Monday, April 05, 2010

USPTO Looking at a Two Year Delay For Converting Provisional Apps Into Non-Provisional Apps

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)

Comments are due by June 1 and may be directed to:

3 Comentários:

David J French said...

This is not an extension of the Provisional year to two years. This is a separation of the filing fee from the examination fee. Applicants making a regular non-provisional filing would have a further year to choose to abandon an application, avoiding payment of the examination fee; or pay the examination fee and proceed.

Separating the examination fee in this manner will allow the amount of the examination fee to be raised. US applicants who start by filing a US Provisional will have this increase softened by the extension and option to abandon. Foreigners who do not file for a US Provisional will not have access to this benefit.

This is not an extension of the Provisional year to two years for another reason. In converting a Provisional to a non-provisional filing new matter can be added. An extension of up to one year to pay the examination fee will not include the right to add further new matter.

David J French

Rob McDermott said...

I agree with David French. This is merely an extension of time to pay the examination fee.
The major cost of filing a non-provisional is typically the attorney fee for preparing the non-provisional. Inventors would prefer to delay the filing of the non-provisional to decide whether to incur this fee. Merely delaying the examination fee will have minimal impact.

Senthil said...

Still it is good for small/startup companies who can't afford to pay examination fee in a stretch.

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