If you have an invention and would like to pursue it with a utility patent application, you must first file for provisional patent protection.
Provisional patent applications are valid for 12 months and then automatically expire. There are ways to extend the life of a provisional application, but these come with significant risks and complications.
What Happens to an Expired Provisional Patent Application?
Once a provisional application expires, inventors forfeit all patent rights. This can be an issue for those wishing to disclose their invention prior to filing for non-provisional patent protection.
A provisional application can be used to extend the life of a patent and establish priority dates for multiple advances in an invention. However, refiling such an application poses many problems to the inventor, so should only be considered after carefully considering all potential hazards involved.
First, an expired provisional application loses all of its priority date. This means all prior art disclosed after the initial provisional patent application’s filing date will be considered prior art for patent purposes – an intimidating obstacle best tackled with professional assistance from a patent attorney.
Second, when a provisional application expires, it can be difficult to track who invented an invention. An inventor’s name can appear as either an individual or corporation in a provisional application, so it’s essential to determine who owns the rights to that invention at this stage.
Typically, the inventors of a provisional application are the company or individuals that filed it. If an inventor is an independent contractor or collaborator, they may be required to assign their rights to the entity sponsoring the provisional application.
Therefore, inventors’ names may appear as individuals in a provisional application but their identities may be unknown to other entities that own the invention. This could indicate that an inventor has not fully committed to their invention and thus isn’t in a position to make an informed decision about whether to file for patent protection for it.
Finally, when a provisional application expires without being followed up on, inventors will have forfeited their patent rights unless they file for a non-provisional patent. This can be an enormous blow to any inventor as companies often take advantage of inventors by dissuading them and taking ownership of their invention after they voluntarily forfeit those rights.
How Long Does a Utility Patent Last?
Utility patents are types of patents that cover any inventive process, machine, article of manufacture or composition of matter. They grant the patent owner exclusive rights to make, use or sell their invention within the U.S.
In general, utility patents last 20 years from their earliest effective non-provisional filing date. However, this can be extended by either the patent office or by the patent owner if they pay necessary maintenance fees (usually at intervals of 3 1/2, 7 1/2 and 11 1/2 years) to maintain it.
Before applying for a utility patent, you must first file a provisional patent application. This serves as the starting point for your official patent application paperwork that must be filed with the United States Patent and Trademark Office (USPTO).
After filing a provisional patent application, you must wait at least one year before filing a full non-provisional patent application for your invention. If not done within this time frame, your patent will expire 19 years from filing date of provisional patent application.
During this period, the USPTO will review your patent application and decide if it meets all necessary criteria for grant of a patent. They may decide that your invention is not patentable or grant you one if certain requirements are fulfilled.
Once the patent office affirms your invention is eligible for a patent, an examiner will review it and determine whether or not it meets new, non-obvious, and useful criteria. If they find your invention not patentable, you will receive notice and an opportunity to respond.
If the examiner determines your invention to be patentable, you will receive a certificate from the USPTO indicating its patent status. However, if they determine it was not patentable, you have an opportunity to appeal this decision before an internal board at the Patent Office.
What Happens to an Expired Design Patent Application?
Once a design patent application expires, the inventor no longer owns the rights to their invention. This means others can utilize and sell the design without permission from the patent holder. Infringers can be sued in federal courts if an inventor wishes to prevent them from doing so.
It is essential to know when a patent expires, in order to plan ahead and protect your invention. To start, search for your patent on either the United States Patent and Trademark Office (USPTO) or other third-party databases like Google Patents.
The second step in determining your patent’s expiration date is to look up its terminal disclaimer. You can locate this disclaimer in the File Wrapper of your patent image on USPTO’s public PAIR system.
Additionally, make sure all maintenance fees have been settled. Maintenance fees must be paid every 3.5 years, 7.5 years and 11.5 years from the date of issue; if not paid within this year-long window or during the 6 month grace period after due date, your patent will expire.
If a patent is still active but expired due to non-payment of maintenance fees, it can be revived. To do this, the holder must pay those fees and submit the correct form explaining why they weren’t paid. Once revived, that same inventor can refile another patent on that same invention.
When a patent’s validity is about to expire, it’s essential to check if you can renew it by paying additional fees. This is typically done for utility patents which last 20 years from the filing date of the earliest non-provisional application in its chain of parentage that forms its foundation.
Before your patent expires, it is wise to consult with a patent attorney about its validity. They can also inform you if there have been any additional improvements made to your invention that could be patented.
What Happens to an Expired Utility Patent Application?
Utility patent applications are intellectual property (IP) patents that protect an invention. These applications are issued by the United States Patent and Trademark Office. A successful utility patent application must include a comprehensive description of the invention.
When the USPTO reviews a patent application and finds it eligible for protection, they will issue it with an effective date that is twenty years from its earliest filing date. Typically, this date corresponds to the original non-provisional utility patent application; however, earlier international filings can also be accepted as patent eligibility dates.
According to your individual circumstances, you may be eligible for filing an application to extend the term of your patent. This is known as a “patent term adjustment,” and could be granted due to delays during prosecution.
If you fail to file an extension, your patent will expire on its statutory date – usually 20 years from the earliest effective filing date of your original non-provisional application; however, this can vary based on factors like patent term adjustments and maintenance fees.
Once your patent expires, you no longer possess the legal right to sue others for making, using or selling your invention. Furthermore, you no longer possess the rights to collect royalty payments from sales of your creation.
Although a patent that has expired does not prevent you from pursuing other IP rights such as copyrights, trademarks, trade secrets or state-level trademarks. It remains your responsibility to ensure that your invention does not infringe upon any of those other IP rights.
In some instances, inventors may struggle to cover the costs of maintaining their patent. They may decide to abandon a project that has proved unsuccessful or move on to other inventions.
Before discontinuing an invention that has been successful, always consult an attorney to be certain it is worth your time and energy to continue protecting it.
Inventors should prioritize getting a utility patent as an essential component of their business plan. This type of protection for your invention offers valuable advantages, such as growth in revenue and profits for the company.
Conclusion
The expiration of a provisional patent application does not mean the end of your pursuit to protect your invention. While it is true that the provisional application itself does not grant any enforceable rights, it serves as a crucial starting point in the patent process. By filing a provisional application, you establish an early priority date, buy yourself valuable time, and gain an opportunity to refine and further develop your invention. It is important to be proactive during the provisional application period, diligently working towards converting it into a non-provisional application within the one-year timeframe. Remember to consult with a qualified patent attorney or agent who can guide you through the process and help you maximize the chances of securing robust patent protection.
