The USPTO is proposing to change the process for converting provisional patent applications by providing a 12‑month extension to the existing 12-month provisional application period. In stead of simply providing a two year period, the USPTO will allow applicants to add another year through the missing parts practice in nonprovisional applications.
Essentially, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.
According to Director Kappos:
“One of the things I kept hearing at the many roundtables we’ve held with inventors all across the country was that additional time flexibility during the provisional period would greatly benefit them,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The existing 12-month provisional period may provide too little time for inventors to test the marketplace. Giving applicants a 12-month period to reply to a missing parts notice would effectively give applicants more time to evaluate the value and market potential of their inventions. It not only helps applicants decide whether to incur the additional costs involved in pursuing a patent, but also, makes the patent office more efficient in enabling the delivery of new products and services to market.”
Read the USPTO Press Release here (link)
Read the Fed. Reg. Notice here (link)
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