PTO to Effectively Extend Provisional Applications to 24 Months

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me.  It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need.  After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor.  Life is complicated.  Life comes with choices.  Some people are lazy and don’t care to inform themselves.  We ought not dumb down life and/or the law to the lowest common denominator.  Rather, what needs to be done is to articulate the choices with clarity and precision such that those who are diligently engaged can determine if they might find one or another path more useful.  This is about making educated choices and giving more flexibility, how is that bad?

Of course, there is justifiable concern that the seedy underbelly of the invention market might rise up and mischaracterize a pilot program that allows you to “extend” your provisional patent, thereby further preying upon unsuspecting inventors who erroneously place trust where none is deserved.  But the fact that charlatans might be able to dupe those who don’t do any independent investigation of their own is no justification for forestalling a good idea, and for many the soon to be announced provisional patent pilot program will be a very good idea.

Turning to the specifics, it is technically inaccurate to say that the Patent Office can or will allow for a provisional patent application to be “extended” to remain pending for 24 months.  The Patent Office simply does not have that authority because the way the law has been written by Congress a nonprovisional patent application must be filed within 12 months of the filing of a provisional patent application in order for you to claim priority of the provisional patent application.  The importance of “claiming priority” from the provisional patent application is this — if you can claim the priority of the provisional patent application then your nonprovisional patent application will essentially be deemed filed as of the date you filed the provisional patent application.  The caveat is that the provisional patent application had to be complete, more on that in a moment.

To fully understand what is going on here we need to take a look at a couple different statutes enacted by Congress that unfortunately tie the hands of the Patent Office and require a more complicated fix than really should be necessary.

First, 35 USC 119 relates to the ability to file an application and have it regarded (essentially) as having been filed earlier in time.  Specifically, Section 119(e) explains that a nonprovisional patent application that claims the benefit from an earlier filed provisional application is treated as though it were filed on the date of the provisional application. So what is the catch? The catch is that the provisional patent application must have fully and completely described the fully glory of the invention at the time it was filed. It has always been true that the provisional patent application needs to fully and completely describe the invention, and it has always been true that most inventors who file a provisional patent application fail to satisfy this requirement. If you don’t satisfy the full disclosure requirement then the provisional patent application isn’t worth anything, which is one of the main criticisms of provisional patent applications in the first place. The Patent Office will accept virtually anything as a provisional patent application as long as it has a cover sheet and the appropriate payment, so many charlatans in the industry encourage the filing of dubious to flat out terrible provisional patent applications, which are worthless. Nothing in the pilot program will change the reality that you need to know what you are doing with a provisional patent application, so the benefits to be had will be for those who already do the right thing and file an appropriate provisional patent application.

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The second part of the statute you need to understand is 35 USC 111, specifically Section 111(b)(5).  This section states that regardless of whether a nonprovisional patent application has been filed claiming the benefit of the provisional patent application, the provisional patent application MUST BE regarded as abandoned 12 months after its filing date. That is the law, and the law specifically says that a provisional patent application “shall not be subject to revival after such 12-month period.” There are many mistakes that can be corrected in patent law and practice, but this is not one of them. The 12-month period for a provisional to remain pending is cast in stone and there is nothing that forgives a mistake.

So you can claim the benefit of a provisional patent application if you file the nonprovisional within 12 months of the filing date of the provisional, and when you do file the nonprovisional it will be effectively treated as having been the date the provisional patent application was filed, at least with respect to whatever was fully and fairly disclosed in the provisional patent application. This is CRITICAL because an early filing date cuts off prior art. In logic and law it is true to say that something that comes after you filed could not be prior art for you, so having the earliest filing date can be absolutely essential and holding onto that filing date and not having to reset the filing date with a new filing is tremendously important. This is because in the US we consider public use and offers for sale to be prior art events when they occur more than 12 months before you file.

Let’s look at an example.  If you publicly use your invention on June 5, 2008, then file your provisional patent application on July 10, 2008, you are fine because you filed within 12 months of the first public use. But if you then subsequently file your nonprovisional patent application on August 15, 2009 you have irretrievably compromised your right to get a patent because the provisional patent application has gone abandoned before you filed the nonprovisional patent application.  Now you are no longer entitled to claim the benefit of the provisional patent application filing date, which means your filing date is the date of the nonprovisional filing.  Unfortunately for you the nonprovisional patent application was filed some 14 months after a public use, which will prevent a patent from ever issuing.

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The above example is but one very real scenario illustrating what can go wrong. So if you do file a provisional patent application you absolutely need to maintain continuity, which is another way of saying file that nonprovisional patent application within 12 months of your provisional filing date or you might compromise any hope of ever obtaining a patent.  Nothing is going to change with respect to the need to file a nonprovisional patent application within 12 months.

What will change is the fee that needs to be paid at the time you file the nonprovisional patent application. Under the proposal as it currently stands — the final pilot project hasn’t been announced but is anticipated very soon and to be quite similar to the proposal released — applicants would be permitted to file a nonprovisional application with at least one claim and drawing (if necessary) within the 12-month statutory period after the provisional application was filed, pay ONLY the basic filing fee, and submit an executed oath or declaration. Applicants would then be given a 12-month period to decide whether the nonprovisional application should be completed by paying the required surcharge and the search fee, the examination fee and any excess claim fees due within that 12-month period.

Let’s translate this into English. Under the soon to be announced pilot program the applicant who is filing a nonprovisional patent application that claims the benefit of a provisional patent application would have to pay the basic filing fee, which for a small entity (i.e., an individual or company with 500 or fewer employees) is $165. The applicant would be able to defer payment of the search fee ($270 for a small entity) and the examination fee ($110 for small entity). So there would be a savings of $380 in fees due to the USPTO at the time of filing the nonprovisional patent application.

After you file the nonprovisional patent application you would get what is called a “Notice of Missing Parts.” What is missing is the full fee. Typically you have 2 months to respond, which can be extended to 5 months, but to enjoy the full 7 months to respond to a Notice of Missing Parts you would have to buy expensive extensions of time, and that is simply ridiculous for an inventor or small business to contemplate. Instead, under the pilot program applicants would get 12 months within which to respond to the Notice of Missing Parts and have to pay a surcharge, which will likely be $65. So for a filing fee of $165 you could effectively extend your provisional patent application.

If you are looking at this and saying to yourself “this doesn’t give me a lot of benefit” then you are probably close to understanding the situation, but still missing why you would want to do this in the first place. Of course, if you were looking for a magic patent fairy to float down and give you 24 months instead of 12 without anything else then you will be dissatisfied.  If you were hoping for the ability to file vague provisional patent applications and later supplement them with quality disclosure, dream on.  If, however, you are prepared to thoughtfully engage and pursue your invention as a business endeavor, spending reasonable sums over a longer period of time, thereby giving you more option to cut if the project isn’t panning out, then you will get what you expect from this new pilot program.  Whether there is much benefit will almost certainly be in the eye of the beholder.

The real benefit of this pilot program will be for those who are already do what it is that you are supposed to be doing, which is filing a provisional patent application that fully and fairly describes your invention. If you do that and you include at least one claim and drawings, then you could take the provisional patent application you filed and simply file it as a nonprovisional patent application and pay $165 more and you can maintain that patent pending for 24 months from your original provisional patent application filing date. So clearly this pilot program accomplishes two things: (1) it provides further incentive for inventors to do what they already should be doing in the first place, which is filing quality provisional patent applications; and (2) it rewards those who do file quality provisional patent applications with the prospect of getting an additional 12 months of pendency for a nonprovisional filing fee of $165.

The entire point of the provisional pilot program is to provide inventors with choices. Some inventors find 12 months just too short a period of time to determine whether it makes sense to continue to pump money into a patent process that might wind up useless because there is not enough market interest in the invention. A year can also not be enough time to round up investors, particularly when none are otherwise at the ready. So for those who can benefit from an addition 12 months of pendency the Patent Office will soon allow for you to have it, but you will need to file a high quality provisional patent application from the start in order to reap the benefits.

But filing a high quality provisional patent application from the start is expensive? Yes, indeed it is more expensive than filing something that is crap, but most times you can file a suitable provisional patent application for a fraction of the cost of preparing a nonprovisional patent application. If you are thinking you will want to avail yourself of the 24 month period you will probably want to do more up front, but after you file the nonprovisional patent application the key will still be does your application fully and fairly describe your invention. While you won’t be able to file new information later, there are still tactics available to you and your patent attorney to brush up an application that has a solid disclosure but maybe isn’t written in the perfect nonprovisional format. This can range from filing a preliminary amendment to put things in better condition prior to the First Office Action on the Merits, or filing a Continuation or Continuation in Part at the end of the 24 month period from the filing of the first provisional patent application. But now I am really getting ahead of myself.

The morale of the story is this — don’t listen to anyone who tells you this provisional pilot project is too complicated and, therefore, shouldn’t be pursued. That is like saying the tax code is too complicated so we should just do away with some deductions because only some can understand to take them. The law rewards those who are informed, so inform yourself of the options and see if they will work for you. But whatever you do definitely get competent advice, stay away from the charlatans and work with reputable professionals. That is the recipe for success in any business, and inventing is no different.