Written by attorney Bruce E. Burdick

Is There A 24 Month Provisional Patent Application?

YES, although it technically involves filing a non-provisional patent application and should only be done by an inventor through a registered patent attorney as it is dangerous if not fully understood. This "24-month provisional" is actually a Pilot Program by the US Patent and Trademark Office that modifies the missing parts procedures ( those used when an application is filed that does that not have all of its required parts.) This program was announced December 8, 2010 in Press Release 10-62 . This program basically lets a small entity file a non-provisional application without paying the search fee or examination fee until 12 months after filing of the non-provisional application, if the applicant files a form PTO/SB/421 certifying that the applicant desires to proceed under the pilot program and meets the criteria spelled out in that form, four of which are that there be at least one claim, there not be a non-publication request, that there is a claim to the benefit of the filing date of a provisional, and that an oath or declaration is properly filed.

In order to participate in the Extended Missing Parts Pilot Program you will need to follow these steps.

  • File a non-provisional application (including a specification);
  • Claim the benefit of the filing date of [referencing] a provisional application filed within the previous 12 months in the first sentence of the specification or in an Application Data Sheet (ADS);
  • Include at least one claim;
  • Include drawings if necessary; and
  • Request a delay in payment of the search and examination fees at the time of the non-provisional application filing using form PTO/SB/421.

So, what happens in this 24 month provisional? The non-provisional gets the benefit of the provisional, the PTO grants a filing date, sends a missing parts notice (with a 12 month deadline rather than the normal 2 month deadline), and the application is published 18 months after the filing date of the provisional. This, then adds a risk for the inventor, namely that the application will be published. So, because of this it is no longer like a provisional application, since provisional applications are not published and are accessible to the public only if reference in a published non-provisional patent application pre-grant publication or issued patent.

This is a great program for the right small inventor, but it is fraught with peril for those who do not know the intricate complexities of patent law and procedure. I highly recommend this pilot program for small inventors, but only if they do it through a patent attorney skilled in use of the pilot program. Even patent attorneys will occasionally mess up these "24 month provisionals", so be sure your patent attorney understands it thoroughly before requesting it be done.

At the Burdick law firm, we have been very active in lobbying for this pilot program and other small inventor incentives, and are highly experienced in this EXTENDED MISSING PARTS PILOT PROGRAM, and welcome your inquiries about it.

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