Provisional Patent Extension: Everything You Need to Know
A provisional patent extension is an important portion of any patent application that all inventors must consider. 4 min read
2. Can I Renew a Provisional Patent Application?
3. How You Can Participate in the USPTO EMPPP
4. Disadvantages of the Extended Missing Parts Pilot Program
Provisional Patent Extension
A provisional patent extension is an important portion of any patent application that all inventors must consider. If you need additional time to consider your patent application, you may want to consider a provisional patent extension for your invention.
Can I Renew a Provisional Patent Application?
You may not renew or legally extend a provisional patent application. We will have to either file for a new provisional patent application, or extend your current application by 18 months with a PCT Patent application.
Your provisional patent will last for 12 months. To maintain your filing date of your patent, you will have to file a non-provisional patent before that 12-month time period expires. You can file an informal non-provisional patent application that claims the benefit of the provision if you wish to abandon it for a formal non-provisional application. This will be filed as a continuation in part.
If before the 12 months are up and you are not ready to file a non-provisional patent application, the inventor can file a brand new provisional patent application. If you are prior to 12 months from your provisional application date then file for a non-provisional patent, you may then be given a virtual extension to comply with the missing aspects of notification.
Once you file a new provisional patent application, you will get a new filing date. The filing date for your previous filing provisional patent will expire.
New and old provisional patents are considered independent of one another. This means that filing a new patent application will not affect the old one. The provisional patent application will be abandoned automatically after 12 months of filing date of the provisional application.
You may not file a provisional patent application again. Beginning on December 8, 2010, the U.S. Patent and Trademark Office began a one year program entitled, ''Extended Missing Parts Pilot Program (EMPPP)''.It was initially valid for non-provisional patent applications that were filed prior to December 8, 2011. However, it was continued for non-provisional patent applications filed prior to December 31, 2012.
The EMPPP will still require the application to file a non-provisional application during the one year period while waiting for a provisional application. The invention must be fully disclosed in the application.
The USPTO allows the patent application twelve months from filing of the non-provisional application to complete a Notice to File Missing Parts response.
The patent application must allow it to be published once 18 months have gone by to participate in the EMPPP. The USPTO states that there are three advantages of the EMPPP for the inventors and the public.
- The EMPPP provides additional time for you to determine how valuable your invention is. This also provides time to come up with commercialization initiatives.
- The EMPPP also provides more time for publication. It utilizes an 18-month publication system.
- Additionally, the EMPPP provides a reduced workload. It removes the applications from the USPTO, thus reducing their workload.
Remember that you should have a discussion with your patent attorney before going through the pilot EMPPP program.
How You Can Participate in the USPTO EMPPP
If you would like to join the EMPPP, your patent application needs to file a non-provisional patent application during the one yearwaiting period of your provisional patent that is waiting for publication.
There is a fee of $165 for a small entity. You will need to sign a declaration or oath and make a “claim of priority”. You will also need to turn inyour certification, thenask to join the EMPPP. You will not be allowed to file a request for non-publication in order to keep your patent secret. The USPTO can publish your non-provisional patent publication after 8 months. After 12 months of filing the non-provisional patent application, you will need to remit the search fee of $270 for a small entity. You will also have to pay an examination fee of $110 and a fee of $65 for an excess claims fee.
If you fail to file a non-provisional patent applicationready for publication, do not pay the filing fees and include an oath, you will have only two months to get those items in order.
If you do not want to pay for additional legal fees and spend additional time, it is best to include all of these steps in your initial non-provisional patent application filing.
Disadvantages of the Extended Missing Parts Pilot Program
The government fees for the EMPPP are going to be higher due to the $65 surcharge and the $300 publication fee that is due. There are also higher legal fees due to the extra work that is required by a patent attorney.
Another disadvantage is that the non-provisionalapplicationispublished automatically. Anyone will be able to see it USPTO’s website once the 18 months after the provisional patent application filing, typically within 8 months.
Publishingthe application will also end up giving away your trade secrets. The published applicationmay also be used as previous art that can result in a rejected application.
The EMPPP will not alter any Patent Term Adjustment provisions. This would include terms that require time isincluded in the 20-yearpatent term in the event of administrative USPTO delays.
The PTA will be offset by your failing to respond in a three-month time period to file any missing parts. You can also lose out on9 months of the patent term which you would otherwise have if not participating in the EMPPP.
It would appear that the EMPPP would seem attractive. However, if you think about all of the additional legal fees required and the necessary publishing of the patent after 18 months, you may find that the EMPPP is not worth the possible benefits it can provide.
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