LawInfo

Once a provisional application is filed, an alternative to filing a corresponding non­provisional application is to convert the provisional application to a non­provisional application by filing a grantable petition under 37 CFR §1.53(c)(3) requesting such a conversion within 12 months of the provisional application filing date.

However, converting a provisional application to a non­provisional application (versus filing a non­provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non­provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application.

By filing a provisional application first, and then filing a corresponding non­provisional application that references the provisional application within the 12­month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. However, the corresponding full application must contain or be amended to contain a specific reference to the provisional application. The U.S. Patent Office will then review and compare the full patent application with the earlier­filed PPA. If the U.S. Patent Office deems the full patent application similar to the exact specifications of the PPA, the U.S. Patent Office will proceed to "relate back" the current full patent application date to the earlier filing date of the PPA.

Because full patent applications take months to complete, you are best to seek the advice and counsel of a patent attorney to assist you in completing the full application and making sure that the U.S. Patent Offices does deem the full patent application similar to the exact specifications of the PPA, or you will lose the filing date you secured with your PPA. This could be disastrous for you, especially if your invention does prove to be lucrative.

Intellectual Property Sub-categories