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My partner filed for a provisional patent and I'm trying to find out what the status is on it as I cannot get a straight answer from him.

I have looked up the application number on PAIR the following is the transaction history.

the last entry says

10-21-2015 Case Docketed to Examiner in GAU

the parent status says expired and has a 371c filing date of 6/21/2013 But on the bibliographic data says a 371c date of 5/5/2014

Just wondering what we have.

  • Would it be possible to edit in the application number? It's possible that our community will be able to help off of what you've given us, but we could be more complete with that. We also have the canonical resource "How can I determine the status of a patent application?" that may help, although it sounds like you've already tried its primary suggestion of checking PAIR. – Matthew Haugen May 29 '16 at 0:18
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What's the history of your application?

Based on your description, here is one possible/likely progression we can piece together:

  • 6/21/2013: filed an US provisional patent application
  • late 2013: filed an "international" PCT application based on the provisional application
  • 5/5/2014: filed a US nonprovisional application based on the international PCT application
  • 10/21/2015: the US Patent Office determined a technology area for your nonprovisional application and assigned the application to an examiner at the US Patent Office

Your original post states that you began with a US provisional application. US provisional applications are placeholders: they automatically expire after one year, they are never examined by the US Patent Office, and they cannot mature into full patents. But they're cheap and they buy you a year of extra time to raise funds to pay for the more expensive applications-to-come. The one-year waiting period also gives you time to develop the invention and get a sense of its marketability--during that year, many people realize the invention isn't desirable to consumers and greatly reduce their sunk costs by abandoning a US provisional application instead of abandoning a US nonprovisional application. At any rate, to keep a US provisional application alive, you must subsequently file either a US nonprovisional application or a PCT international application, and this second filing must be done within that one-year lifetime of the US provisional application. That second filing must have a proper priority claim to the US provisional application, which imposes nuanced requirements like new material can't be added to the application (although this is a gross simplification and there are occasions where certain rules don't apply).

You and your partner went the route of filing an international PCT application, probably because you were interested in some foreign markets but weren't quite ready to shell out $50,000 by filing in each country. Similar to the US provisional application, the international PCT application is a way to gain information ("test the waters") without paying too much money. And there's another similarity to US provisional applications: every PCT application expires after a set period of time. (In most cases, the expiration date is 30-31 months from the date of the US provisional application. But the exact expiration date of the PCT application changes from country to country and is 21 months in a couple countries.) Before the end of that 30-31 month timeframe, the PCT application must be converted into one or more national applications--in the US, this means filing a US nonprovisional application. Whereas US provisional applications aren't examined and can't turn into patents, US nonprovisional applications are examined and can grant into patents.

So when you finally filed that third application in the US, there were two dates: the effective filing date of 6/21/2013 (i.e., the "priority date" established by your US provisional application) and the actual filing date of 5/5/2014, which is when you entered the "national stage" in the US by filing a US nonprovisional application.

Where does your application currently stand?

It sounds like your application is still alive in the US and possibly also in other countries (depending on where you converted your PCT application). In the US, your application is awaiting examination. You might be waiting for a long time--I encountered US nonprovisional applications that sat on an examiner's desk in queue for 3 years before the patent examiner finally picked it up, read it, and mailed back an initial evaluation. There is a notorious backlog at the US Patent Office, though the wait time depends on the particular technology area of your invention.

Resources & a note

This USPTO page contains a nice flowchart of the full timeline:

https://www.uspto.gov/web/offices/pac/mpep/graphics/1842_1.png

and this WIPO page has a nice overview along with definitions of important terms.

The only thing worth mentioning is that it might be unusual for an application to have the lifetime you've described/implied. In particular, it's not very common to file the PCT application so soon after filing the US provisional application, followed by such a quick entry into the national stage. There are sometimes reasons for doing this (you raised some cash very quickly, a big investor wanted to see more steps toward patent protection, it became strategically important to acquire a patent sooner rather than later, another company entered the scene and they're infringing your future patent, etc.). But it may not be the most common scenario.


I am no expert, and this response is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney or legal expert to obtain advice with respect to any particular issue or problem. Laws can differ dramatically from country to country, state to state, and technology field to technology field.

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Your question refers to 371 dates. These are from a US national stage application, filed under 35 USC 371, of an international PCT patent application. Do the PAIR data entries include a reference to a provisional application under priority?

It looks like the application has been given to an examiner and placed on his docket list. Go to the first action prediction tab, and see when to expect the first office action.

If there was originally a PCT application, were any other national stage applications filed in any other patent offices? Try searching at https://worldwide.espacenet.com/?locale=en_EP using the PCT application number.

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