What can I do if I missed the 12-month provisional patent application deadline?

The conventional wisdom among patent attorneys is that if you don't convert a provisional patent application over to a non-provisional patent application within 12-months of filing the provisional application then you basically have 3 options.

Option 1 - Refile The Provisional Patent Application

If your provisional patent application expired or was abandoned, it is as if the application was never filed. Because it is as if you never filed the application, you can file the same or updated application again. You will again be patent pending and have 1 year within which to convert the provisional to a non-provisional patent application.

The major drawback to this option is that you lose the original filing date (i.e. the date of invention or priority date). This means that if someone else filed a patent application after your original patent application but before you refile the patent application, they now predate your patent application. Additionally, if you or someone else public disclosed the invention at any point before you refile, that now acts as prior art against you.

Option 2 - File A Non-Provisional Patent Application

In option 1, when you refile the provisional patent application you restart the clock for another 12 months before you have to convert the provisional patent application to a non-provisional patent application. Alternatively, you can directly move to file a non-provisional patent application that doesn't link back to the original provisional patent application. Once you file the non-provisional patent application you will again be patent pending, but the same drawbacks apply as with option 1.

Option 3 - Do Nothing

There may have been a reason why you didn't convert the provisional patent application to a non-provisional patent application. If so, there is no obligation or requirement to proceed forward with your patent application. If it no longer makes sense to seek patent protection or you don't have the funds, then just proceed forward with your business without patent protection.

"Grace Period" Revival

Until 2013, if you missed the 12-month deadline for the provisional to non-provisional conversion deadline, there weren't any other options. Choose options 1, 2, or 3 and move forward. As of 2013 here is a 4th potential option, "to restore priority or benefit rights for patent applications". This option is relative new and unused. In fact, the majority of patent attorneys have never heard of this option and if they have they have never used it.

This option basically provides a 2-month grace period after the original 12-month deadline. Now, there are a few caveats to this option:

1) This option is not free. This option entails the preparation and filing of an appeal where you claim the missing of the deadline was unintentional. This requires attorney time to prepare the appeal and a fee to file the appeal.

2) You must file the non-provisional patent application before or at the same time that you file the appeal.

3) Because the option is rarely used, it is largely untested and uncertain the likelihood of a successful appeal

With that in mind, if the original filing deadline is important, this option does provide an alternative option to the convention options if you miss the provisional patent deadline.

Miller IP Law is a firm that focuses on small businesses, startups, and entrepreneurs/solopreneurs. We’re easy to use. We offer affordable pricing that’s transparent and flat-rate. We focus on the little guys who actually need our help. If you’d like an attorney on your team, simply schedule a Zoom call, and we’ll take care of the rest.

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