Converting a provisional patent to full patent requires filing a non-provisional patent application and paying the required fees. Failing to convert your provisional patent before it expires means you will lose protections for your invention.

Provisional Patent Application Facts

Provisional patents have only been available since 1995. Before this point, inventors needed build and test their invention and then file a full patent application to protect their ideas before presenting them to potential investors. While this did offer protections to inventors, it was very time consuming and not always practical.

Now that provisional patents are available, inventors can protect their ideas without having to spend the money or effort necessary for a full patent. Once a provisional patent application has been filed, an invention will be protected for a one-year period. This one-year window is commonly referred to as a pendency period.

The pendency period cannot be extended for any reason. Once this one-year period has expired, the inventor will lose their patent protections. To maintain patent protections, the inventor would need to file a non-provisional patent application before the pendency period has ended. Although the term “provisional patent” is frequently used, there is no such thing in reality. When people say provisional patent, what they are talking about is a provisional patent application.

Filing a provisional patent application is the initial step in the patent process, and while filing this application will not provide you with an actual patent, it will give you some protections. Once your provisional patent application has been accepted, your invention will receive patent pending status, and you will have protections for one year.

Provisional patent applications consist of several items:

  • A specification that outlines how the invention can be made and used.
  • Drawings that are meant to clarify the specification.
  • Your payment and contact information listed on a cover sheet.

When an inventor wants to find someone to manufacture their invention, or if they are interested in testing the commercial waters, they will protect their idea from theft by filing a provisional patent application. Creating a provisional patent application is relatively easy, and once you have your application in order, you can visit the USPTO website to submit online.

Steps for Filing your Application

Filing a provisional patent application is much easier than filing for a non-provisional patent. From the first time you use, sale, publish, or offer your invention for sale, you will have one year to file your provisional patent application.

If you want a filing date for your invention, your provisional patent application needs to include the following:

  • The required filing fee.
  • A full description covering how your invention can be made and how it should be used.
  • Drawings that are necessary to understand your invention.

Converting Provisional Patent to Full Patent

After you have successfully filed your provisional patent application, you will have one year to file for a non-provisional patent. This will allow you to claim the earlier filing date included on provisional application as the invention date.

You can claim the earlier filing date two basic ways. First, you will file your non-provisional patent application, and in this application, you will claim the filing date of the provisional patent application. Second, you can petition that your provisional patent application be converted to a full patent. You will need to file all required materials if you choose the latter option.

While either option will convert your provisional patent application to a non-provisional application, the length of your patent will defer. If you choose the first option, your patent's term will be based on your provisional patent application filing date. Choosing the second option means the term of your patent will be measured by the non-provisional patent application filing date.

With the second option, the length of your patent term will be a year shorter than with the first method. Essentially, choosing the first option means you will have an additional year of patent protections. If you file your non-provisional application within a year of filing your provisional application, you must be sure to reference the provisional patent application. The USPTO will check to make sure that both applications describe the exact same invention before they will approve your full patent.

If you need help converting a provisional patent to full patent, you can post your legal needs on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.