Converting to a Provisional Application
Clients often file a provisional application
and then file a non-provisional patent application on the same or similar subject matter within a year. Clients and attorneys sometimes loosely refer to this as converting a provisional application into a non-provisional patent application. It isn’t really.
What they are really doing is filing a non-provisional patent application and making a domestic benefit claim to the provisional application. Because the content of the provisional is often so similar to the non-provisional, “converting” is shorthand, but ultimately a misnomer.
Converting to a Non-Provisional Patent Application
There is actually a technical meaning for converting a provisional application into a non-provisional patent application. It is when you make a specific request to the Patent Office and ask that it take the provisional you filed and treat it as if it were a non-provisional patent application. If you request this, your provisional better be in good enough shape to actually work as a non-provisional patent application.
Converting in this way doesn’t happens a lot, but it can be a useful loophole in certain circumstances. For instance, normally, a design patent application cannot claim priority to a provisional application. This means that often one must file a provisional and a design patent application at the same time, rather than delaying the design patent application. However, you could potentially file a provisional and then convert it into a non-provisional. Later, if the drawings in the non-provisional support it, you could file a design application claiming priority to the non-provisional. This would make it seem like your design application’s priority actually extends back to the provisional’s filing date, which it does, because the provisional became the non-provisional.
Converting to a Provisional Application
This article is actually about the opposite type of request: converting a non-provisional patent application into a provisional application. This asks the Patent Office to turn a non-provisional into a provisional for any number of reasons (none of which you have to disclose).
I recently had to do this when a client, intending to file a provisional application on its own, navigated the filing system incorrectly and accidentally filed a non-provisional application. This kind of mistake is surprisingly easy to make in the Patent Office’s new Patent Center / DOCX filing system.
Why Convert?
If the content of the application is limited, as a provisional often is, then filing a provisional application as a non-provisional can be disastrous. If the mistake is not caught early and the application publishes, it will create a disclosure. That disclosure will have prior art effects against competitors but also potentially against the patent applicant. And, if the disclosure is limited, there may not be enough substance to support decent claims. This can ruin the patentability of the idea and potentially destroy a whole family of patents.
So, if you inadvertently filed a non-provisional application and meant to file a provisional, you can make a special request.
The applicant must make a written request and submit it to the Petitions Office. The request must clearly identify the patent application and request conversion, preferably by identifying the correct applicable regulation. Additionally, the applicant must pay fees. The fees are actually fairly affordable. In addition to the provisional filing fees (which would have had to have been paid originally anyway), a processing fee ($50 at the small entity rate) and a surcharge ($30 at the small entity rate) are due. Unfortunately, the Patent Office will not refund the fees associated with filing the non-provisional.
The Petitions Office will consider a request which is proper. The Petitions Office is quite backed up as of the publish date of this article, and it may take several months for review. Another petition and filing fee can expedite review of the petition if the applicant wants faster consideration.
