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Tag: provisional application

Converting to a Provisional Application

Clients often file a provisional application

Collegiate Mountain Bike Nationals, Purgatory

Collegiate Mountain Bike Nationals, Purgatory

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.

What does “Patent Pending” mean?

Jordon Trapnell is a guest author on this post.  He writes:

The words “patent pending” can be seen on products just about anywhere you look.  However, many people are confused by what it really means and what protection it offers.  The purpose of the patent pending label is to allow the inventor of a product to notify the public that they have applied for a patent on that product.  The requirement in order to use the label is simply that a patent application is on file with the U.S. Patent and Trademark Office; a provisional application also fulfills this requirement.  Keep in mind that a provisional application expires after 12 months, at which point “patent pending” could not be used unless a subsequent non-provisional application was filed during that period.

Patent pending offers no legal protection.  If Company “A” starts selling a product that is patent pending, Company “B” could legally make and sell that same product as long as the actual patent has not been issued.  However, this does not mean that there is no reason to use a patent pending mark.  A “patent pending” indication can often deter Company “B” above.  They must consider the possibility that the patent will issue, in which case they would have to stop selling the product they copied immediately or pay “A” in order to continue, both of which have tremendous costs.  No company wants to go through the process of manufacturing a new product, only to be able to sell it for a few months.  Aside from being a deterrent to competitors who might copy a product, “patent pending” can also look attractive to investors or consumers, making it an effective marketing tool.

An inventor can sue only after the patent is granted, not during the patent pending period.  Damages are not simply calculated from the date the patent issues though.  Damages are calculated from the time two prerequisites are met.  The first is that the application is published, which typically happens 18 months after it is first filed or when the patent is granted.  The second is that the infringer has received either “constructive” or “actual” notice.  Constructive notice is marking the article with the patent number.  Actual notice consists of sending a letter to the infringer.  Filing a lawsuit is also considered actual notice, but relying solely on that would result in a shorter damage period.  So one way to maximize the period from which damages can be collected is to send notification letters as soon as the application is published.  However, it is important to know that doing so may expose the sender to other very serious consequences.

Since the “patent pending” label carries no legal weight, it may be tempting to mark a product as such even though no application has been filed in order to incur its other possible benefits.  However, falsely marking something as patent pending is illegal and carries a fine of up to $500 for every offense.  Each mismarked article is a separate offense under current interpretation, meaning the fine could add up very quickly.  The law also states that any person may sue for the penalty, which means it’s not just the government that may come after you, but any competitor diligent enough to check your claim of patent pending.

No other information needs to be included with the patent pending label on the product.  In fact, it is often important that the application serial number not be included.  This serial number could potentially allow others to delay or compromise the consideration of the patent application.

Provisional Application – a Metaphor

I was talking with a client about two weeks ago and explaining the benefits of a provisional application.  I was telling him that a provisional  application is place holder – it keeps your spot in line – but he had a more unique way of expressing the idea.

Imagine you’re in line at the deli counter.  You take a number.  Once you have your number, you can go walk around the store, pick up the rest of your groceries, come back, and jump in when your number is called.  You get served before all the people who have numbers after yours.  A provisional application is similar: once you’ve filed it, you have a year to “walk around the store.”  As long as you come back before the year is up, your number is good.  If you wait too long and the year goes by, you lose out on your number.

The metaphor basically works.  A provisional application also limits what you can order with that number.  Let’s say, instead of just taking a number at the deli counter, you could also place a sandwich order.  You take #129 and ask for a ham and turkey sandwich.  If your order is like a provisional, you can come back within a year and get a ham and turkey sandwich.  You can come back and get a ham sandwich, or a turkey sandwich.  You could ask for just bread.  But you couldn’t ask for a roast beef sandwich or a turkey, ham, and salami sandwich.  If you tried to get those last two sandwiches, you’d have to pick up a new number, because your new order was different from (and not encompassed by) your first order.  Make sense? With a provisional application, the follow-on patent application to the provisional has to be limited to what is disclosed in the provisional – claiming more than was in the provisional prevents you from using the provisional’s filing date.