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Author Topic: Abandoned Provisional Application  (Read 731 times)

Several_Pages1

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Abandoned Provisional Application
« on: 09-01-17 at 09:34 pm »

Is it possible to revive an abandoned provisional application for failure to pay the filing fee?  There is a two month period to reply, and you can extend the time up to five months.  Both periods lapsed recently. 

Can I pay the filing fee ($65), five month extension of time ($750), and the fee to revive ($850)?  There might also be a $30 surcharge there, too. 


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Tobmapsatonmi

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Re: Abandoned Provisional Application
« Reply #1 on: 09-02-17 at 02:32 pm »

Pretty sure you can, assuming the delay in responding was actually unintentional.  Question is, do you want to?  Have you considered just re-filing as a new prov?

Good chance of intervening art in those 7 months such that you absolutely need your original date?

[ETA]  Ah, here it is: https://www.uspto.gov/web/offices/pac/mpep/s711.html

"(g) Provisional applications. A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances."
« Last Edit: 09-02-17 at 02:35 pm by Tobmapsatonmi »
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Several_Pages1

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Re: Abandoned Provisional Application
« Reply #2 on: 09-02-17 at 06:01 pm »

Thank you for that.  Yes, I refiled it just in case, but I would really like to have the original filing date.  Money is not an issue here, although I do not necessarily want to spend it on this. 

Does a provisional application require an oath and declaration?  The Notice of Missing Parts does not request the Oath or Declaration, so they should accept both with the patent application. 
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lazyexaminer

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Re: Abandoned Provisional Application
« Reply #3 on: 09-05-17 at 02:11 pm »

An oath/dec is not required for provisional apps.

Note that an oath/dec is also not required at filing for regular non-provisional apps, so a notice of missing parts will not require one. It is required before payment of the issue fee.
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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

Several_Pages1

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Re: Abandoned Provisional Application
« Reply #4 on: 09-05-17 at 05:36 pm »

Thank you! 
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Lefty714

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Re: Abandoned Provisional Application
« Reply #5 on: 09-05-17 at 05:59 pm »

Although oath/declarations are not required at the filing of the non-provisional application, you must pay a surcharge for filing the oaths/declarations late (micro entity = $35; small entity - $70; large entity = $140).
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bartmans

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Re: Abandoned Provisional Application
« Reply #6 on: 09-13-17 at 08:36 am »

It should be possible to file a PCT application claiming priority of an abandoned provisional application.
According to the Paris Convention a priority claim is valid to any previous application, regardless if it is still pending or not. Also, it would be allowable since the USA has acceded to the PLT agreement, where this agreement says that a filing date and number (and thus also the right to claim priority) can be obtained for an application even without paying any fees.
In Europe (EPC) and many of the European countries it works this way and it is perfectly possible to claim priority from an application for which no fees were paid and which thus is considered to be abandoned. 
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