14. Which of the following timely actions should you take to accord maximum patent protection at minimum government fees for your client whose invention is described in a provisional patent application that was filed 6 months ago with no claim?
(A) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112 and the proper fee set forth in 37 CFR 1.17(i).
(B) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), and the basic filing fee for the nonprovisional application.
(C) File a request to convert the provisional application to a nonprovisional application, accompanied by a proper executed declaration, an amendment including at least one claim as prescribed by paragraph 2 of 35 USC 112, the proper fee set forth in 37 CFR 1.17(i), the basic filing fee for the nonprovisional application, and the surcharge required by 37 CFR 1.16(e).
(D) File a nonprovisional application including at least one claim accompanied by a proper executed declaration, and the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
(E) File a nonprovisional application including at least one claim accompanied by a proper executed declaration but without the basic filing fee. The application contains a specific reference to the provisional application in compliance with 37 CFR 1.78(a)(5).
14. ANSWER: (D) is correct. (A), (B) and (C) are wrong because MPEP § 601.01(c) states, “Claiming priority is less expensive [than conversion] and will result in a longer patent term.” Conversion requires payment of the conversion fee. (D) is correct because MPEP § 601.01(c) states, “In addition, if the provisional application was not filed with an executed oath or declaration and the filing fee for a non-provisional application, the surcharge set forth in 37 C.F.R. § 1.16(e) is required. (E) is wrong because the action taken claims priority under 35 U.S.C. § 119(e)(1) rather than conversion under 37C.F.R. § 1.53(c)(3). No surcharge is required.
{ 3 comments… read them below or add one }
Maybe I am missing something, but the question asks how you can “accord maximum patent protection at minimum government fees”. Both answers D and E are identical except you don’t pay the basic filing fee on answer option E, which of course, you can pay later.
My take is that this satisfies the requirement. The explanation why E is wrong doesn’t make any sense since the same reasoning would apply to D. Anyone care to clarify this?
I think for E if you don’t pay the basic filing fee, later on you will have to pay a surcharge.
Yes, you are right. I forgot about the surcharge. Thanks!