Can You Refile a Provisional Patent Application?

The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.

Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

The Consequences of Refiling

To understand the consequences of refiling a provisional patent application one must remember that a provisional patent application becomes abandoned 12 months after the filing date. Yes, there is an additional two-month period that is available if there is a mistake made, but this does NOT mean you have 14 months before a provisional application goes abandoned. The rule is 12 + 2, where the +2 additional months is available to revive lost priority from an abandoned provisional. The cost to revive as publication is $1,050 for a small entity or $525 for a micro entity, and revival is only available if there is error or mistake, such as you mistakenly marked your calendar with a note that you had to file a nonprovisional on January 15 rather than January 5, that kind of mistake. So, it is best for everyone to still think of a provisional abandoning 12 months after filing, which will be true in all but the most unusual circumstances.

When a provisional application abandons, you lose the priority filing date that the provisional application establishes. If you refile a provisional patent application, you are establishing a new priority filing date. You are NOT entitled to capture the original provisional filing date. What this means is that anything and everything that has occurred after your first provisional filing date will be considered prior art. Furthermore, some things that occurred before your first provisional filing date that otherwise would not have been prior art will also now be prior art that will prevent a patent from issuing. Let’s go through an example to illustrate.

Example: Provisional #1 is filed on January 5, 2021. Provisional #1 goes abandoned on January 5, 2022. Inventor decides not to file a non-provisional claiming the benefit of the filing date of Provisional #1. Provisional #2, which is identical to Provisional #1, is filed on January 4, 2022, to keep the application in patent pending status.

First, it is worth specifically pointing out that you cannot claim priority in Provisional #2 to Provisional #1. If a provisional patent application is going to provide priority to another application, it must be used to establish priority within 12 months to either a non-provisional patent application or to an international patent application filed under the Patent Cooperation Treaty (PCT).

Second, as we parse the above example, the original priority filing date was January 5, 2021. If the priority filing date from Provisional #1 can be maintained, nothing from after January 5, 2021, can be prior art – no public use, no sales, no publications. Because Provisional #1 becomes abandoned, and no patent application is filed claiming the benefit of Provisional #1, the priority filing date of January 5, 2021, is lost. With the filing of Provisional #2, a new priority filing date is established as of January 4, 2022. Now, nothing from after January 4, 2022, can be prior art. So, you reset the prior art date and lose 12 months of priority, which may not seem like a lot, but which in many instances will be absolutely devastating.

In the United States, even though we have been a first inventor to file system since March 16, 2013, our system is really a hybrid first to file system. It is wise for everyone to interpret first to file as ‘file first’—this is the safest way to think about the law. However, U.S. patent law still retains a 12-month grace period, so it is possible for an inventor to remove their own disclosures as prior art. In other words, if an inventor were to demonstrate an invention at a trade show on February 10, 2021, that inventor would have until February 10, 2022, to file a patent application (i.e., 12 months after the demonstration).

This discussion of the grace period is important because most inventors are aware of its existence and frequently will disclose their invention in one way or another prior to filing a patent application, despite the best advice being not to disclose the invention to anyone who doesn’t have a legal obligation to keep the invention secret prior to filing even a provisional patent application. So, let’s say the inventor disclosed as above on February 10, 2021, and then, because of tremendous response at the trade show, decided to file a provisional patent application, which was accomplished on April 30, 2021. Then let’s say that as the deadline to file a non-provisional patent application approached the inventor lacks the funds, or feels they need more time for one reason or another, and instead of filing a non-provisional patent application on or before April 30, 2022, the inventor decides to refile a provisional patent application on April 30, 2022. Catastrophe!

As we parse what has happened in the previous paragraph, notice that the original priority filing date for Provisional #1 was April 30, 2021. The inventor was able to remove his or her own disclosure of the invention at the trade show as prior art because it occurred less than 12 months before the filing of Provisional #1 (i.e., the disclosure occurred on February 10, 2021). When Provisional #1 abandons the original priority date is lost and a new priority date of April 30, 2022, is obtained. The demonstration at the trade show is now more than 12 months before the new priority filing date of April 30, 2022, so the inventor’s own disclosure will forever prevent the inventor from obtaining a patent!

This is just one example of what can possibly go wrong. Because the loss of the priority date of Provisional #1 and the resetting of the priority date to one year later, there will be much more prior art of others that cannot be known. So, not only will the actions of the inventor possibly create an insurmountable hurdle to obtaining a patent, but the actions of others that cannot be known will present a hurdle to obtaining a patent. This is worth keeping in mind because if you talk with professional patent searchers, they will tell you that most of the best prior art is typically grouped in time about 18 months apart. So, resetting a priority date 12 months into the future is extremely problematic to say the least.

Often, if not nearly always, the decision to refile a provisional patent application is made due to lack of funds. As of publication, the filing fee for a provisional application for a small entity is $150, and $75 for a micro entity. The low cost of filing a provisional application is seductive, but the loss of the original priority date can be a disaster. So, what should you do?

In one instance, I talked an inventor who wanted to refile his provisional patent application into filing his provisional patent application as a non-provisional patent application. This provisional patent application was created with great care. In fact, I had drafted it for him personally, and with a lot of assistance from him, to come up with several dozen flowcharts explaining his software. We had always planned on going back and adding much more information at the time we filed the non-provisional patent application, but he was not yet making money from the invention, hadn’t licensed it, but didn’t want to give up yet. Sound familiar?

We wrote one claim and filed exactly what was filed as a provisional patent application as a non-provisional patent application. It was several years before the patent examiner picked up the application for examination, at which time the inventor did have money to proceed. He ultimately received a patent. This same story was repeated with another inventor in a very similar situation, where the provisional patent application I drafted was ultimately issued as a patent. Now, this is not what I would consider best practice, but if you do a good job on the provisional patent application it will be as detailed as a non-provisional at least with respect to everything you are in possession of as of the time of filing. Drawings are your best friend to make sure you are disclosing as much as possible, and then you write at least one paragraph (hopefully more) describing what is shown in each drawing. At least you can wind up with something.

As of publication, the fees due at filing (i.e., filing, search and examination fees) for a non-provisional patent application at the USPTO is $830 for a small entity, and $415 for a micro entity. And while $830 vs. $150 for a small entity or $415 vs. $75 is often not an insignificant amount for some independent inventors at a time when you are uncertain whether it is wise to cut and run or continue to pursue the commercialization and monetization activities, if there is hope on the horizon, keeping hold of that earliest priority date is extremely important from a patentability standpoint. And, if you wind up improving the original invention, you have the ability to file a continuation-in-part application, which is another non-provisional patent application that can add disclosure and claim priority going all the way back to the original provisional filing date.

For what it is worth, whenever a client requested that I refile a provisional even after explaining the potentially extreme negative consequences, I have required the client to sign a waiver explaining the risks and explaining that they understand this filing is being made against my advice. Refiling a provisional is just a bad idea when you can, for a few hundred dollars more, keep hold of that earliest priority date and continue on the path to obtaining a patent.

More Help for Inventors

Of course, as alluded to, a provisional is only good if it actually, fully and fairly describes the invention. We have numerous articles on IPWatchdog explaining the basics of writing an application and understanding how best to describe an invention. To learn how to fully and fairly describe an invention I recommend starting with the following articles:

• Identifying the Patentable Feature
• Understanding Obviousness
• When is an Invention Obvious?
• Working with Patent Drawings
• How to Describe an Invention in a Patent Application
• Defining the Full Glory of an Invention in a Patent Application

We literally have hundreds of articles for inventors here on IPWatchdog.com. For more, I suggest starting with Invention to Patent 101 — Everything You Need to Know to Get Started. For those who are considering proceeding without professional representation, I also encourage you to take a look at our do-it-yourself provisional patent application system – The Invent + Patent System™ , which has literally helped thousands of inventors create provisional patent applications step by step.

Image Source: Deposit Photos
Author: kikkerdirk
Image ID: 5073168