What if your product or design changes before patent approval?

On Behalf of | Aug 23, 2021 | Patents |

Let’s say that you’re an inventor who has applied for a utility patent for your widget. While you’re waiting for patent approval, out of nowhere you are struck with an insight: your widget would be exponentially improved by adding a set of wheels to it. Brilliant!

But can you amend your patent application to incorporate this important change? In short, no. Once they’ve been filed, you cannot amend patent applications.

If you want your widget with wheels protected with a patent, you will have to submit a new patent application that includes the change. Unfortunately, the priority date of your first patent application can’t be preserved. You’ll be saddled with the new application’s priority date, which can in some cases mean another person or company could secure a patent for the same product before the new priority date.

However, there is a way that you can secure a priority date and IP rights while you perfect your widget. A provisional patent application (PPA) can give you the flexibility and protection you seek.

Provisional patent application advantages

  • Priority date: You can secure a priority date (the date on which filed a patent application is also the date on which your IP protections begin) with a PPA. The PPA serves as a record that you were the first with the product or idea it describes.
  • Changes: Many inventors use the year afforded by the PPA to put the finishing touches on their invention while still protecting their IP rights. (You have one year after filing a PPA in which to file a nonprovisional patent application.)
  • Time: With the 12 months you get with a PPA, you can not only fine-tune your invention, you can also work with an IP attorney on your nonprovisional patent application, secure financial backing, gauge interest in licensing agreements and so on.
  • Detail: Although you should include accurate and plentiful details of your widget in your PPA to describe and protect your widget, the application does not require the breadth and depth of a nonprovisional patent application.
  • Notice: After the PPA is submitted, you can put a “patent pending” notice on your widget.

Provisional patent application drawbacks

The major drawback of PPAs is that they never mature into an issued utility patent (there are no PPAs for design patents).

Also, you cannot extend the year after filing the PPA. You must at that time either file a nonprovisional patent application or lose the priority date.

You can avoid those types of consequences by speaking with a patent attorney experienced in successfully navigating patent processes.