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22 - Converting Patent Applications

Deciding Office: The Office of Petitions

These requests are handled by Office of Petitions only when the application is before the Office of Petitions.

The criteria for Converting Patent Applications are set forth in 37 CFR 1.53, MPEP § §201.04(b) and 601.01(c).

In general, these are the steps to follow for filing a Petition for Converting Patent Applications:

Converting NONPROVISIONAL application into a PROVISIONAL Application

  • An application filed under 37 CFR 1.53(b) may be converted to a provisional application provided a request for conversion is submitted along with the fee as set forth in 37 CFR 1.17(q). The request and fee must be submitted prior to the earlier of the abandonment of the nonprovisional application, the payment of the issue fee, the expiration of 12 months after the filing date of the nonprovisional application, or the filing of a request for statutory invention registration. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(b). See MPEP § 601.01(c)

Fees:

  • For fees due, please consult the Current USPTO Fee Schedule on the Fee Information Page for code 1807 under the Miscellaneous Patent Fees.

How to File:


Converting a PROVISIONAL application into a NONPROVISIONAL Application

  • An application filed under 37 CFR 1.53(b) may be converted to a provisional application in accordance with the procedure described in 37 CFR 1.53(c)(2). The procedure requires the filing of a request for conversion and the processing fee set forth in 37 CFR 1.17(q) . The provisional application filing fee (37 CFR 1.16(d)) and the surcharge set forth in 37 CFR 1.16(g) are also required, although these fees do not need to be paid with the request for conversion. If the provisional application filing fee and the surcharge are not paid at the time of filing of the request for conversion, the Office will send a Notice to File Missing Parts in the provisional application requiring these fees.  Filing of the request in the nonprovisional application is required prior to the abandonment of the 37 CFR 1.53(b) application, the payment of the issue fee, the expiration of 12 months after the filing date of the 37 CFR 1.53(b) application, or the filing of a request for a statutory invention registration under 37 CFR 1.293, whichever event is earlier. The grant of any such request does not entitle applicant to a refund of the fees properly paid in the application filed under 37 CFR 1.53(b).

Fees

  • For fees due, please consult the Current USPTO Fee Schedule on the Fee Information Page for code 1807 under the Miscellaneous Patent Fees.

How to File:

  • Applicants who wish to file a request for conversion under 37 CFR 1.53(c)(2) by mail should designate “Mail Stop Conversion” as part of the U. S. Patent and Trademark Office address.

Please Note:

  • Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process. The Office cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application has been initiated. For information on procedures for removing an application from publication, see MPEP § 1120.
  • A provisional application is not entitled to claim priority to or benefit of a prior-filed application under 35 U.S.C. 119, 120, 121, or 365. See MPEP § 201.04(b). After the nonprovisonal application has been converted to a provisional application, any priority or benefit claims submitted in the nonprovisional application will be disregarded.

For the relevant patent laws and rules applicable to Petition for Converting Patent Applications, please see:

  • 37 CFR 1.53, Application number, filing date, and completion of application.;
  • MPEP § 201.04(b), Provisional Application;
  • MPEP § 506, Completeness of Original Application; and
  • MPEP § 601.01(c), Conversion to or from a Provisional Application

Forms:

No form available.  Submit a signed request that includes information listed in Requirements of a Petition.


For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).

United States Patent and Trademark Office
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Last Modified: 10/23/2013 11:55:25 AM