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I am a Australian sole inventor who has filed a US provisional patent application with another attorney last year in June. I'm coming close to the time where my 12 month period is going to expire (Expires in June) and it is now difficult to reach him.

I'm looking to eventually get a PCT application as I would like the ability to file internationally and also be able to get an additional 18 months to refine the technology.

However, I wanted more time to exploit my technology so I'm looking for ways to extend the period and minimise my outlay.

I have considered the following paths -
1. File a PCT application which should give me an additional 18 months but the cost of this is approx. $3500
2. File for a non-provisional and file for the 12 month 'extension' by deferring payment but then eventually get a PCT. I believe the cost of this is approx $160 or so.
3. File for a full US non-provisional which I think its not that much for a micro-entity ($400 I believe) but I eventually need to file for a PCT anyway.

I like the option of number 2 but I don't want it impacting my ability to get a PCT in the future after the 12 month period.

  • Just to clarify, what is your actual question? If it is "what is the cheapest of these three options?", I think you've already answered it. – Maca Mar 12 '17 at 4:05
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    Also, option 2 isn't possible unless you abandon the provisional before filing a non-provisional. Else the PCT would not have a valid priority claim. I assume you don't want to do this. – Maca Mar 12 '17 at 4:06
  • @Maca I think the question is sth like did I miss something, does this work as I described? so what you said about 2. Is probably the answer – DonQuiKong Mar 12 '17 at 9:28
  • There is also no rule preventing an inventor from filing another provisional for the identical invention and obtaining a 12-month period in which to file the non-provisional claiming priority to the later-filed provisional, assuming other limitations have not been triggered by other disclosure of the invention (including prior art of others). – Upnorth Aug 13 '17 at 17:55
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Looks like you did a fair amount of research. Great job -- individual inventors have it tough.

You get 12 months from the earliest priority date to file a PCT and claim its benefit, thus, you have to go the PCT route and can't extend it. See here for an example.

Alternatively, let go of the provisional application. Do nothing. Exploit your tech, and reset the prior art clock. That may be the best case if your invention is truly novel, however, you run the risk of someone else filing it. It depends on your income, your belief of the value of the patent, and (most importantly) your belief in the value of your technology.

Do note that option #2 is not an option. Read carefully:

The pilot program does not change the requirement that an applicant must file a non-provisional application, foreign, or PCT application within 12 months of the filing date of a provisional application. If a non-provisional application, foreign, or PCT application is filed later than 12 months from the filing date of a provisional application, it may not be entitled to the benefit of right of priority to the provisional application.

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