Unintentional Delay Petition Validity - Provisional Expired b/c Embedded Font in PDF problem

Question

Thank you greatly in advance for your time!

I am a first time inventor/patent filer who had success using EFS-Web filing a provisional application. A year later, on the anniversary (3 weeks ago), I attempted to file the documents I had worked on for a year but received the following upon validation: "the attached pdf file references a non-embedded font.... (It showed this for various standard fonts multiple times for the specifications, claims, etc.)." I do not recall this issue when filing the provisional documents a year before. I attempted the solutions I found online, as well as contacting the different USPTO departments, but no luck. I did some research and found that an "unintentional delay" allows me 2 additional months. Now, I'm working to gather the required $850 for the petition.

(a) Is this a valid reason for "Unintentional Delay," (37 C.F.R. 1.78b Claiming benefit of earlier filing date and cross-references to other applications.). Will I have to send them screenshots of my attempts to file the documents and make phone calls requesting assistance.

(b) I'm wondering about how this affects the PCT application which I had planned on filing right after I filed the nonprovisional - If the petition is granted, will I be able to claim the benefit of the early filing date for the PCT application as well. Also, in reference to the PCT, will I need additional forms and fees for that petition as well, or can I use the US nonprovisional filing.

(c) I also disclosed the idea as well by submitting to a business competition. Does the provisional become prior art if the one year anniversary of that submission makes its way around before I am able to pay the $850, file the nonprovisional, and the petition.

(d) While raising the $850 petition fee (required upon submission), currently the only concrete delay, am I allowed to edit and add content to my submission. For example, additional drawings and claims.

(e) Finally, (especially if I can find professional assistance within the next few months) am I able to amend the claims, drawings, and specifications WITHOUT it affecting the PCT, or do I need to do this all for the PCT application as well? - Asking because I believe an attorney once told me I could use my US nonprovisional as the PCT reference documents (in other words, what happens with the US nonprovisional, happens to the PCT). I have a feeling it's not that simple.

Thank you for any assistance! I am extremely grateful for any advice!

Answer 1

Since hasn't been four months since the provisional application was due, you can fix part of your problem. Until something called the Patent Law Treaty went into effect recently, missing the one year date when a provisonal expired meant that is was gone with no recourse at all. Not unintentional, unintentened, or - in a well known case - the patent office in your country (Israel in this case) is closed that last day for a holiday that is not also a U.S. Federal holiday. Under the PLT we now have a proceedure to restore priority. It is under under 37 CFR 1.78(b). A second issue is that the non-provisonal you will file needs claims in it by 4 months from it was filed or 16 from when the provisonal expired. At the three week pint you are ok on this.

Your scenario is not unintentional delay. Don't have the money or can't figure out EFS, is not unintentional. You intended to do it but didn't. (We can still file by paper.)

Answer 2

First, I suspect you are not receiving replies because you are asking some very technical legal questions that are difficult to answer straight up yes or no. The petition for unintentional delay does not give you a set time for reply. (a) Maybe. We see this embedded font issue when the PDF is not in PDF/A format. One of the fonts needed to display your PDF file is not embedded in the document, it is on your computer and simply referenced in the document. This is not allowed by the USPTO. The USPTO has the authority to decide if an embedded font problem is sufficient for an unintentional delay. To use this petition, you must end the delay in a reasonable time, once discovered. (b) It's not the PCT that will be the problem, it's the national stage applications you will want to file later that will be effected. It is my understanding that only the US will accept the petition for delay. It is my understanding that other countries will not accept the petition, so the priority claim to the provisional will be denied for not being made timely. (c) The US Provisional is not a published application, so its prior art status depends on it being made public, such as by making a priority claim to it in a US patent application or a PCT application. (d) You can add new matter to the US application, even if you claim priority to a provisional application. Claims directed to the new matter are only entitled to the filing date of the new application. (e) I don't understand this question. If you are asking if you can add new matter to a PCT application that makes a priority claim, then yes, but claims directed to the new matter are only entitled to the filing date of the PCT application and not the priority date.