Comments on: Q) Provisional Patents (10.02.14p) http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: KF http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-35032 KF Sat, 17 Mar 2012 21:22:23 +0000 http://mypatentbar.com/?p=897#comment-35032 Bottom line, conversion is more expensive then claiming priority to the provisional. Bottom line, conversion is more expensive then claiming priority to the provisional.

]]> By: KF http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-35031 KF Sat, 17 Mar 2012 21:21:40 +0000 http://mypatentbar.com/?p=897#comment-35031 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). 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).

]]> By: toomuch23 http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-4473 toomuch23 Mon, 01 Nov 2010 13:30:44 +0000 http://mypatentbar.com/?p=897#comment-4473 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??? 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???

]]> By: Alan Flum http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-1522 Alan Flum Wed, 27 May 2009 22:19:50 +0000 http://mypatentbar.com/?p=897#comment-1522 Yes, you are right. I forgot about the surcharge. Thanks! Yes, you are right. I forgot about the surcharge. Thanks!

]]> By: cindy http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-1521 cindy Wed, 27 May 2009 12:56:09 +0000 http://mypatentbar.com/?p=897#comment-1521 I think for E if you don't pay the basic filing fee, later on you will have to pay a surcharge. I think for E if you don’t pay the basic filing fee, later on you will have to pay a surcharge.

]]> By: Alan Flum http://mypatentbar.com/2009/04/28/q-provisional-patents-100214p/#comment-1520 Alan Flum Wed, 27 May 2009 04:12:36 +0000 http://mypatentbar.com/?p=897#comment-1520 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? 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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