How to Delay Filing a Utility Patent Application off a Provisional Application

1. THE INTELLECTUAL PROPERTY MINUTE
December 2010: Delayed Examination
The PTO recently initiated a pilot program that effectively allows a one-year extension to meet the filing requirements for
a non-provisional application which claims priority of a provisional application.
Summary of the Pilot Program:
1. File a provisional application that is pending for 12 months.
2. File a non-provisional patent application claiming priority of the provisional application, along with a certification and
request (PTO/SB/421) to enter into the pilot program. At the time of filing, you must pay the filing fee but need not pay
the search, examination, or excess claim fees. You can NOT have filed a non-publication request.
3. The PTO will issue an extended Notice to File Missing Parts for the missing fees. The time for replying to the extended
Notice is 12 months.
4. Within 12 months, you must pay the search and examination fees, any excess claim fees, and the $65 surcharge for the
extended Notice of Missing Parts.
5. The application is then officially complete and enters the examination queue.
6. The effective result of the pilot program is that examination of the patent application has been delayed for 24 months
(the 12 month provisional period plus the 12 month extended missing parts period).
Advantages:
1. Reduced initial filing fees since you don’t need to pay the search, examination, or excess claim fees.
2. Additional 12 months before examination begins, thereby delaying prosecution costs and allowing better assessment of
the commercial potential of the invention.
Disadvantages:
1. Increased total cost of PTO fees (you have to eventually pay the $65 surcharge for the extended Notice).
2. Increased fees (attorney fees have to be paid for the additional work related to the request to enter the pilot program and
the time required for docketing, reminders, etc.).
3. Publication, since non-publication of the application is not an option.
4. Loss of patent term since examination is delayed for a year.
Notes:
1. The pilot program does NOT change the requirement that an Applicant must file a non-provisional application, foreign,
or PCT application within 12 months of filing the provisional application.
2. Given that the saved PTO costs are relatively minor compared to the attorney fees that still must expended to draft the
non-provisional application, the pilot program will most likely benefit those who are very cost-sensitive (i.e., individuals
and start-ups).
3. But there will be rare instances where less cost-sensitive applicants (i.e., corporation and in-house counsel) will take
advantage of this pilot program. These instances will happen when the added fees/costs and loss of patent term will be
offset by the additional 12 months that might be needed to determine the commercial potential of the invention.