22 - Converting patent applications

Deciding Office:  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 (III)  and 601.01(c).  

In general, these are the steps for filing a petition for converting patent applications:

  • Conversion from a nonprovisional application to a provisional 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, or
    • the expiration of 12 months after the filing date of the 37 CFR 1.53(b) application, 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 Fees and payment page for code 1807 under the Miscellaneous Patent Fees.

How to file:

This petition may be filed using any of these delivery methods.

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, 365, or 386. See MPEP § 201.04(III).   After the nonprovisional application has been converted to a provisional application, any priority or benefit claims submitted in the nonprovisional application will be disregarded.

  • Conversion from a provisional application to a nonprovisional application

An application filed under 37 CFR 1.53(c) may be converted to a nonprovisional application in accordance with the procedure described in 37 CFR 1.53(c)(3). Applicants should carefully consider the patent term consequences of requesting conversion rather than simply filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term.

The procedure requires: 

  • the filing of a request in the provisional application for the conversion of the provisional application to a nonprovisional application and
  • the fee set forth in 37 CFR 1.17(i).
  • The nonprovisional application resulting from conversion of a provisional application must also include the
    • basic filing fee,
    • search fee, and
    • examination fee for the nonprovisional application.  
  • In addition, if the provisional application was not filed with an executed oath or declaration and the appropriate fees for a nonprovisional application, the surcharge set forth in 37 CFR 1.16(f) is required.  
  • Furthermore, an inventor’s oath or declaration is required to be filed in accordance with 37 CFR 1.53(f) if the provisional application was filed on or after September 16, 2012 (pre-AIA), 37 CFR 1.53(f) if the provisional application was filed prior to September 16, 2012).  See MPEP § 601.01(a).
  • Filing of the request for conversion in the provisional application is required prior to the abandonment of the provisional application or the expiration of 12 months after the filing date of the 37 CFR 1.53(c) application, 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(c).

Fees:

For fees due, please consult the current USPTO Fee Schedule for code 1807 under the Miscellaneous Patent Fees.

How to file:

This petition may be filed using any of these delivery methods.

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

For the relevant patent laws and rules applicable to petitions for converting patent applications, please see:

  • 37 CFR1.53, Application number, filing date, and completion of application.;
  • MPEP § 201.04 Provisional aApplication;
  • MPEP § 506, Completeness of originalapplication;
  • MPEP § 601.01(c), Conversion to or from a provisional application; and
  • MPEP § 1120, Eighteen-month publication of patent applications

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).

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The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation.  Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.