A provisional patent application automatically goes abandoned after one year from the date of filing. Here are a few things to consider before converting a provisional patent application to the full utility patent application.
You have one (1) year from the filing date of the provisional application to convert a provisional patent application. You can file the full utility patent application at any time before this. But the provisional patent application provides Patent Pending or “Pat. Pend.” status for your invention for the full year. So there is no rush to file the full utility patent application before the end of the one year anniversary. That is, there is not a legal reason to file early. Of course, you may have a business reason for doing so.
Learn more about Should I file a Provisional Patent Application
If you have made changes/improvements, you may even want to consider filing a follow-on provisional patent application. You can then combine both of those into a single full utility patent application. You may want to do this closer to the deadline (near the end of the year).
Once you file a full utility application, you cannot make any changes without filing another full utility patent application. This can get expensive. So if you think you may make any changes in the near term, you would be better to hold off. That way when you file the full utility application you can incorporate those changes into the full utility patent application.
Keep in mind too, that the patent, if granted, is valid for 20 years from the date of filing the full utility application. Not the filing date of the provisional patent application. The 1-year patent pending period of the provisional does not count against this 20 year term. So again, you may want to hold off before converting the provisional patent application.
I’m not trying to convince you not to convert a provisional patent application early. I just want to make sure you are able to make an informed decision on the timing.
What should I consider when it’s time to file the utility patent application?
Whenever you are ready to proceed to the full utility application, be sure to include any updates. You can also add more technical detail that you want to include. You will want to be sure to include as much detail as possible for the broadest protection. For example, even if you are not planning to implement features, you may want to consider including those in your patent application. That way you may be able to block a competitor from offering these features. Or you may be able to license those features of your invention to a competitor someday.
Be sure to talk to your patent attorney. A patent attorney can help answer any questions you might have about when to convert a provisional patent application.
