Establishment of Box CONVERSION

Office of Patent Legal Adminstration << Pre-OG Notices << Establishment of Box CONVERSION

Effective immediately, the USPTO has established Box CONVERSION as a new Special Box for utility patent applicants who wish to file a conversion request under either 37 CFR 1.53(c)(2) or
37 CFR 1.53(c)(3). Applicants who wish to file a conversion request under either § 1.53(c)(2) or
§ 1.53(c)(3) by mail should designate Box CONVERSION as part of the USPTO address.

A utility patent application filed as a nonprovisional application under § 1.53(b) may be converted to a provisional application under § 1.53(c) provided a grantable request under § 1.53(c)(2) is filed prior to the earliest of: (1) abandonment of the nonprovisional application; (2) payment of the issue fee on the nonprovisional application; (3) the expiration of twelve months after the filing date of the nonprovisional application; or (4) the filing of a request for a statutory invention registration in the nonprovisional application. Conversely, a utility patent application filed as a provisional application under § 1.53(c) may be converted to a nonprovisional application under § 1.53(b) provided a grantable request under § 1.53(c)(3) is filed prior to the earliest of: (1) abandonment of the provisional application; or (2) the expiration of twelve months after the filing date of the provisional application. Note that §1.53(c)(3) cautions that converting a provisional application to a nonprovisional application has an adverse patent term impact compared to filing a nonprovisional application claiming the benefit under 35 USC 119(e) to the provisional application.

Previously, conversion requests under § 1.53(c)(2) and §1.53(c)(3) were being mailed to the USPTO with inappropriate USPTO Special Box designations (e.g., "Box Provisional Patent Application" or "Box PATENT APPLICATION" as part of the USPTO address). As Box Provisional Patent Application and Box PATENT APPLICATION are only to be used for new application filings, conversion requests should not be sent in envelopes designating either of those two Special Boxes. Designating either one of those two Special Boxes could result in a delay in processing the conversion request. It is anticipated that the establishment of BOX CONVERSION, and its proper use by applicants, will assist the USPTO to more efficiently process conversion requests under
§ 1.53(c)(2) and §1.53(c)(3).

NOTE: Box CONVERSION should only be used for mailing conversion requests under either one of §§ 1.53(c)(2) or 1.53(c)(3) to the USPTO. Documents other than conversion requests under either one of §§ 1.53(c)(2) or 1.53(c)(3) that are placed in an envelope addressed to Box CONVERSION may be significantly delayed in reaching their intended destination.