Sometimes a topic is important enough to revisit after a few years. This one reexamines the frequent question of how to “extend” a provisional patent application beyond its natural 12-month life.
My readers all know that the smart start for a small inventor or a new company with an invention to protect is a Provisional patent application. For a low flat fee of $1000, and with my personal guidance and coaching, we earn First-to-File “Patent Pending” status by filing an inventor-created document that I review and verify can provide a foundation for future legal protection. The “bad news” is that the inventor gets to do most of the work. But, the good news is that we take care of all the fees, formatting and filing, and the entire $1000 is credited toward the full patent application.
That provisional application buys the inventor twelve months in which to test the invention, verify the market, maybe obtain regulatory approval, and to secure the funding to pay for the substantial investment in the full patent application, which must be filed before the twelve months runs out.
Which is all well and good when the invention is already generating big profits, or when it’s a clear flop. But sometimes the 12-month deadline rolls around and my client isn’t quite ready to pull the trigger.
Imagine getting on a ship for a long voyage, knowing that it will sink in 12 months. That’s a Provisional Patent Application. You board the ship knowing that you’ll either need to find a port or to connect with a new ship before 12 months. That new ship you need is the full patent application. But what if the 12-month deadline has arrived and the first ship is about to sink, but the rescue ship is nowhere in sight (maybe because you don’t have the funds for the full patent application)? What’s the key to your short term survival as your ship sinks beneath you?
The rescue ship is not far away, and you know you’ll survive in the lifeboat until it arrives. Your patent rights will survive if there is some way to bridge the gap between the expiration of your Provisional Patent Application and the time you’re ready to invest in the full patent application.
Here’s what the “lifeboat” is not: It’s not another Provisional filing. Provisionals are great, but they “die” after 12 months unless a NON-provisional is filed to carry the original filing date as the First-to-File date. A new provisional simply can’t “extend” a provisional.
Now, if the invention were still secret or hadn’t been on the market for long, then we could let the first provisional go, accept the small risk that there was a competing patent filing since then, and file a new provisional to buy twelve more months. But often that isn’t a legal option because the early provisional filing date is needed to make sure that the patent application is filed within a year of the invention first being offered for sale.
So if a full patent application is the only thing that can “rescue” the First-to-File patent rights before the 12 months is up, but full patent applications are a big investment due to all the attorney time required, how can we rescue those rights?
It recently occurred to me that that the legal requirements of a full patent application were far lower than my own professional quality standards. The U.S. Patent and Trademark Office doesn’t require properly formatted drawings or text drafted with proper legalese, nor even a savvy strategy for protecting the invention. All they require is at least one claim (claims are those numbered paragraphs at the end of the patent that define the scope of protection, hopefully as broad as possible, but not so broad that they encompass preexisting technology).
I finally realized that anything that met the standards for a provisional application – plus one token claim – would be good enough to “extend” the provisional. It was like I found a loophole in the law!
I would have to draft a claim that would never be expected to be examined, or granted, and might be as simple as: “A firearm as shown” or “A firearm having a trigger mechanism with a safety element preventing operation while the firearm is in a holster.”
To serve its purpose, and actual lifeboat doesn’t need to have cruise ship luxuries like private cabins, swimming pools, and midnight chocolate buffets. And a “Lifeboat Patent Application” needs only to meet the minimal legal requirements that are already met by my own professional standards for the provisional applications that we file all the time – plus one minimal claim – and not the structure and strategy needed for the full patent application.
Presently, we are offering this “Lifeboat” service with the same $1000 flat fee as for Provisional filings, with the only differences that the fee does not credit forward, and the $730 U.S. Patent and Trademark Office filing fees are not included. It’s still an investment, but only a fraction of the cost of the full patent application.
Here’s one bonus with a Lifeboat patent application: It can be an updated and improved version of the original Provisional – as if it’s an updated provisional. The original might have been filed with sketches, or snapshots of a crude prototype, and now you can include your updated CAD drawings that show more details. You can update the write-up with everything you’ve learned in the past year, all the improvements and upgrades. You can even add new features and inventions! Granted, this will be like the Provisional in that you’ll still be doing most of the work, but I’ll review everything to make sure it’s legally suitable, and will let you know when I think another drawing view or paragraph of explanation is needed to properly convey your invention, just as with the Provisional.
So we’ve been riding in that “Lifeboat” we filed just in time, and after a while you’ve resolved the uncertainties and are ready to invest in the full patent application. It will still take a month or two for us to draft and file that, but when we do we’ll include a complete strategy and set of claims, and all the illustrations and descriptions to support them. We can include all the updates we want, and even new aspects of the invention. It will be like just any other full patent application.
When a patent is eventually granted, it will probably have a number of different claims covering the invention in different ways. Any claims that include only concepts from the original provisional will be given a First-to-File date going all the way back to that filing. Claims covering concepts that were newly added in the Lifeboat application will get First-to-File protection back to that filing. And claims with concepts that were first disclosed in the full patent application will get protection back to that filing date.
One hypothetical worry with a Lifeboat application might be whether it’s as good as the full patent application I would eventually be drafting. It’s not. But if it shows all the details of the invention just like the provisional did, it’s just as good at preserving the early First-to-File date against competing patent applications. If the Provisional was good enough, then the Lifeboat’s good enough.
But there’s one important risk that we try to avoid: filing the full patent application more than one year after the invention is first offered for sale or publicly used (or anything that might be viewed as commercial or public). We might be OK, but there’s a real risk that the Provisional and Lifeboat lack some detail that could be important to an innovative protection strategy I might come up with only when working on the full patent application. For example, I might realize that disclosing and protecting the manufacturing method or certain other details like a range of dimensions could support a protection strategy that strengthened the patent or increased its value. But if it’s more than a year after the invention was released, it’s too late to add in that kind of detail. In many or most cases the provisional will be good enough, but sometimes waiting to invest in the full patent application can risk the quality of protection. If the inventor can afford to pursue the full application within a year of product release, they definitely should.
The Lifeboat patent application can stay afloat for essentially an unlimited time, deferring the investment in the full patent application. But remember the risk of delaying more than one year beyond product release. There’s no legal reason we can’t keep the Lifeboat afloat even for years, but there will be some ongoing costs as rejections are received, we file cursory responses, and then we eventually need to file requests to continue the examination along with a new filing fee. These add up to a couple thousand dollars a year and defer a larger investment in the full patent application.
Often the first thing we hear some months after filing a Lifeboat is that the drawings don’t meet U.S. Patent and Trademark Office requirements. We expected that because you haven’t yet paid our draftsman to create formal drawings. The whole point of the Lifeboat strategy is to put off your expenses as long as possible without sacrificing rights. This step could be expensive, if there are many drawings, so to avoid a big draftsman bill we can employ some tricks to pull many drawings from the application to satisfy the folks who have to approve the drawing format. Later, we can add them back in when we are ready to make the investment in the full patent application based on the actual drawing views that are necessary in my legal opinion.
A lifeboat might not be your ideal way to travel, but when you need one it’s indispensable. And even if you might never need one, it can give peace of mind to know that a lifeboat is there for you. A Lifeboat patent application is an effective way to avoid entirely losing patent rights when your business isn’t quite ready to invest in legal fees on a timetable dictated by patent laws. You can keep your rights alive as long as needed before deciding whether to make the investment in full patent protection.
Each case is different, and I’ll be happy to find a strategy that best suits your needs. The important thing to take away from this article isn’t so much to know exactly what to do, but instead to know what is possible so we can find the best path for your business.