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« Court Report - Part II | Main | Court Report - Part III »

December 13, 2010


You still need to file your PCT or foreign applications by the end of the first year, so what do you save here - a few hundred dollars on your US non-provisional filing? Anyone want to wager on how long it takes until someone misses their Paris Convention priority date thinking they have two years from their provisional filing? And if you're only filing in the USA, using this program precludes non-publication. I don't see how this program will be useful.


It isn't there to benefit applicants. It's there to benefit the Office. I am sure an application will not get into the queue of unexamined applications until the formalities are perfected or the 24--month period expires (whichever is later). So it will help Office statistics, not the patent system per se.

But maybe I'm just being cynical.

Thanks for the comment.

I tend to agree with Dan F and Kevin that there is not a lot here for independents like myself to get very excited about. Like the Green patent pilot program, the PTO is not allowing the non-publication option with this program, which makes both of them a no-go in my situation. I don't plan to file any PCT apps in the near future, so why this big press to publish things to the world? Perhaps some sort of altruistic effort to share all of MY efforts with the rest of the world to harmonize things? What ever happened to the concept of the USPTO keeping applications confidential until after they have issued? If my application fails due to unforeseen prior art, at least I might be able to validly try again, instead of taking the core portion of my inventions and making it possible for billions to be able to see them with a few clicks.

For an extra 3 or $400 in search and examination fees, I will gladly go the extra mile to prevent the complete loss of my IP rights in the rest of the world for a few more years. Thanks for your interesting take on the matter Donald Z...


I agree with Dan, Kevin and Stan. It's hard to see much benefit to applicants. I'd be very surprised if more than a hundred of these are filed.

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.

Also its not really clear in any of the documentation what the differences are between thw non-provisional patent application you submit to get the extra 12 months and the one you submit at the end of the 24 months.

Do you submit a properly written and complete non-provisional or do you just slap something together and submit the real deal after another 12 months. I cant seem to find any info about that online at all.

IE: Can you make changes to the first non-provisional with the one you submit at the 24 month mark?

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