InMed Pharmaceuticals Inc (INM)

[lesgetrich]

Provisional patents have to be re-filed after one year...

Provisional Patents

To obtain the benefit of the "provisional" filing date, a non-provisional patent application must be filed, claiming benefit of the filing date of one or more specific provisional patent applications,[8] prior to their expiration.

The provisional patent application is only pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application claiming the benefit of the provisional application must be done within 12 months. Otherwise, the rights to claim the benefit of provisional application are lost.[9]

Such non-provisional application also must name at least one inventor common to those named in the "provisionals"[citation needed], and must claim the inventor's invention as disclosed in the "provisionals".

If a non-provisional application is not expected to be filed within one year, and the patent is not otherwise barred by law, another provisional application may also be filed at any time and start another one-year period (but this does not work in all cases).[10] However, the original priority date of any expired provisional applications will be forfeited.

The provisional priority date is of little consequence for any claims in the issued patent that are not supported by the disclosure in the priority document. This makes it very important that provisional applications be sufficiently detailed. Otherwise, the validity of an issued patent may be challenged as to the priority date of its claims that purport to relate back to an insufficient "provisional". Furthermore, during the year after filing the first provisional (and prior to filing a non-provisional application), it may be useful to file additional provisional applications as improvements are made, and then claim priority of those found useful in drafting the non-provisional application(s).

One popular use of a provisional application is to document and "lock in" potential patent rights while attempting to obtain sponsors for further development (and for more expensive patent applications). This tactic may permit an inventor to defer major patent application costs until the commercial viability (or futility) of the invention becomes apparent. However, wise investors consider provisional applications in view of the long road to potential patentability, not to mention the limitations that may be defined by the prior art.