The 24 Month Provisional.

Having more options on things has pluses and minuses. When it comes to patent filing strategies we could make some pretty good arguments that fewer options is a good thing because it makes decision making easier. But I would argue the opposite - there are so many different scenarios that clients have when filing for a particular invention that it is good to have multiple options depending on your particular scenario. And if you are busy running your business and do not have time to keep all of the options in your head - let your friendly patent practitioner do that for you.

The 24 Month Provisional

Commissioner Kappos of the USPTO is proposing a pilot program on provisional applications that would in effect add another option to provisionals by allowing the addition of another 12 months to the life of a provisional application - if you would want that. Small firms and independent inventors have used provisional patent applications for various purposes — to test the marketplace, attempt to gain financial backing, secure licensing agreements, and to further their product development. The extra 12 months before filing a non-provisional or PCT application sometimes allows them to answer those questions.

But not always. Many independent inventors have complained that they could use an additional time period because 12 months is frequently not enough time to "figure it all out". The commissioner's pilot program is designed to effectively extend that to 24 months. Now it is important to understand that the time period of a provisional is a matter of law - and only Congress can change that. But the Patent Office does have some leeway with its practice rules and have come up with a "way". The approach is to make a simple change in "missing parts" practice.

You may not be aware that in current practice before the patent office an applicant sometimes may get a "Notice of Missing Parts" immediately after filing a non-provisional patent when something is missing such as the full filing fees. The applicant then has two months to rectify the missing part. Under this 24 month provisional pilot an applicant filing a non-provisional within 12 months of an original provisional could file it and pay only the basic non-provisional filing fee (small entity fee = $165). The search fee ($270) and examination fee ($110) would then be "missing". But under the pilot the applicant could, in the filing, formally request a delay in payment of the search and examination fees for and additional 12 months. There would be a penalty fee for delaying to pay, but that will be fairly affordable (~$65). All other application related expenses are delayed an additional 12 months.

At the end of the 24 month provisional period, the applicant can file additional claims and other disclosures by way of a preliminary amendment.

So What's the Big Deal?

Frankly - for many applicants there is nothing useful here. If you seldom use provisionals now, because you see no value in using them, or if and have a more than adequate budget for filing non-provisionals exclusively then don't bother to read any further. But in my practice which is exclusively focused on small companies and independent inventors the extra time and the ability to defray costs before deciding this 24 month provisional might be of interest.

Very Important Disclaimers

Everything I have said before in my newsletters and on The Business of Patents website about provisionals still holds and is critically important. As you are probably aware I am not a fan of "skimpy" provisionals. The non-provisional application disclosure requirements would have to be met in order to receive a filing date and enter the 12-month extension period. That means that both the provisional and non-provisional application for which a 12-month extension is requested would have to have a written description that clearly describes the invention so that someone with ordinary skill in the same technology can make and use the invention. And the non-provisional must be complete with respect to all other requirements (claims, etc.) The applicant/inventor would then also pay the filing fee, but not the search and examination fees. The USPTO would then respond with a Notice of Missing Parts, allowing 12 months to pay the search and examination fees.

Other Important Issues

The 24 month provisional pilot program would not change the requirement that an applicant must file the non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If they are filed after the 12 months of the provisional they lose the priority date of the provisional.

Also, importantly, this pilot applies to U.S. filings. If you are planning foreign filings, either direct or through a PCT filing, that must be done before the original 12 months after the provisional filing date. Thus many of my clients, who do a lot of foreign filings and have migrated to a filing strategy of filing 1) provisionally, then 2) filing a PCT for later entry to both foreign and US filings, would not benefit from this approach.

Should You Use It?

Use of this 24 month provisional approach is highly situation specific. And I have not covered every possible issue. But if you file only in the U.S. and see a need to extend your decision making on pursuing your non-provisional filings you might want to give it some consideration when the pilot program comes available. Be sure to discuss it thoroughly with your patent practitioner.


The 24 Month Provisional

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Mike Ervin

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