Provisional Patent Rights

Provisional patent rights help protect inventors in cases where another person sold, copied, or marketed an item between the inventor's filing for a patent and the issuance of the patent.

What Are Provisional Patent Rights?

When an inventor gets a patent on an invention, it excludes others from creating, selling, or using that device without the inventor's permission. Provisional rights are in force between the date of the patent application and the actual granting of the patent.

Under provisional rights, inventors are allowed royalties from the "copier," the term for anyone else who created, used, sold, or marketed the patent pending item as described in the patent application between the time the application was published and the time the patent is granted.

Requirements for Provisional Rights

Royalties don't begin the minute an application is filed but rather on the day it's published. The copier must have accessed and read the published patent application. All claims in the inventor's application must match when the patent is granted, or the inventor cannot seek royalties under provisional patent rights. In other words, the patent application should match the patent paperwork when it's granted, or the inventor can't sue for royalties. If they don't match, another application needs to be filed.

Why Provisional Patent Applications Are Important

Provisional patent rights help protect inventors while they're still developing their invention. Inventors should describe the item at the moment of filing the application and file it as a provisional application.

After 12 months have passed, or when the invention has been finalized, the nonprovisional patent application is filed. This second application includes the initial status of the item and any improvements or additions made upon completion.

The patent office doesn't do anything with a provisional application until the inventor files a nonprovisional application. This benefits creators because they gain the right of priority.

Once an invention is a solid idea that's describable, it's best to file a provisional patent application right away. These applications protect initial ideas and inventions while the idea is refined and improved.

Rights Based on Substantially Identical Inventions

Rights cannot be claimed unless the invention is nearly identical to the item described in the published patent application.

Time Limitation on Obtaining a Reasonable Royalty

Rights cannot be claimed for reasonable royalties unless the claim is filed within six years of patent issue.

Requirements for International Applications

International applications become effective on the date of publication. If the international application is in any non-English language, the effective date is the day when the Patent and Trademark Office obtains a translation into English. The director can ask applicants to produce copies of the international application and translation of the application.

Ways a Competitor Can Submit Prior Art Against an Application

Third-party submissions to patent applications must be done within two months of the application's publish date or when the publication notice is mailed, whichever comes first.

Private citizens, business entities, and government agencies may file a protest against a pending patent application. The protest must be filed before the application is published or before a notice of allowance is issued.

Any individual, government or business entity, real party in interest, or person without interest may turn in patents for publication. They must explain why they have a claim for the rights to patent any invention.

Contents and Term of Patent

This part of the law protects the patent applicant's right to a reasonable royalty for sales of products or services described in a resulting patent. The start date begins on the patent issue date and ends 20 years after the application filing date in the United States, unless the application indicates a reference to an earlier filed application. Any copies, drawings, and specifications must be indicated in the patent and will become part of the patent.

Extension of Provisional Rights Term

Provisional rights terms from the U.S. Patent Office can be extended, but it's expensive. In some instances, inventors can claim priority to an application made up to 14 months previously. Claiming priority to any application after 12 months and up to 14 months will cost about $1,700. This extension period is very restricted.

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