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.