November's Featured Article
Providing Inventors More Time and Options
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. However, many independent inventors have indicated that they would benefit from an extension of the provisional period for at least another year beyond the one year currently provided-for by law for provisional patent filings. The reasons most often cited by inventors are that one year is just not sufficient time to find financial help, evaluate a product’s worth in the marketplace or to completely develop the invention for commercialization.
After hearing these concerns from many inventors across the country, the USPTO took a look at whether it can extend the current one-year requirement for converting a provisional application into a regular, nonprovisional filing. While the current one-year requirement provided by law can only be amended by Congress, the USPTO has found it could achieve the essence of the request by changing our “missing parts” practice to provide for an additional 12 months to perfect a nonprovisional patent application. This would serve as a vehicle for inventors, at their option, to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a regular (nonprovisional) patent application forward.
Earlier this year, we asked for public comments on the proposed change that would provide 12 additional months to pay the search and examination fees in a nonprovisional application. The USPTO received a large number of comments in response to this proposal. While most independent inventors approved of the proposed changes, some individuals and businesses voiced concerns and offered constructive comments. The USPTO has taken these comments into consideration and has been working on appropriate modifications to our original proposal. We expect to issue a notice shortly, inaugurating a pilot to implement this new practice.
It is important to understand how the 12 month extension pilot will work. In order to take advantage of the additional 12 months to pay the search and examination fees in a nonprovisional application, an applicant/inventor must file a nonprovisional application no later than 12 months after the filing date of the provisional application, and request a delay in payment of the search and examination fees at the same time the nonprovisional application is filed. The USPTO is providing applicants with a form for the certification required, and to request a delay in payment of the search and examination fees (PTO/SB/421).
The nonprovisional application disclosure requirements would have to be met in order to receive a filing date and enter the 12-month extension period. That means the nonprovisional 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. It would also have to contain at least one claim, and drawings, when necessary, to understand the invention. 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.
It is critical to remember that the pilot program would not change the requirement that an applicant must file a nonprovisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If a nonprovisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application, it may not be entitled to the benefit of right of priority to the provisional application. However, as described above, the new pilot will enable electing applicants to delay other application-related expenses for an additional 12 months.
Again, we expect to move forward with this pilot program in the near future. To gain a better understanding of the utility of this new practice, the USPTO will be conducting at least one webinar in the near future and will have training packages available on the USPTO website (www.uspto.gov). In addition, independent inventors can contact the Inventors Assistance Center at 800-786-9199 with questions.
The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.