On April 2, 2010, the USPTO issued a press release and published in the Federal Register a request for comment on a proposed change that would effectively give applicants a 12-month extension to the current provisional application period. Under the current rules, an applicant must file a nonprovisional application within 12-months after the filing of a provisional application pursuant to 35 U.S.C. § 119(e) and must thereafter complete any missing parts to that application within a time period of up to a maximum of seven months.

The latest proposed revision to the missing part practice would now give applicants an additional 12-month period under which to complete this application. Even with the new proposed revision, a nonprovisional application must still be filed within the first 12-month period following the filing of a provisional application and have a properly executed oath or declaration along with at least one claim. Applicants, however, will now be given up to a year rather than seven months to complete the nonprovisional application by payment of the required search fee and a nominal late payment surcharge. It should be noted that this change would not affect foreign filings, which must still be filed within 12 months after the filing date of a provisional application in accordance with the Paris Convention for the Protection of Industrial Property. Also, by exploiting the delayed payment, an applicant foregoes his right to opt not to have the patent application published at 18 months from the provisional patent application filing date.

The USPTO believes that by providing this additional time, applicants may now “ascertain the value of their inventions, thereby helping applicants decide whether to incur the additional costs associated with pursuing patent rights.” While initially expending only a relatively low cost to file the application, the applicant may now take the additional 12-month period to focus their time and efforts on commercialization. Additionally, the USPTO explained that, under the current statutory scheme, applicants routinely file several nonprovisional applications, which are dependant on various provisional applications. By providing an additional 12-month period, the USPTO believes that this will “help applicants focus on their most important applications and conserve USPTO resources.”

While the argument for cost savings is noted, overall this change may be more beneficial to only a relatively small number of pro se applicants who prepare and file applications on their own behalf without the assistance of skilled patent attorneys or agents. For those pro se applicants, this additional time would seem to allow them the opportunity to attempt to commercialize their potential patent while avoiding their only out of pocket expense of having to pay a large portion of the filing fees and ultimately, if and when a patent were to issue, the maintenance fees.

For all other applicants, including nearly all businesses and most individuals, relying on patent attorneys or agents for preparing patent applications, the cost of careful preparation of a patent application by the patent attorney or agent is the majority of where the out of pocket costs are spent rather than in the filing fees. Most business entities advantageously rely on in-house attorneys and/or retained outside patent counsel to draft the patent application for obtaining broad patent protection. As a consequence, it would be rare that such an applicant under the present rules would be willing to pay extension fees for merely delaying payment of the search fee.

Further, the USPTO notes that with regard to this proposed change, the non-provisional patent application need only include a single claim. However, the cost of preparing additional claims is incremental to the cost of preparing the patent application specification and single claim. Furthermore, it will be questionable whether this additional time will even be used to its fullest extent since the revision is adding just under half a year to the process in light of the current time to respond to a missing parts notice of up to seven months. Comments are to be submitted to the USPTO on or before June 1, 2010. Stay tuned – we will keep you updated.

Robert E. Rudnick is a Director in the Gibbons Intellectual Property Department.