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My university applied for a provisional patent for my work. The provisional patent will expire in 2 months and the university has shown no interest in filing a formal patent out of it. What are my options here? Can I file a patent on my own before or after the expiration of the provisional patent?

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  • There are two issues - the mechanics of filing and the rights you do or do not have to the invention. Have you asked the university about your rights or researched it in any university policy document?
    – George White ♦
    May 3 at 22:06
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    @GeorgeWhite Comment is exactly right. Ask your university if you can take ownership of the invention. Then you should be able to pursue a non-provisional application. Two months is not much time to draft a non-provisional application.
    – Eric S ♦
    May 4 at 1:30
  • So, if I have the right to file the patent on my own, do I have to do it before the provisional patent expires?
    – Pulsar
    May 4 at 21:54
  • You can file after the provisional expires, but you could lose the early priority date.
    – Eric S ♦
    May 5 at 3:08
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    If you get the right to take over the process, ask your attorney or agent about getting the provisional assigned to you.
    – George White ♦
    May 6 at 14:42

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I'll summarize what was communicated in comments. Whether or not you can take ownership of the invention is based on your contractual relationship with your university. You should ask the university if they will allow you to take ownership of the invention. If they allow this, then you should be able to file a non-provisional patent application for your invention since you are the inventor.

Please be advised that obtaining a patent is a complex and not inexpensive process. The decision to pursue a patent should be an economic one. You should try to evaluate whether or not you can, at the very least, make enough money from the invention to cover the patenting process.

You have a limited time to file if you want to maintain the priority date established by the provisional application. If you miss that date, you open a window of opportunity for someone else to file a similar application. If you do decide to file a non-provisional application, I highly recommend hiring an actual patent attorney or agent to do so. In my experience, you are much more likely to get an effective patent that way. I'd like to point out that I am not a lawyer myself so this isn't legal advice.

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  • I recommend getting help. It doesn't have to be brutally expensive, and the costs are more about getting the help to get it right. The patent itself is a lot less expensive. It is easy to get it wrong, and then you have a patent that cost money to get but doesn't offer real protections, or has some gaping vulnerabilities that you do not understand or even know about.
    – EngrStudent
    Jun 8 at 17:50
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    @EngrStudent If you’re directing your comment to the original questioner, the best way is to type the @ symbol and the questioner’s username with no space.
    – Eric S ♦
    Jun 9 at 0:24

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