In what circumstance will I lose the right to patent when provisional patent expires?

You need to file the nonprovisional application within one year of the filing date of the provisional application to claim priority of the provisional application filing date for the nonprovisional application. You have to file the nonprovisional application within one year of the publication date of the invention in the journal or you will lose your right to file a patent application on the invention. The safest approach is to file the nonprovisional application based upon your provisional application, claiming priority of the provisional application date for your nonprovisional application. The first to file a patent application on an invention will prevail over anyone who files later, so it is best to claim priority of your provisional application filing date for your nonprovisional application.

You are better off if you select the first choice - file by the one year deadline and claim priority to the provisional filing date. The second choice "assumes" that another party does not see your publication, modify the idea (even slightly) and then they file a patent application on "their" version of your invention. If you wait the one year from publication - the other party is now the "first inventor to file" - and you may not be able to patent your invention.

You lose the right to file a patent application in the United States once it has been one year from the date you publicly disclosed your invention. You lose the right to claim priority to a provisional patent application once is has been one year from when you filed the provisional patent application. The rule about provisional patent application priority does not overwrite the rule about the one year deadline from public disclosure. So, even if you filed a provisional patent application and it has expired, if it has not been a year yet since your first public disclosure, you can still file a patent application.

As is frequently the case, the answer is: "it depends". Patent rights may include foreign and/or domestic (U.S.) patent rights. So, it depends on which rights you are trying to preserve. Under U.S. law, you only lose patent rights if the invention has been on sale, offered for sale, or publicly disclosed for more than one year and you have not filed a patent application (often referred to collectively as "the on sale bar") . So, under your fact scenario, and assuming you have not otherwise publicly disclosed the invention prior to 04-01-14, and no one else has filed an application for the same invention since 01-01-14, the provisional patent filing gives you the option of seeking patent rights with priority from as early as 01-01-14, but not the obligation to do so. Your provisional application will automatically expire and never be published unless you do the publishing. However, by self-publishing the provisional on 04-01-14, you have until 04-01-15 to file your U.S. nonprovisional application or you will lose your U.S. patent rights. If you fail to file a U.S. nonprovisional, international, or foreign national patent application by 01-01-15, your public disclosure on 04-01-14 eliminates your foreign patent rights in all countries that require absolute novelty (*i.e.*, all foreign countries that matter), but you would still have another 4 months to file a U.S. nonprovisional application and avoid the on sale bar, thus, preserving your U.S. patent rights only.

This is an excellent question. The U.S. has always provided inventors with a 12-month grace period from the date of a public disclosure until the Patent Application is filed. No other country in the world does this. If the inventor's publication pre-dates the filing date of the Patent Application, rights to the invention are jeopardized in the rest of the world. If the priority date is lost (01/2014 in your example) all international patent rights have been jeopardized. Another important issue that needs to be examined here is does the scope of the publication match the scope of the Provisional Application" For example, if the publication discloses "X" and "Y", but the Provisional Application only discloses "X", international rights to "Y" have been jeopardized. To prevent this from happening, the inventor can file a 2ndU.S. Provisional Application prior to the publication date (04/2014). The right to file a U.S. Patent Application using the priority date of a U.S. Provisional Application expires on the anniversary date that the U.S. Provisional Application was filed. At the end of the 12 month period, the inventor can file either a U.S. Patent Application, or an international (PCT) Application, designating all countries, including the U.S. Additional subject matter may be added in the U.S. Patent Application, or international (PCT) Application. The U.S. Provisional Filing System enables the Applicant to *PRESERVE* an early filing date for a fraction of the cost of filing a U.S. Patent Application; and *DEFER* most filing, translation, prosecution, issue, and maintenance costs for up to 12 months if only U.S. rights are sought, and for up to 30 months if worldwide rights are sought. At the end of the 12 or 30-month period, the Applicant will be able to make a more informed decision about whether to pursue patent protection, or to abandon rights without incurring any further legal costs. There will be no substantive examination of the Provisional Application. The U.S. Provisional Filing System is designed to be *inexpensive* and * simple*, and is particularly useful if the invention is in a state of development and it is expected that additional inventions will be soon made and added. The one-year provisional period is *NOT* counted as part of the new 20-year patent term. Accordingly, the Applicant has acquired an extra year at the end of his patent term. The Provisional Filing System is *simple* with minimal formal requirements - since it requires no claims; no oaths; no signatures; no abstracts; and no prior art statements.

The provisional patent application memorialized you as the first inventor to file and gives you 12 months to file a non-provisial patent application. The subsequent public disclosure by you or co-inventors in a public journal does not accelerate the time.

If you are not concerned about maintaining the benefit of your provisional filing date, then you can file by April 2015.