For the sake of simplicity, I will limit the scope to utility patents. In what scenarios would it be advantageous for an entity to convert a provisional utility application to a non-provisional utility application rather than file a new non-provisional application seeking priority of the provisional?

I can only think of three scenarios:

  1. A new best method has been developed since the provisional was filed and an entity would like to not disclose that method in a new application.
  2. Legislation (patent, tax, etc...) gives advantages for holders of patents filed in a certain period that the provisional falls into but a non-provisional does not.
  3. Avoid the filing fee for a new patent application by converting the old one after 364 or fewer days.

All of these seem like a bit of a stretch and I'm not certain the first reason is even valid.

up vote 3 down vote accepted

The answer was subtle but I found it at smart up legal. The main reason an entity would elect to convert a provisional application to a non-provisional application is in the case where a public disclosure of the invention occurred prior to the filing of the provisional application and at least one year and one day have lapsed since the disclosure but not since the provisional was filed.

With a disclosure more than one year in the past the invention owners would lose the right to file a new patent application. Thus from that point to one year after filing the provisional application the only means by which an entity could prosecute a patent is to convert the original provisional application to a non-provisional application under procedures in 37 C.F.R 153(c)(2).

  • I had no idea this was possible. Nice answer! – DonQuiKong Aug 10 at 17:20
  • @DonQuiKong Tank you - glad to help. – A. K. Aug 10 at 18:32

Your Answer

 
discard

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

Not the answer you're looking for? Browse other questions tagged or ask your own question.