I am considering filing a Provisional Patent Application (PPA) on my own.

  1. If PPAs are never examined, is it correct to assume that I get a "patent pending" on whatever (since it is not published at the time of filing) immediately after I submit the pdf files and pay the fee?

  2. Suppose that I file at T=0, I disclose at T=+3 days, and I file for a non-provisional at T=+10 months, and somehow the PTO decides that the original PPA isn't valid enough to serve as a prior date, can I simply file another PPA or a new non-provisional immediately, given that I am still within one year of the disclosure, and that others haven't filed a similar application from T+3 days to t+10 months,

I am asking this after reading the following two paragraphs, from USPTO and Wikipdia:

Beware that an applicant who publicly discloses his or her invention (e.g., publishes, uses, sells, or otherwise makes available to the public) during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding nonprovisional application is filed. Such an applicant may also lose the right to ever patent the invention. See 35 U.S.C. §§102(a)(1) and (b)(1).

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases).[10] However, the original priority date of any expired provisional applications will be forfeited.

The rationale behind this question is somewhat a fail safe measure. That is, in the scenario that a PPA is invalidated, can I simply, within a few days, file a new application, thereby continuing to protect the invention even the initial PPA is wasted?

  • I'm not sure I understand all of the question. Your scenario is: file a PPA at day 0, disclose at day 3, and file a non-provisional application at day + 10 months. Later at 10 months + X, the USPTO says the PPA from day 3 didn't adequately cover the material. How do you think anything you do at time 10 months + X + 1 day might change the fact that you disclosed your invention prior to an adequate filing? You can't go back and change history. Also, provisional applications are not found "invalid". They are found to lack support for claims you end up going after in a regular application.
    – George White
    Aug 16, 2014 at 5:06
  • again, this comes from my stubborn misunderstanding that somehow a PPA will be "upgraded" to a regular application. but from the perspective of patantability, if in T+10months it proves that I am unable to use the PPA as a prior date, I can still file a new regular application, given that it is still within one year of my disclosure, correct?
    – lukzx591
    Aug 16, 2014 at 14:17

1 Answer 1

  1. Yes - you can refer to the subject matter covered in a filed provisional application patent pending. The fee actually doesn't need to be paid on that day for it to count as the filing date - you get a couple of months to get the $$ in before the application will go abandoned.

  2. This may help you see the answer to your question: (a) If a disclosure (by you) is made and a year goes by without any kind of an application being filed by you, then you are bared from patenting the disclosed material. Period. (b) Unless a non-provisonal application is filed within a year of a provisional application being filed that points back to the provisional, it is as if the provisional was never filed.(c) No one-to-one correspondence between provisional and non-provisonal applications is required or assumed. You can file a provisional application with constant or changing content every month for N months and then file one or more non-provisonals that claim the benefit of any relevant provisional that is less than a year old that day.

  • 2c is most excellent! like for most things the face value is easy to get but the idea is difficult, but I think I now understand what a PPA is about now, I will buckle down and start writing the PPA today, thanks
    – lukzx591
    Aug 17, 2014 at 13:45
  • @White without the redundancy of making another post, can you help me clarify a bit further on patentability. Say I got an idea, I find it cumbersome to use the smartphone's small keypad, and my idea is to make an app that automatically bluetooth the cellphone to any nearly PC keyboard. If I fully describe how the resulting app should function, how various parts in this scheme should interact, provided that no one has patented it, is such a hypothesized but in theory functional app patentable, without describing the technology that enables it (how bytes are stored and transmitted etc.)
    – lukzx591
    Aug 17, 2014 at 15:59
  • One common misconception is seen in your "provided that no one has patented it". To get a patent your claimed subject matter needs to be new, not just unpainted. A magazine article, a rejected patent application, a comic book, a posting at half-baked.com can all be used to show your claimed material is not new. The answer to your question is "it depends". The application needs to enable someone skilled in the art to make and use the invention. Well known things do not have to be presented in detail. But if your invention was a sky hook just explaining the user interface wouldn't do it.
    – George White
    Aug 17, 2014 at 16:43
  • very thought provoking! 1st, if it has to be new, then why bother getting a patent in the first place? all I need to do is to post my idea on even the least popular online forum and save the link to use as evidence. 2nd, how about "first to file", doesn't it imply I get the patent so long as I am the first to file? 3rd, if a patent search isn't enough to assure novelty, how on earth could I ever know my invention is new?
    – lukzx591
    Aug 17, 2014 at 17:23
  • the second part of the your comment is most illuminating and entertaining, put it differently, I cannot patent a death star that can destroy a thousand planets, which will surely benefit greatly the empire, without specifying how it is to be built. conversely, as in the example in Patent It Yourself, if I were to patent a new method of inserting texts, I won't have to give the detail since someone "familiar with the art" can follow the instruction and do it, and everything else is perhaps in the grey area in between, is this understanding correct?
    – lukzx591
    Aug 17, 2014 at 17:28

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