USPTO Considering Extending Provisional Patent Applications by 12 Months

In a surprising move, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos is considering extending the US Provisional Application pendency from one year to two years. See http://www.uspto.gov/news/pr/2010/10_10.jsp

I find the idea a little crazy. In the US the patent currently goes to the first to invent, not the first to file, and one can use the provisional filing date as pretty good indication of when one had the invention reduced to practice as described. Elsewhere, one assumes the Paris Convention would apply and so priority could not be claimed from the provisional in other jurisdictions.

Seems like a non-starter.



Categories: Intellectual Property, News, Provisional patents, USPTO

2 replies

  1. Michael,

    While I will avert the “starter / non-starter” dispute, I believe there may be a hidden agenda in Kapposs’ announcement.

    Remember it was made in the midst of the much larger debate on “first inventor to file” and on the current USPTO policy to allow inventors to “swear behind” the initial priority date, up to 12 months before the provisional app filing (unacceptable under the Paris convention, but still a viable option for US applications).

    I believe that what Kappos aims to achieve is to align USPTO and WIPO policies, while facing considerable resistance from US Patent Attorneys. I also believe he aims to employ any objections to this announcement to settle for an 18 – months non-publication period, and to reduce the time required to file either a full US App or a PCT app back to the Paris Convention long-standing 12 months period.

  2. Um, as far as I can tell from the published Request for Comments, the proposed Change to Missing Parts Practice does not address “extending provisional patent applications by 12 months”, so much as it addresses extending the period for payment of fees for non-provisional applications claiming priority from provisionals.

    From the published Request:

    “Under the proposal, 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 the nonprovisional application should be completed by
    paying the required surcharge and the search, examination and any excess claim fees due within that 12-month period.”

    The 12 month deadline for claiming priority would not be extended. Applicants would still have to file the non-provisional application within a year and subsequently would not be allowed to make any material changes to the specification – just as today.

    However, a procedural change to extend the allowed response time for a Missing Parts notification from the current 2-5 months to 12 months, specifically in order to enable inventors to defer the decision whether or not to pay the fees for search, examination and excess claims where relevant.

    Accordingly, the only impact on the rest of the world would be that a higher percentage of US applications would be published.

    I would point out though, that I find it odd that the proposal only addresses extending the effective payment period for applications that “claim the benefit of a prior-filed provisional application.” IOW, while I’d have two years from the day I file a provisional to decide whether or not to pay all the required fees for the non-provisional application (assuming I waited until the 12 month deadline to file); if I file a non-provisional to start with, I’m still expected to pay up front or at the most within 2-5 months from the time I receive a notice of missing parts.

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