Provisional Patents Gain New Life: 12 month extension on provisional patents?

For some time now, there’s been a pilot program in place to extend the life of provisional patents from 12 months to 24 months.  Independent inventors have a vested interest in this program and it pays to understand how to benefit from it.  Inventors should be aware that this program is not exactly a simple time extension, it requires more. In fact it still requires the filing of a non provisional patent application! In essence the program works by extending Notice of Missing Parts practice as follows:

  • File a provisional application
  • File a non-provisional application within one year;
  • Claim the benefit of the filing date of the provisional application
  • Include at least one claim;
  • Include drawings if necessary; and
  • Request a delay in payment of the search and examination fees at the time of the non-provisional application filing using form PTO/SB/421

The applicant pays the basic filing fee at the time of filing, but not the search and examination fees. A “Notice to File Missing Parts” allows the applicant or inventor 12 months to pay the search and examination fees.

A couple of issues come up with this program.  First, the requirement of a non-provisional (utility or plant) filing requires inventors to actually submit a complete non provisional application including claims, drawings and a written description.  Sure, it can be less formal, perhaps have an incomplete claims listing, or informal drawings but that kind of drafting is a substantial undertaking.  Often it is the drafting of the non provisional patent application that is the most difficult for independent inventors.  Second, failure to file a PCT (International) application within 1 year of the provisional filing date can result in a loss of rights.  Consult a knowledgeable patent attorney for advice on your particular case.

Provisional patent extension not so simple.

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