Issues Surrounding “Refiling” a Provisional application

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We are often asked if a provisional application filed in respect of an invention, can be “re-filed”.

Whilst this is possible, there are, as always, advantages and disadvantages to doing so.  Further, in some cases, whilst it may be possible to re-file the application, doing so will result in a loss of any rights in the invention

Firstly, it is better to think of the refiling of a provisional just as filing a provisional.  Use of the word “re-filing” can lead to a false impression that the provisional rights somehow continue.  This is not the case.  When a provisional application lapses at the end of its life, unless the further application is filed claiming priority from that application, the priority claim is lost. Filing of the same provisional application after that is effectively filing a new provisional application as it receives a new priority date and there is no link between the “refiled” provisional and the original provisional application.

The main advantage of re-filing a provisional application is the new period of 12 months of provisional protection that comes from it.

Additionally, an inventor may also add new material to the specification at the re-filing.

The main disadvantage in allowing a provisional application to lapse and re-filing the provisional application, is that the priority date is reset to the date of the re-filing.  This means that any publication of the invention in the period of the first provisional application becomes available prior art or use or publication of the invention upon which an examiner or third party can rely on at a later date for invalidity purposes.

Put simply, if you file a provisional application and then publicly disclose the invention, you cannot allow the provisional application to lapse and re-file it, without your own public disclosure of the invention invalidating any patent that comes from the re-filed provisional application. Your own publication effectively invalidates the later filed provisional.

Therefore, very careful consideration needs to be given at the time when a provisional application is come to the end of its life.  A provisional can be re-filed but only if there has been no publication of the invention.  Given that a provisional application is normally filed to gain some protection for the invention for further development or to trial a product in the market, once a provisional is filed, there is typically at least some publication of the invention in the provisional period. Therefore, it is extremely dangerous to allow a provisional application to lapse and to file the provisional specification again thereafter.

The only time a provisional application can be filed following the lapsing of an earlier provisional application for the same invention (“refiling”) is if the invention has been kept absolutely confidential in the period of the first provisional application.

Given that access to information is now easier than at any time before, it is extremely unlikely that if there has been publication of the invention, that an examiner or a third party seeking to invalidate your patent will not find it.

We cannot make the risks any more clear: if you choose to allow a provisional application to lapse and “refile” the provisional, there is a serious and substantial risk that any patent rights you are awarded after that will be invalid if there has been any publication of the invention in the period of the first provisional application.
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