Filing a provisional application: pay the filing fee or not?

[bartmans]

It is not necessary to pay the filing fee for a provisional application if you only want to establish a date of filing to be able to later claim priority.

By the way, this is also possible in any country that is a member of the PLT treaty or that has legislation that is conform this treaty. According to the PLT you only need 3 things to establish a filing date:
- a description of your invention or something that seems to be a description (a drawing would be sufficient);
- some information how to contact the applicant; and
- an indication that a patent is sought.
Thus: no need for a particular language, no need for claims and no need to pay any fees.

Normally, a provisional application expires after 12 months and is only suitable to claim priority in a subsequent US utility application, a PCT application or a a national application in another country.
It seems to me, that paying the provisional filing fee does not provide any extra, or, in other words, that there is no difference in legal effect and usefulness of your provisional application whether you pay the filing fee or not.

Am I right in this? Or is there any effect that necessitates paying the fee if I want to file a utility application or a PCT application claiming priority to the provisional application (e.g. with regards to the 102(e) date or in the possibility to file a continuation-in-part application)?

[comodonejp]

I guess what you are referring to is if there is any difference by paying the filling fee for the provisional when you claim the priority based upon Paris Convention.
If you do not pay the basic filling fee, the provisional application will be abandoned after you receive the notice of missing parts. So you may not be able to file non-provisional application after that.
But, I tend to agree that there seems no difference to use the provisional application as a basis of establishing a priority date in the US with or without paying the basic filling fee. It is up to the Union member country's authority if the provisional application is deeded as the "regular national filling" stipulated in Article 4 A (3). WIPO, JPO and EPO respect the priority based upon the provisional application but it is outside of the scope of the Convention. So there is still a possibility that the authority of the Union member may refuse to honor the priority as the provisional application is not seeking for a patent (as it won't be mature into the patent) but only non-provisional application is. I think it is remote possibility though.
Even if you do not pay the basic filling fee, you can still obtain a priority document from the USPTO. So there is no difference from the view point of the second country.
I am not 100% sure if there is no legal recourse for the priority document based upon unpaid provisional application.
Provisional application by its definition will expire after 1 year period in 100%. I see no significant difference between the abandoned and expired applications in terms of the basis of conventional priority claim.
Does anybody aware of any case?

[comodonejp]

Does anybody know if we can file a non provisional application based upon provisional application before it is deemed abandoned as non payment of the basic filling fee? I think it is possible to secure the filling date at lease a couple of months earlier than non provisional application filling date by doing so.
That means, we can extend the expiry date of the patent without paying official fee, knowingly $110 is not a large amount for the important patent that will last full 20 years.

[khazzah]

If you do not pay the basic filling fee, the provisional application will be abandoned after you receive the notice of missing parts. So you may not be able to file non-provisional application after that.

You say "may not". I'll say *will* not be able to get the benefit claim to the provisional after the date of abandonment.
[You can file the non-prov, of course. You just won't get the benefit claim.]

But, I tend to agree that there seems no difference to use the provisional application as a basis of establishing a priority date in the US with or without paying the basic filling fee.

I don't understand how this statement reconciles with the statement you made above. Unless your second statement is limited to the context in which you prov w/o fee, then file the non-prov *before* the provisional goes abandoned.

[comodonejp]

Karen, you are absolutely right. The non-provisional application can not claim the benefit of priority based upon abandoned provisional application. I however do not know if we can revive the case as unintentional or unavoidable basis though.

Regarding the second point, claiming the domestic priority based upon the provisional application and claiming the Paris Convention priority is two different issue.
The Convention priority is based on the treaty and its interpretation depends on each Union country's issue.

I am supporting the position that the Conventional priority will be respected many Union countries even if it is abandoned later. So, I think even without paying the basic filling fee for the provisional application, it will get the same effect. Don't you agree?

[khazzah]

The non-provisional application can not claim the benefit of priority based upon abandoned provisional application. I however do not know if we can revive the case as unintentional or unavoidable basis though.

Ah. So you hedged with "may" to allow for the possibility that the prov would be revived before the non-prov was filed.
Gotcha.

The Convention priority is based on the treaty and its interpretation depends on each Union country's issue.

OK. But the question to which I responded said "in the US": "establishing a priority date in the US with or without paying the basic filling fee". So I thought we talking about how the US interprets this, ie, regular US patent

I am supporting the position that the Conventional priority will be respected many Union countries even if it is abandoned later. So, I think even without paying the basic filling fee for the provisional application, it will get the same effect. Don't you agree?

I don't know enough about national patent law outside of the US to be able to comment.

[khazzah]

According to the PLT you only need 3 things to establish a filing date:
- a description of your invention or something that seems to be a description (a drawing would be sufficient);
- some information how to contact the applicant; and
- an indication that a patent is sought.
Thus: no need for a particular language, no need for claims and no need to pay any fees.

You're talking about obtaining a filing date for the priority document (here, the US prov.), right?

I don't have PCT rules handy, so I'll take your word for the above.

But that isn't the end of the inquiry, is it? It's not enough that your priority document have a filing date ... don't you also need the priority doc to be co-pending with the later filed app in order to claim priority?

Or maybe not, and I'm just showing my ignorance of non-US law.

[JustAnotherExaminer]

If you do not pay the basic filling fee, the provisional application will be abandoned after you receive the expiration of the time period set forth for reply in the notice of missing parts. So you may not be able to file non-provisional application after that.

[Robert K S]

Is it ever even technically pending if you don't pay for it?

[khazzah]

Is it ever even technically pending if you don't pay for it?

That's one of the things I'm worried about ... ie, that the abandonment is somehow retroactive.

I've come across retroactive abandonment in other contexts. One that comes to mind is a continuation filed at the 6-month deadline w/o paying EOT fees. In such a case, the parent is deemed to have been abandoned as of the 3-month date, which means your continuation doesn't have continuity.

[bartmans]

don't you also need the priority doc to be co-pending with the later filed app in order to claim priority?

No, that is not necessary for using the priority claim as per the Paris Convention (or the EPC).

To sum up the discussion so far, am I correct in stating that:
- a US provisional will be recorded a filing date when filing a provisional application without paying the fee;
- it is possible to claim priority from such a provisional at least under the EPC and the PCT treaties;
- it is not possible to file a subsequent non-provisional US application that benefits from the provisional;
- nevertheless you may obtain a valid US filing if you file PCT and claim priority from the (no longer pending) US provisional.

Any issues about 102(e) dates in the last situation?

[chemist62]

Is this with when they write in the MPEP, paraphrase:  the provisional and the application claiming benefit do not have to be copending, but it has to be done during the life of the provisional, latest one year?  This is very confusing. 

[Yak]

This may help clear this up?

35USC119(e)2
A provisional application filed under section 111(b) [Provisional Application] of this title may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) [On filing each application for an original patent, except for design, plant, or provisional applications, $300.] of section 41(a)(1) [Patent fees; patent and trademark search systems.] of this title has been paid.

So as I read the statute, you cannot do what bartmans is proposing.  While you can get a filing date, relying upon the provisional in a later non-provisional seems to require payment of filing fees. 

This may not have the same impact on PCT filings claiming priority to a provisional with unpaid fees as I do not have the PCT rules in front of me.