Many inventors find themselves asking: How do I move from a provisional patent application to a non-provisional one? It’s a common concern, and as attorneys, we often address the steps, documents, and strategy behind this conversion.
When you file a provisional application, you’re essentially planting a flag in the patent system—it secures your place in line. From that moment, a 12-month window begins to run. This period allows you to refine your invention, seek funding, or prepare the comprehensive non-provisional application. Unlike the provisional, a non-provisional sets forth formal claims, potentially offering stronger, enforceable rights. Filing provisionally first can also save money, since non-provisional filings come with higher fees.
But remember: a provisional by itself does not grant rights. It merely preserves your filing date. To keep those rights alive, you must follow up with a non-provisional application within a year and meet the legal standards of patentability.
To take advantage of your provisional’s priority date, you must file a non-provisional within 12 months. In doing so, the new application must specifically reference the earlier filing. A typical statement might read: “This application claims priority to Provisional Application No. XX/XXX,XXX, the disclosure of which is incorporated herein by reference.”
The examiner then reviews both applications side by side. If the descriptions match, the earlier filing date attaches to your non-provisional for that subject matter.
There is also the option to directly convert a provisional into a non-provisional. While possible, this path rarely benefits the applicant. The reason: the original provisional filing date is lost, and the patent term begins only from the conversion date.
Consider this timeline: A patent lasts 20 years from the non-provisional filing date. File on January 1, 2022, and the patent runs until January 1, 2042. If you filed a provisional on January 1, 2021, and then a non-provisional on January 1, 2022, claiming priority, the protection still runs to 2042. But if you convert the provisional, the term ends in 2041—effectively shortening your rights.
So why would anyone choose conversion? One common reason is public disclosure. Imagine you revealed your invention on June 1, 2021. You then filed a provisional on January 1, 2022. Normally, you’d need to file a non-provisional by June 1, 2022—within a year of disclosure. If you miss that date, conversion may be your only option, as it allows your provisional’s filing date to carry forward.
Once a provisional is filed, there is usually no reason to rush. Whether you file a non-provisional the next day or 11 months later, your priority rights are identical. In fact, waiting can be advantageous. A utility patent lasts 20 years from the non-provisional filing date, so delaying until the end of the 12-month period effectively extends your patent coverage by that extra year.
But beware: provisionals are never published or examined. They remain confidential. This means they cannot serve as prior art against other applicants. If someone else files a non-provisional while your provisional sits in secrecy, their application could be examined and even granted, regardless of your earlier filing. This risk underscores why strategic advice is crucial.
Bottom Line:
Provisional applications are useful tools to secure a date while you prepare. But the real protection only comes with the non-provisional filing. The choice between filing anew or converting has long-term consequences, both for the strength and the lifespan of your patent rights.
.avif)
