PTO to Effectively Extend Provisional Applications to 24 Months

By Gene Quinn
December 1, 2010

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.


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.


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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 27 Comments comments.

  1. Just visiting December 1, 2010 11:29 pm

    I don’t want to rain on anybody’s parade, but it seems like it is a lot of hand waving to acheive not much of substance. All you are saving is a miniscule amount of filings fees from month 12 to month 24. Compared to the amount of money it will take to get a provisional application in condition for filing so that it can be converted, these filings fees are chump change.

    Sure, it might?? help somebody at the fringe. However, if somebody is that hard up for cash, they are very likely not the clients I want to see coming through my door.

    If a solo inventor walks through your door and says he has a great idea that he wants to patent but he cannot pay your attorney fees until later, you better be comfortable working pro bono because the odds are high that you will never get paid.

  2. JNG December 1, 2010 11:52 pm

    Gene – I think anytime the PTO gives us more options that is a GOOD thing… no doubt not everyone will use this all the time,but it definitely has utility in some cases. I think they did a pretty good job of taking this to the limit in terms of making sure you have to provide *some* document after 12 months that satisfies the definition of a formal application. But one could imagine polishing up the application with more mundane details (Background, summary, etc.) at a later date by amendment followed by more meaningful claims.

  3. kjc December 2, 2010 7:23 am

    I think it’s worth highlighting with regard to your example in paragraph 9 that the disclosure on 5 June 2008 will prevent you getting a patent pretty much anywhere else in the world, as the year’s grace period only applies in the USA, not in most other coutries. So even if you do maintain your 10 July priority date, your public use will be full prior art, hence invalidating any patent covering the disclosed invention.

  4. two cents December 2, 2010 9:08 am

    Gene – thanks for the clear explanation. However, I differ with you somewhat on what the cost of a provisional application should be. It should not be “a fraction of the cost” of a non provisional if done right (I assume you mean a small fraction). The standard is not really “fully and fairly” describing the invention – the standard is 112 – same as a non-provisional. And, depending on the examiner and the court and the prior art, there may be a determination of whether or not your claims are fully supported by the provisional specification. So, if your provisional spec is to fully support your claims, the only way to know if they truly will is to write a complete set of claims after analysis of the prior art and then assure that the spec does its job. If you do this, you have essentially done all of the work of a non-provisional. So, why should that cost a fraction of a non-provisional. In my book, the answer is that it shouldn’t. It should only cost a little less for filing fees and maybe drawings.

    Your comment that the provisional must be complete is good, but unfortunately many people are still operating on the assumption that you can throw just about anything into the patent office and call it a provisional. There was a case a few years ago (don’t have a cite handy) where a provisional drawing pretty clearly showed a claim feature of a well drilling bit, but the claims were deemed not supported by the provisional because all the words weren’t there. We should take heed and not perpetrate the myth that a provisional is just a cheap way to file a patent application.

  5. Gene Quinn December 2, 2010 10:51 am

    two cents-

    I hear what you are saying and certainly understand. Let me elaborate a little if I can…

    When I draft an application claims always come last, and then after the claims there is the inevitable back and forth between spec and claims to make sure everything is neat and clean. The overwhelming majority of what I do is in the software space (i.e., Internet, software, systems and business methods). When doing a provisional patent application we are almost always working with the best information possible at the given time, not with a completed invention. That typically means we work with documentation that could in some regards resemble a design document, and at times what we are putting together is a design document. Then work continues on the software after the provisional is filed. So we stake a claim to whatever we can at the time of the provisional knowing full well that there will be more discovered/conceived/invented along the way to reduction to practice.

    My philosophy with respect to a provisional is all about disclosure. It doesn’t make sense to me to have an inventor who isn’t sure they have a worthwhile invention yet to spend large sums of money out of the gate, so we have a chicken and an egg problem. How much do you spend now to secure what you can while still be judicious? So we write up the application like it is a nonprovisional, but corners are cut in terms of format. In order to do that what we do is typically create a skeleton nonprovisional, we include some code if it is available, if there is a design document we attach it, we generate flow charts and schematics. Essentially I am trying to put together the framework for a nonprovisional patent application and then pull together as much supporting documentation, some of which necessarily needs to be created in the first instance, to get a disclosure that is broad enough to support whatever is viewed as the invention at that point in time, knowing full well things will evolve.

    I know many feel the way you do and I can respect that. I, however, believe that a high quality provisional patent application can be filed for about 30% of the cost of a nonprovisional patent application. To some extent this is also because when we file patent applications the disclosure is always broader than the claims. I tend not to do work with clients who are looking for a disclosure that matches the claims. On top of that the clients I work with are almost always in progress with the invention, which does significantly alter any strategy.


  6. Gene Quinn December 2, 2010 10:53 am


    I agree. While that might not be ideal, sometimes we have to work with clients who can’t or won’t follow the ideal path.


  7. IANAE December 2, 2010 11:31 am

    I would love for someone to clarify why 35 USC 133 isn’t an issue here.

    “Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, […] the application shall be regarded as abandoned[.]”

    I realize that 710.02(d) MPEP says that “[t]he 2-month time period for reply to A Notice to File Missing Parts of an Application is not identified on the Notice as a statutory period subject to 35 U.S.C. 133″, but since when does the PTO have authority to decide what is or is not covered by the statute? Particularly in view of the broad “any action” language and the mandatory “shall be regarded” language. Isn’t the seventh month of the extended period to reply to any PTO action arguably ultra vires?

  8. Chris December 2, 2010 11:42 am

    “but since when does the PTO have authority to decide what is or is not covered by the statute? ”

    Umm, that is the whole reason the USPTO exists, to make determinations about what is covered by the US patent laws.

  9. IANAE December 2, 2010 11:58 am

    Umm, that is the whole reason the USPTO exists, to make determinations about what is covered by the US patent laws.

    No, the courts make determinations about what is covered by the US patent laws. The PTO can’t make a determination or a rule that runs contrary to the law.

    The PTO can’t, for example, regulate that patents in the 4-millions aren’t covered by “patented” under 35 USC 102(b) and expect it to have force of law. Sure, you might get your patent issued, but the courts will happily declare it invalid over US patent 4,865,241 (or whatever) if that patent turns out to be an anticipation.

  10. Chris December 2, 2010 12:51 pm

    “No, the courts make determinations about what is covered by the US patent laws.”

    The courts only ever make such a determination after USPTO has made their own determination. No one has ever gotten an opinion from the court on whether their application complies with the patent laws prior to the PTO making some determination first. At least not to my knowledge. PTO didn’t write the code, they only apply it in a “quasi-judicial” manner. Why would they suddenly not have authority to determine what falls under section 133?

    “The PTO can’t, for example, regulate that patents in the 4-millions aren’t covered by “patented” under 35 USC 102(b)”

    How would that situation be the same as “deciding” what is or is not covered by the statute? You said yourself that would be “regulating,” not deciding. The courts ruled already that PTO has very limited regulatory powers, most recently in Dudas’s claims and continuations fiasco. That is not the same as deciding what falls under the statutes.

    But to answer your original question, a “notice to file missing parts” is interpreted in this case as not being an “action” by the PTO. It is a “notice” to applicant and not an “action” on the application. Failure to comply with similar notices in the past has resulted in adjustment of filing date (to the date when the missing parts were received) rather than abandonment. In the case Gene describes above, the only thing missing would be the fee, so priority would stay intact.

  11. Mark Nowotarski December 2, 2010 1:12 pm

    I applaud the efforts of the USPTO to better meet the needs of independent inventors. I think, though, that greater effort on modernizing the form and content of patent applications would have a much greater benefit than legal jiu jitsu to create the ability to defer examination and search fees.

    For example, most three dimensional objects are now designed in 3D CAD programs. Standard adobe pdfs are compatible with these 3D images. The USPTO is not. Independent inventors could save a significant amount of money if they could directly file the 3D color images they normally work with instead of having to render them as multiple 2D black and white drawings. The public would be better served because the disclosure of a patent application would be much easier to understand. Examination would be much easier for the same reason.

  12. IANAE December 2, 2010 1:17 pm

    Why would they suddenly not have authority to determine what falls under section 133?

    Because section 133 means what it means, and if section 133 says your application shall be regarded as abandoned the PTO can’t tell you any different. Same reason the PTO couldn’t determine what the PTA section meant by overlapping periods in Wyeth. The courts always have the final say on what a statute means.

    How would that situation be the same as “deciding” what is or is not covered by the statute?

    It would be deciding that a notice to file missing parts is not “any action”, based on no authority and against all common sense, because that’s the only way to make 133 inapplicable, because they’d rather it not apply. It sure sounds like section 133 was intended to be as broad as possible, to set upper and lower bounds for the delay to reply to anything the PTO mails that requires a response.

    But to answer your original question, a “notice to file missing parts” is interpreted in this case as not being an “action” by the PTO. It is a “notice” to applicant and not an “action” on the application.

    Yes, that’s obviously the interpretation. My question is what authority entitles them to make that interpretation in the first place.

  13. Chris December 2, 2010 1:31 pm

    “Because section 133 means what it means, and if section 133 says your application shall be regarded as abandoned the PTO can’t tell you any different”

    Section 103 means what it means. Section 101 means what it means. Section 112 and all sections mean what they mean. Section 133 also explicitly gives the director discretion to avoid abandonment if he is “satisfied” that the delay was unavoidable. That means what it means, too. Of course the courts have final say. That doesn’t mean that the USPTO can’t make any determination of whether an application meets the patent law under section 103. Why are they there?

    “It would be deciding that a notice to file missing parts is not “any action”,”

    Where in the statute does it say what “any action” is? Is a notice of publication an “action” that requires applicant to respond within 6 months or face abandonment? By your interpretation, yes. That should clean up the backlog of unexamined applications nicely. Just abandon them all where applicant didn’t respond to the notice of publication within 6 months.

    Section 133 is applied to “prosecution” by applicant. Is filing a missing part included in “prosecution” by applicant? Can prosecution start without the filing fee being paid? Is it prosecution from the moment the client calls the attorney, or does it start at filing a complete application?

  14. IANAE December 2, 2010 1:55 pm

    Section 103 means what it means. Section 101 means what it means. Section 112 and all sections mean what they mean.

    Exactly. The PTO has no authority to decide what is or is not prior art under 103, or what is statutory under 101, or whether 112 sixth paragraph applies in prosecution. Those are all up to the courts to decide. The PTO is allowed to decide whether a particular piece of prior art renders a particular claim invalid under 102 or 103, but (1) it’s not the same thing as deciding whether the meaning of 102 or 103 includes a particular type of document at all (statutory application vs. statutory interpretation), (2) that determination is specifically their job under the statute, therefore trivially within their jurisdiction, and (3) their decision is still subject to review by the courts.

    Remember all the hullaballoo when the PTO issued post-Bilski guidelines on 101 that MoT was still the test, after the Supremes said it wasn’t the test? Why do you suppose that was? Don’t you think the PTO is entitled to decide for itself what the law means?

    Section 133 also explicitly gives the director discretion to avoid abandonment if he is “satisfied” that the delay was unavoidable.

    Do you think he could be satisfied, in a way that would stand up in court, that a delay was unavoidable when the PTO gives the applicant 12 months to respond and the applicant voluntarily responds 12 months later, paying a fee for the privilege?

    Is filing a missing part included in “prosecution” by applicant?

    Good question. I would say that prosecution begins once you attempt to engage the PTO (other than by filing a provisional, possibly), because at that point you’re asking them to grant you a patent. It’s possible that the mere fact of that initial filing will entitle you to a patent, but it’s also possible that the PTO will identify one or more defects in your request that you will need to remedy on pain of abandonment. That’s all part of the prosecution of your patent application.

    Take 35 USC 33:

    “Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense.”

    What do you think counts as “prosecuting” for disciplinary purposes? It sure sounds like it involves any dealing with the PTO. If you were a non-agent, would you think it was okay to hold yourself out as being qualified to file an application someone else “prepared”, or respond to a notice to file missing parts?

  15. Stan E. Delo December 2, 2010 3:57 pm

    Hi Gene,

    Thanks for the very informative article, which helps to define the mechanism for getting to 24 months with a Provisional application for those of us that are not practitioners. Much like your own approach, my patent agent wrote the specification first, putting as much information into it as was available at the time of filing the PAP. Upon advice from him and another accomplished patent attorney, we did not file a claim with it though, so that the claims aspect is still open as things develop in a practical sense as seems appropriate. Would we still be able to use this program if there was no claim filed with the PAP? Michael Neustal used to advocate filing at least one claim, as a result of the FESTO decision of circa 1999 or so, but lately he seems ambivalent in that regard for various reasons. MN also agreed with David Kiewit that usually they write the claims first if there is a complete invention, and then derive the specification from that, so that the language is automatically compatible. I used to like writing the spec first, and then trying to derive claims from that, and then going back and *fixing* the spec to suit. Writing the claims up front just saves a step I suppose, and maybe reduces errors, but as you know very well I imagine, it is not always that simple with emerging inventions that are still being developed.

    BTW… You got my vote for the top 100 blawgs, mostly because of your predeliction for providing a wide range of topics that encourage inventors to attend to learn, and also for your habit of creating a reasonably civilized place where things can be discussed in a polite manner without Vandals trying to take the handle off of things. I still can’t understand why Dennis allows all the clowns to bury his comments section in useless, and often very nasty exchanges. Shades of Mike Masnick, and all like that.


  16. TINLA IANYL December 2, 2010 4:31 pm

    Regarding the following excerpt form the article:

    “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.”

    Please allow me to suggest that you include a caveat that you can not simply refile the provisional application if there have been any changes to the best mode and preferred embodiment since the provisional was filed. The regular application must be updated to include those details.

    My own experience is that additions must be made in more than two-thirds of cases, even where full applications are prepared and filed as provisionals.

  17. Dave Korpi December 3, 2010 1:02 am

    YES.. 24 months is SUPER COOL! Only problem is too many folks do not file because they do not know how to do it. See this website: and get your provisional filed NOW….

  18. Gene Quinn December 3, 2010 9:48 am


    First, thanks for the the vote! I really appreciate the vote, as well as your substantive comments here. We might not get as many comments as others, and sometimes things do get more heated than I like (I plead guilty) but I truly appreciate the efforts to keep things substantive.

    You would definitely be able to use the pilot program even without filing a claim in the provisional. You just need to file at least one claim at the time you file the nonprovisional. I don’t know why Festo would have dictated filing a claim in a provisional as an appropriate strategy. The doctrine of equivalents is really dead at the moment. It exists in name, but literally it is now impossible to prove there is equivalent infringement. To do so you would have to show that at the time of filing the application you couldn’t have written the claim; it was unforeseeable. If it was unforeseeable that should conclusively mean that the specification doesn’t support the equivalent, so you wouldn’t be entitled to the equivalent. The Supremes missed that point when they carelessly set forth the law. The Federal Circuit has chipped away at it since, so all the chambers of the gun have been unloaded. All that remains is for some Court to actually recognize there is no way to prove equivalent infringement. A long way to say that any Festo justification for the existence of a claim seems to be unpersuasive as the law has evolved over the last 10 years.

    There are many who don’t file any claims in a provisional, and I tend toward that myself. There are others who say that there is no way to make sure you have support for a claim unless you write a claim. That is not true and an overbroad statement. What is probably very true, however, is that many patent attorneys think in claims so they must write a claim to get going and for them it is the only formula that works. That is fine, but it is not an absolute statement of truth. It is about styles. If you have a claim written it doesn’t hurt to include at least one I suppose, although I do like the strategy of not showing more than required if the provisional is going to be shopped around to partners, possible licensing targets or for sale.



  19. Blind Dogma December 3, 2010 10:26 am


    To shed perhaps a different light on the comment “There are others who say that there is no way to make sure you have support for a claim unless you write a claim“, one should consider hwo an entire application is written.

    Of course, there is no one perfect wya to write an application. However, the most porpular (probably because ti tends to be the tightest) is to focus first on the claims. I am not talking abou the inventor fist focusing on the claims – it is assumed that the invention has been completed enough and theat the inventor’s input is before the attorney for the attorney to do his job. Since the claims are the meat of the legal instrument, and clearly rthe most important part, it is not surprising that up to 80% of the effort is often spent on the claims section. Generally speaking, the specification and drawings are their to support the claims. It may be a strategic decision to have a single specification used to launch a portfolio, with intent to have continuations and continuations-in-part, but that is a different animal. Here I am discussing the mroe usual single invention application. In this scenario, the comment does have traction, and while not necessarily a commandment to be followed, is a very good guideline to follow.

  20. Gene Quinn December 3, 2010 11:33 am


    I disagree that up to 80% of time is spent on the claims. That continues to presume that one starts with claims, which doesn’t have to be true. It is also potentially dangerous to do this because the result is typically a specification that supports the claims prepared and little or nothing else.

    I respectfully submit that if 80% of time is spent on the specification and then the specification is translated into claims what results is a far better work product because the specification will include far more detail than in the claims. This approach isn’t always appropriate, it does cost more and a lot of clients are not interested in that. But if what you want is the ability to have an omnibus filing that could support a patent portfolio and be available for strategic gaming in the event of litigation (i.e., adding your competitors claims to a pending case) then you better have spent far more time on the specification.

    I do readily acknowledge, however, that most attorneys start with the claims. With clients pushing down pricing they largely get what they deserve, so not casting negative light on others who do it differently.


  21. IANAE December 3, 2010 12:07 pm

    If it was unforeseeable that should conclusively mean that the specification doesn’t support the equivalent, so you wouldn’t be entitled to the equivalent.

    You wouldn’t be entitled to literally claim the equivalent. But you’re not doing that. You’re arguing that someone is using a now-obvious technical equivalent to frustrate the purpose of your patent and co-opt your invention, in a way that you could not have remedied at the time with better claim drafting.

    I’m fine with the principle that if you could have claimed it you should have claimed it. On the other hand, I would say that protecting unforeseeable later-developed equivalents that you couldn’t possibly have claimed (but would have, had you known) is more important for protecting the long-term value of patents than a higher standard of proof, especially in fast arts.

    It is also potentially dangerous to [start with the claims] because the result is typically a specification that supports the claims prepared and little or nothing else.

    I’ve had no end of problems with prosecuting applications that were drafted that way. If the original claims are rejected (and they almost always are), the spec gives you nothing to work with. It’s a very real risk, and every competent agent should bear it in mind.

    I will say, however, that it’s helpful to draft a spec with at least one almost-impossibly-broad independent claim in mind, drafted to essentially cover the inventor’s clever idea, if only to know the highest level of generality you need to support and to keep your perspective broader than a single prototype. The rest is a matter of getting all the information in, and it needs to go in both parts, so it’s probably relatively harmless to do either one before the other as long as you have a good system.

  22. two cents December 4, 2010 1:22 pm

    I find that I rarely start with the claims, but instead with drawings that give me an outline of what I am working with. Regardless, there has to be a back and forth with drawings, spec, claims, inventor to assure both solid disclosure and support for the claims.
    All too often I have to work with provisionals that are not well prepared, but were certainly cheap. That said, I also work with provisionals that had to be filed due to an imminent disclosure, and we have to take what we are given sometimes, but almost invariably a year later there is information that can be added to get to the point of the best application at that time. My main point above is that a properly done provisional is not a cheap way to file an application. And I strongly prefer not to play that game unless it is the best and sometimes only way to help your client. If you go on the assumption that you can always file a cheap and adequate provisiona, I think you will more often than not miss something that could have been handled if you spend more time to do it right.

  23. Stan E. Delo December 4, 2010 5:10 pm

    Two Cents-

    That’s exactly the approach my patent agent and I took, as he was not an expert in aeronautics for instance. We went back and forth about 12 times working up the spec, until he was satisfied that he understood the scope of the invention. He also wrote a single impossibly broad independent claim, which we of course didn’t file with the provisional app. He mentioned that the claims might evolve as the invention develops, and in my case I think he was right. Also in my case I supplied a Patent Wizard pro se document that had everything I could think of in it, which probably muddied the waters a bit, but at least the information was mostly all there at the outset, but just needed to be organized and presented properly so that it was ready to file as a NPA, and to avoid any possible mistakes of omission.


  24. blue December 5, 2010 5:14 am

    yeah 24 months is cool!

  25. patent litigation December 6, 2010 6:23 pm

    This program could help a few inventors at the margins, though generally I can’t see that it effects significant change for innovators. It could, however, help the USPTO with its backlog, if enough inventors opt to drop patent prosecution during the additional 12-month pendency period. This initiative, along with David Kappos’s other programs like the “green” patent fast-track and the 3-track plan, can conceivably help to whittle down the patent office’s burdensome backlog.

  26. Stan E. Delo December 6, 2010 7:55 pm

    patent litigation-

    As you mention, David and et al are trying to dig out from under a very large burden that they were left with, with nearly No resources available. The real and honest way out of the backlog problem is for Congress to stop raiding the cookie jar, and Give Back about a Billion dollars that they *borrowed* from the USPTO since circa 1992 or so. If that could happen, and David and et al were given the chance to up-date their computer infrastructure and hire about 3,000 new examiners and train them, things might be very different very shortly. I think it would be a real shame if David and his team were not given the chance to succeed for the lack of a penny or two of investment. Do the math!~ One Billion dollars of investment in the USPTO is how much of the total US governmental budget? I tend to think that Congress should Give the USPTO about 2 Billion as in a 100% interest payment for the Billion that they *borrowed* over the last 16 years or so, and then get out of the way and let David and et al try to fix things as well as is possible, given how far backwards the US has gone in that regard in the last 10 years or so.

    A very tough job, and thanks to David for trying to deal with it so diligently!

    All the best,

  27. Prof. Lulz December 9, 2010 6:14 pm

    “I would love for someone to clarify why 35 USC 133 isn’t an issue here.”

    From Ethicon v. Quigg, 849 F.2d, 1422 – Of course, an agency’s interpretation of a statute it administers is entitled to deference, Chevron U.S.A ., 467 U.S. at 844, but “the courts are the final authorities on issues of statutory construction. They must reject administrative constructions of the statute, whether reached by adjudication or by rulemaking, that are inconsistent with the statutory mandate or that frustrate the policy that Congress sought to implement.” FEC v. Democratic Senatorial Campaign Committee , 454 U.S. 27, 32 (1981).