In the United States, a patent application must be filed within one year of the first public use or offer for sale of an invention. The filing of a provisional patent application can be used to satisfy this requirement.

In most foreign countries, absolute novelty is required, which means an invention must not have been disclosed to the public prior to the filing of the first patent application for the invention. The test is sometimes phrased, “Has the knowledge of the invention been placed in the hands of the public?” Disclosures made on a confidential basis do not trigger this bar. The filing of a U.S. provisional patent application preserves foreign filing rights in all Paris Convention countries and disclosures made after the filing will not adversely affect the ability to file foreign patent applications in those countries. Accordingly, the timely filing of a U.S. provisional patent application preserves U.S. and foreign patent filing rights.

The filing of a provisional patent application enables the applicant to claim patent pending status on its products. The provisional patent application is maintained confidential in the U.S. Patent and Trademark Office. In order to retain the priority benefit of the provisional patent application, a regular U.S. patent application and any foreign counterpart applications must be filed within one year of the provisional patent application and must claim priority based on the provisional patent application. The foreign patent application may include national, regional (e.g., European), or Patent Cooperation Treaty (PCT) patent applications.

If the applicant decides to file foreign patent applications, the patent application will be published 18 months from the filing date of the provisional. If the applicant decides not to file any foreign patent applications, the application can be maintained confidential during its entire pendency in the U.S. Patent and Trademark Office and will not become public until the patent is granted.

Accordingly, the information contained in the provisional patent application is a secret that could be maintained confidential for at least 18 months and maybe longer.

No enforceable patent rights will arise until the patents are granted. The average pendency in the United States is approximately 22 months from the filing date of the regular application, and foreign applications can take much longer. With a PCT application, the filing of foreign patent applications in specific countries or regions can be delayed by the applicant up to 30 months (in some cases longer) from the filing date of the provisional patent application.

In conclusion, disclosures of the invention made after the filing date of the provisional patent application will not affect the ability to file regular U.S. or foreign patent applications in Paris Convention countries. The decision regarding the timing and content of disclosures to be made by the applicant after the filing of the provisional patent application should be made based on how long applications can be kept secret and how long it will take to obtain patent rights. Of course the decision will also be based on nonpatent business factors that are normally associated with putting a new product on the market.

David L. Principe’s practice involves a wide range of intellectual property issues. He regularly counsels clients on how to develop a portfolio of intellectual property and how to best avoid infringement of another company’s intellectual property rights. He can be reached at dprincip@hodgsonruss.com.