THINGS YOU NEED TO KNOW ABOUT PROVISIONAL PATENT APPLICATION CONVERSION DEADLINES
To preserve the benefit of your provisional patent application filing date, you will need to convert the provisional application to a US and/or PCT non-provisional patent application within one year of your provisional application filing date. Failure to do so may result in forfeiture of your ability to patent your invention.
The key things you need to know and consider in making your decision to convert or not to convert include:
1. If you made the invention public or offered it for sale prior to but less than one year prior to the provisional filing date, you must file US and/or Canada (and maybe PCT if the offer for sale was in confidence) by the deadline, or you will forfeit your right to a patent. (If the only activity was an offer for sale in confidence, you can consider delay, but there is serious risk involved.)
2. If you made the invention public or offered it for sale after the provisional filing date, you have additional time, up to one year from the date of making public or offering for sale, to file US and Canada, or re-file your provisional, but you forfeit your right to a patent in other countries.
3. If you have not yet made the invention public or offered it for sale, you can re-file your provisional and restart the one year conversion clock.
4. In any of the above situations where you do not convert by the deadline, but instead one of the delaying options, you run the risk of having to deal with intervening prior art. That is prior art which came into existence after your provisional filing date, and prior to your delayed filing date, whether it be a re-filing of the provisional or filing a US and/or PCT and/or other foreign application.
5. The government fees alone for filing a non-provisional US application will currently be about $1,000, and for a PCT application will be about $3700.
6. You can file PCT only, and defer your US filing date for about another 20 months.
These are general guidelines only, and you should consult with your Mitchell Intellectual Property Law attorney to discuss your specific situation.