the expiry deadline to give them enough time to draught the non-provisional patent application.
Resubmit a provisional patent application
You can’t refile your provisional patent application if you publicly revealed your invention more than a year before the refiled provisional patent application’s actual filing date. The reason you can’t refile is that your second provisional patent application was filed more than one year after your initial public disclosure, which is illegal in the United States. An example of when you couldn’t refile a provisional patent application is as follows:
- 1/1/09: You publicly disclose your invention on a website or a trade show.
- 2/1/09: You file the original provisional patent application.
- 1/7/10: You decide to refile a provisional patent application instead of filing a non-provisional patent application.
- 2/2/10: Original provisional patent application is expired (the last day to claim priority with a non-provisional application was 2/1/10).
It makes no difference if you wish to file the second provisional application before the first provisional patent application expires. You must submit a non-provisional patent application claiming priority to your January 1, 2009, initial public disclosure since you publicly revealed your invention more than one year before being permitted to file a second provisional patent application. It’s worth noting that the one-year deadline for filing a non-provisional patent application, which is February 1, 2010, cannot be extended.