USPTO Seeks to Effectively Double Provisional Application Period

    By Donald Zuhn --

On Friday, the U.S. Patent and Trademark Office published a notice in the Federal Register (75 Fed. Reg. 16750) seeking comments regarding a proposed change in practice that would, according to Office press release, effectively provide a 12‑month extension to the existing 12-month provisional application period.  In particular, the Office is seeking comments regarding a change from the current missing parts practice -- which permits an applicant to pay the filing fees and submit an executed oath or declaration after the filing of a nonprovisional application within a two-month time period that is extendable for an additional five months on payment of extension of time fees -- to a modified practice in which applicants would file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed (as well as pay the basic filing fee, submit an executed oath or declaration, and not file a nonpublication request) and then be given a 12-month period within which to decide whether the nonprovisional application should be completed by paying the required surcharge and the search, examination, and any excess claim fees.

According to the Office's notice, the proposed change is a "response to a number of requests to reduce the costs due one year after filing a provisional application."  In addition to the requirements listed above, the notice states that the nonprovisional application filed at the 12-month date would need to be in condition for publication (as nonprovisional applications would still be published 18 months from the earliest filing date for which a benefit is sought).  In describing the benefits of the proposed change, the Office suggests that:

The proposal would benefit applicants by 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 proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which the applicants have decided not to pursue examination.

The Office, however, also warns that:

[T]he extended missing parts period would not affect the 12-month priority period provided by the Paris Convention for the Protection of Industrial Property and, thus, any foreign filings would still need to be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the provisional application in the foreign-filed application.

Interestingly, the Office notes that under current provisional practice, approximately 50% of all provisional applications are abandoned without the subsequent filing of nonprovisional applications claiming their benefit.  The Office also notes that the number of abandoned provisional applications has been increasing over time (see chart below, which was prepared using data presented in the notice):

The Office points out that:

Many applicants have expressed that a longer period of time to draft a complete set of claims and pay fees would facilitate their efforts to determine whether their inventions have commercial viability, and would enable more informed and economically efficient decision making for applicants considering filing nonprovisional applications claiming benefit of prior provisional applications.

The Office also points out that in order to extend the time period for completing a nonprovisional application, some applicants choose to file a continuing application claiming the benefit of a first-filed nonprovisional application rather than reply to a notice of missing parts mailed on that first-filed nonprovisional application.  Thus, the Office's proposal "seeks to provide applicants with a streamlined alternative to this practice by eliminating the need to refile the application and to pay significant extension of time fees."  The notice indicates that nonprovisional applications for which completion was delayed would be placed in the examination queue based on their actual filing date, and therefore, there would be no change made in the order in which applications are examined as a result of the Office's proposed change to missing parts practice.

With respect to the impact of the Office's proposal on patent term adjustment (PTA) calculations, the notice states that:

Any patent term adjustment (PTA) accrued by an applicant based on certain administrative delays by the USPTO is offset by a reduction for failing to reply to a notice by the USPTO within three months.  See 37 CFR 1.704(b).  Thus, if an applicant replies to a notice to file missing parts more than three months after mailing of the notice, the additional time would be treated as an offset to any positive PTA that will be accrued by applicant.

Under the proposed change in missing parts practice, a missing parts notice would be issued -- where the requirements discussed above are met -- providing the applicant with a 12-month non-extendable period of reply rather than a 2-month extendable period of reply.  Thus, applicants choosing to wait the full 12 months to reply would be docked for 9 months of applicant delay.

In addition to the change in missing parts practice, the Office is also considering offering an optional service of preparing an international style search report during the 12-month extended missing parts period.  This proposed search would not replace, but would only supplement, the search that is currently done as part of the examination of nonprovisional applications.

According to the notice, comments must be submitted on or before June 1, 2010 to be considered.  Comments should be submitted by e-mail to extended_missing_parts@uspto.gov (which the Office prefers) or by regular mail addressed to:  Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Eugenia A. Jones.

Comments

[Noise above Law]

My ruminations on this are at:
http://www.ipwatchdog.com/2010/04/01/uspto-proposes-24-month-provisional-application-pendency/id=9959/

[Courtenay Brinckerhoff]

I think the PTO proposal is very misleading because it is not extending a prov to 24 months, just providing a really long response period for the Missing Parts. You still have to file a full application that describes and enables everything you want to claim. As others have noted, the real expense of filing an application is in writing a solid application, not the PTO fees. And, if you are filing internationally, you still have to file your PCT at the 12 month date (you can enter the US via the PCT to delay US fees already).

And, if Congress ever did change provisional pendency to two years (as suggested by IPWatchdog) it would be a nightmare for international priority purposes, since the Paris Convention only lets you go back one year.

[Patent Attorney Arizona]

Do you know why there will be a restriction on the non-publication request? Because of the focus on increasing the prior art, or is there an international treaty element that I am missing?