Ask Patents is a question and answer site for people interested in improving and participating in the patent system. It only takes a minute to sign up.
Sign up to join this community
I filed a utility provisional patent application less than 1 year ago. If within 1 year of the utility prov appl filing date I also file design patent application(s) for the same idea, will the utility provisional application's filing date also be considered for "first to file" for the design application for the same idea?
(I have already presented my utility provisional application to some manufacturers.)
No.
A design patent application cannot claim priority to a provisional patent application, per 35 USC § 172:
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title [which covers provisional applications] shall not apply to designs.
This is stated more clearly at MPEP § 1504.10.
Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).
A design patent application can't claim priority to a provisional application in the U.S. MPEP § 1504.10.
However, a provisional can be converted to a non-provisional see MPEP 601.01(c). This is not the normal path of a second filing but a true conversion of a application of one type to another. It exists becasue for provisionals as a class to count as a filing under the Paris Convention it needs to be able to lead to a issued patent.
So you can follow the process in 601.01(c) and then, after conversion, claim priority to it in a design application.
If the provisional does not meet the minimum requirements of a non-provisional this path with not work.
At this point not having a claim will not block this path since the AIA removed the requirement for a claim to get a filing date. A claim can be added after conversion.
