The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Aug 18th, 2019, 6:43pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Term
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Provisional->non.prov and patent term
« No topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Provisional->non.prov and patent term  (Read 1141 times)
Mike G
Guest
Provisional->non.prov and patent term
« on: Jan 2nd, 2008, 7:45pm »
Quote Quote Modify Modify Remove Remove

I'm now a bit confused how the 20-year patent is calculated in the case of provisional application. Some answers to test questions claim that the patent term is calculated from the provisional application filing date, while usually I see it calculated from non-provisional date.
 
Are there two different ways to convert provisional to non-provisional?
That would explain why there are two different schemes to calculate the patent term.
 
I found this from MPEP (or was it from CFR):
 
(3)
A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested.  
Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the  
provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph
(c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112.
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: Provisional->non.prov and patent term
« Reply #1 on: Jan 3rd, 2008, 7:23am »
Quote Quote Modify Modify

on Jan 2nd, 2008, 7:45pm, Mike G wrote:
Are there two different ways to convert provisional to non-provisional?
That would explain why there are two different schemes to calculate the patent term.

 
Something like that.  But I wouldn't use the term converting for the two shcemes.
 
There is only one way to convert a provisional to a non-provisional.  If  you make a conversion, the provisional becomes a non-provisional and your patent term dates from the filing date of the provisional.   Conversion is generally not used.
 
Alternatively, you can file a non-provisional that makes a benefit claim to the provisional.  In this case, patent term dates from the filing date of the non-provisional.  This is the method generally used.  
 
 
Quote:
Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the  
provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph).

 
I think this paragraph sums things up...
IP Logged

Isaac
Mike G
Guest
Re: Provisional->non.prov and patent term
« Reply #2 on: Jan 3rd, 2008, 11:07am »
Quote Quote Modify Modify Remove Remove

thanks a lot for the explanation!
 
IP Logged
Just Lazy
Guest
Re: Provisional->non.prov and patent term
« Reply #3 on: Jan 4th, 2008, 7:12am »
Quote Quote Modify Modify Remove Remove

Hey, I know I'm just being lazy by not sorting out all the differences, but can anybody simply state one or more advantages to converting a provisional?
 
I've never actually converted a provisional and have never heard anyone suggest a good reason to so do.
 
It is oddly vogue at my current firm to refer to the filing of a non-provisional patent application, which claims priority to an earlier filed provisional patent application, as the "conversion" of the provisional patent application. I abhor that terminology for at least two reasons. That terminology is not in keeping of course with the language of the MPEP. But also, a client relations problem sometimes occurs when the client gets the bill. Sometimes clients question why it takes so much money to "convert" something that's already written.
 
At one firm where I worked, we agreed to refer to provisional patent applications as "provisional filings." By trial and error, we found that this terminology helped avoid some of the confusion around provisional-whatever-you-call-ems. After all, from a layman's point of view, a provisional-whatever-you-call-it is not a patent application ... so we stopped calling them patent applications and just started calling them filings. Our typical clients were not patent savvy. The few that questioned our chosen terminology were the ones that were quickly keen to understand the difference and understand why we chose our terminology.
 
We also stopped using the word "non-provisional" to describe utility patent applications. After all, why would someone shell out big bucks to get you to write a "non-something."
 
This may all sound gimmicky, but we started using the terms "provisional filing" and "patent application," and found we were better able to explain the various options and their differences to our clients.
 
Back to my question:
Can anybody simply state one or more advantages to converting a provisional?
 
Tally-Ho! ... oh wait ... er ... um ... Tally-Ha!
(there, now no gender-specific disrespect can be construed ... couldn't they just leave Santa Claus alone? ... next they're gonna want to unionize the elves and investigate those peky height-discrimination complaints ... and why does it seem that all of Santa's elves are male ... hmmm ... maybe he IS a ****ist ...)
 
Just Lazy
IP Logged
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« No topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board