Q: Can you update us on the USPTO’s provisional patent application policy?

Bob Stoll, Commissioner for Patents

Bob Stoll, Commissioner for Patents

A: Independent inventors have used provisional patent applications for various purposes – to test the marketplace, attempt to gain financial backing, secure licensing agreements and to further their product development.

Many independent inventors have indicated they would benefit from an extension of the provisional period for at least another year beyond the one year currently provided for by law.

Inventors often say one year is not sufficient time to find financial help, evaluate a product’s worth in the marketplace or to completely develop the invention for commercialization.

After hearing these concerns from many inventors across the country, the U.S. Patent and Trademark Office took a look at whether it can extend the one-year requirement for converting a provisional application into a regular, non-provisional filing.

Only Congress has the authority to amend the one-year requirement. However, the USPTO can achieve the essence of the request by changing our “missing parts” practice to provide for an additional 12 months to perfect a non-provisional patent application.

Late last year, the USPTO implemented a Missing Parts Pilot Program that effectively provides a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product’s worth in the marketplace or further develop the invention for commercialization.

Applicants have a one-year period from the filing date of a provisional application to file a corresponding non-provisional application to claim the benefit of the provisional application.

This change to the missing parts practice would not alter this requirement. However, it provides applicants with more time to reply to a missing parts notice in a non-provisional application, as well as delays the search and examination fees associated with a non-provisional application.

Extending the available time to determine if patent protection is needed not only benefits applicants, but also the USPTO and the public by adding to the collection of prior art and removing non-provisional applications for which applicants have decided not to pursue examination from the USPTO’s workload.

To take advantage of the pilot program, an applicant/inventor must file a non-provisional application no later than 12 months after the filing date of the provisional application, as well as request a delay in payment of the search and examination fees.

The pilot program does not change the requirement that an applicant must file a non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application.

If a non-provisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application, it may not be entitled to the benefit of right of priority to the provisional application.

The USPTO provides applicants with a form for the certification and request to participate in the pilot program (PTO/SB/421) that includes educational information regarding domestic benefit claims, foreign filings, patent term adjustment effects, the need for a complete disclosure of the invention, potential increase in fees and the benefits of submitting a complete set of claims.

The USPTO has training packages available on the USPTO website (www.uspto.gov). Independent inventors also can contact the Inventors Assistance Center at 800.786.9199.

Editor’s note: This article appears in the February 2011 print edition.

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