Timing of Filing Design and Provisional Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  procedure and the Copyright Office.  Please find their most recent update below.

Filing Design and Provisional Patent ApplicationsInventors wishing to file utility patents often secure a priority date by first filing Provisional Patent Applications. These applications focus squarely on what the inventor has documented, and don’t require some of the formalities of a Non-Provisional Patent Application. Since Provisional Patent applications aren’t examined, this means an inventor can file an application and receive a priority date for their patent without the need for a patent claim, an oath or declaration, an Information Disclosure Statement (IDS), and other formal application requirements. As long as the inventor files a Non-Provisional Patent Application within 1 year of their Provisional filing, swearing priority to the Provisional Patent Application, intervening publications cannot be cited as prior art against the inventor’s application.

Under 35 U.S.C. § 172, however, only Non-Provisional utility patent applications may swear priority to an earlier filed Provisional Patent application. Therefore, if ornamental design is a prominent feature of an invention, the provisional filing date may not be used as a placeholder for priority. So, if both useful features and ornamental design aspects of an invention are important to the overall marketing and proprietary features of it, inventors should consider filing a design patent application in addition to filing a Provisional Patent Application. This can be done either simultaneously or by filing a design application soon after the filing of a Provisional Patent Application. That way, the ornamental features can receive a level of patent protection and share its priority date with respect to products sold or publications by others when it comes time for the USPTO to examine each application. Otherwise, products released or publications by others, and even the inventor’s own publications or sales, may become novelty defeating prior art against the inventor’s design application and the inventor may risk not being able to protect their ornamental features.

One other consideration must be taken into account in regard to foreign applicants wishing to protect their ornamental designs within the US. Under the same section of patent law, 35 U.S.C. § 172, foreign applicants claiming priority in a US Design Patent Application to a foreign application, must file their application within six-months of filing their foreign application for the same design in order to use their foreign priority date in their US application. This shortened time period for international applicants means they should take special care regarding these deadlines if ornamental features are being protected.

If you have a useful invention that also features a unique ornamental design, it’s important to keep these special design patent rules in mind. Since you’ll need to prepare important documents and critical dates are crucial to turning your application into a patent, you should consider hiring a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

Filing Design and Provisional Patent Applications

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By Richard Piercy

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