Q) Provisional Patents (10.02.14p)

by Lizzie on April 28, 2009 · 8 comments

in Exam Concepts, Exam Questions

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.

{ 8 comments… read them below or add one }

1 Alan FlumNo Gravatar May 27, 2009 at 12:12 am

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?

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2 cindyNo Gravatar May 27, 2009 at 8:56 am

I think for E if you don’t pay the basic filing fee, later on you will have to pay a surcharge.

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3 Alan FlumNo Gravatar May 27, 2009 at 6:19 pm

Yes, you are right. I forgot about the surcharge. Thanks!

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4 toomuch23No Gravatar November 1, 2010 at 9:30 am

I think you are both right, you will have to pay the surcharge (which makes it more expensive); however, I though priority under 119 (per the explanation) dealt with foreign priority, and that is nowhere listed in the problem or answer choices???

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5 KFNo Gravatar March 17, 2012 at 5:21 pm

The language in 601 has changed a bit but the same message is there. From 601.01(c) under II.CONVERSION FROM A PROVISIONAL APPLICATION TO A NONPROVISIONAL APPLICATION:

Applicants should carefully consider the patent term consequences of requesting conversion rather than simply filing a nonprovisional application claiming the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). Claiming the benefit of the provisional application under 35 U.S.C. 119(e) is less expensive and will result in a longer patent term. The procedure requires the filing of a request for the conversion of the provisional application to a nonprovisional application and the fee set forth in 37 CFR 1.17(i) as well as the basic filing fee, search fee, and examination fee for the nonprovisional application. In addition, if the provisional application was not filed with an executed oath or declaration and the appropriate fees for a nonprovisional application, the surcharge set forth in 37 CFR 1.16(f) is required. See MPEP § 601.01(a).

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6 KFNo Gravatar March 17, 2012 at 5:22 pm

Bottom line, conversion is more expensive then claiming priority to the provisional.

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7 safeplaceNo Gravatar March 25, 2014 at 6:50 pm

File using efs web

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8 oathNo Gravatar March 25, 2014 at 7:16 pm

Good luck to all and be mindful that this website will help but will not do the work. The questions are tricky even when you know the right answer. Having the answers provided will only make the uspto give harder questions.

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