Notwithstanding the fact the the patent statute provides that provisional applications expire 12 months after their filing date, the PTO published a request for comments in the Federal Register last week that would effectively extend the term of a provisional application to 24 months. The proposal is a bit complicated, so stay with me.
Under current practice, in order to gain the benefit of a provisional application, an applicant must submit a nonprovisional application within 12 months of filing the provisional application, or must at least convert the provisional application to a non-provisional application. The non-provisional application may be filed without the required filing fees or an executed oath or declaration. In such a case, the applicant is given two months to respond to a PTO “Notice to File Missing Parts” by including the missing fees and declaration. For additional fees, the time period may be extended up to 5 additional months. Given that the PTO usually takes a couple of weeks to send the Notice, the applicant can file the missing information up to about 7 1/2 months after the non-provisional filing. The surcharge for the benefit of late filing is $130, plus $2,350 for the 5 month extension of time (plus the application filing, examination, and search fees), although these fees are reduced by half for small entities.
Under the new proposal by the PTO, a non-provisional application would still need to be filed within 12 months of the provisional application filing date. The non-provisional application must include at least one claim, an executed declaration, and the basic filing fee (currently $330/$165 small entity). In addition, the applicant could not request non-publication of the application. The new procedure would permit the applicant up to 12 additional months to decide whether to move forward with the application by filing the search and examination fees (currently $760/$380 small entity) and any excess claim fees. At the end of the 24 month period, the applicant can file additional claims and other disclosure by way of a preliminary amendment.
The purpose of the new procedure would be:
permitting additional time to determine if patent protection should be sought at a relatively low cost and by permitting applicants to focus efforts on commercialization during this period.
The PTO notice indicates that about 50% of all provisional applications are currently abandoned without a corresponding non-provisional application being filed and that the percentage has been declining over time. Some applicants use the Missing Parts procedure to effectively extend the time of the provisional application, and some even file one or more continuation applications to extend the time even further. The PTO believes this procedure would result in significant savings to applicants and focus PTO resources on applications that applicants want to have examined.
It seems that an easier solution would be to have Congress amend the statute to permit provisional applications to last for 24 months. This is a bit complicated however. First, the Paris Convention requires that any foreign or international patent application claiming priority to a provisional application must be filed within 12 months of the provisional filing date. This is not and cannot be changed by the new procedure.
Second, 35 U.S.C. § 102(b) creates a statutory bar to inventions that are publicly disclosed, offered for sale, or that appear in a printed publication more than 12 months prior to the applications earliest priority date.
Provisional applications are supposed to permit an applicant to file an application and then spend the next 12 months seeking to commercialize the application. The PTO contends (and many would agree) that this is not enough time. Unfortunately, many (probably a majority) of provisional applications are not worth the paper (or pixels) they are written on. Many applicants write and file their own provisional applications and only turn to a patent attorney for assistance once a non-provisional application is required. Hopefully, this is done prior to first public disclosure or commercialization. Given the 12 month provisional pendency, this is typically the case. The inventor files the provisional, then seeks to commercialize the application. Under the PTO’s newly proposed procedure, however, the inventor may instead wait to seek an attorney’s assistance near the end of the 24 month period. By that time, it may be too late.
The PTO’s notice does suggest that provisionals be as complete as possible, but few inventors read such notices. The bottom line: if this procedure becomes effective, don’t wait to seek assistance from an attorney until after the 12 month statutory bar period. If you write your own provisional application, BE CAREFUL. Provisional applications only provide a benefit to the applicant when they provide as complete and enabling a disclosure as is available at the time of filing. Any new claims or disclosure added later must be supported by the original provisional (or non-provisional in the case of the new procedure) or they may be rejected as adding new matter.
Hal Wegner has prepared a paper warning about these issues.
I would submit that a better suggestion would be one that the PTO considered last year: deferred examination. In my experience, most applicants would prefer quicker PTO examination, not slower. The PTO could, however, implement a procedure to give applicants more time by implementing deferred examination where the search and examination fees could be deferred for a specific period of time to give applicants who desire it this additional time.
The PTO is accepting comments on the new procedure until June 1.