Can You "Extend" a Provisional Patent Application?

First, you cannot legally "extend" a provisional patent application.  A provisional patent application will automatically be abandoned 12-months after the provisional patent application filing date.  In addition, inventors cannot refile a provisional patent application.

However, effective December 8, 2010, the U.S. Patent & Trademark Office (USPTO) implemented a 12-month pilot program titled Extended Missing Parts Pilot Program (EMPPP).  This pilot program was originally only valid for non-provisional patent applications filed before December 8, 2011, but the program was extended for non-provisional patent applications filed before December 31, 2012.

In a nutshell, the EMPPP still requires a patent applicant to file a non-provisional patent application during the 12-month pendency of a provisional patent application.  The patent applicant still must include a full and enabling disclosure of the invention in the non-provisional patent application.  The USPTO will allow the patent applicant up to 12 months from the filing date of the non-provisional patent application to file a response to a Notice to File Missing Parts.  As a requirement to participate in the EMPPP, a patent applicant must allow their patent application to be published after 18-months.

Because of the numerous potential pitfalls with the EMPPP, patent applicants are strongly encouraged to consult with a patent attorney prior to participating in this pilot program.

How to Participate in the USPTO Extended Missing Parts Pilot Program

To participate in the USPTO's Extended Missing Parts Pilot Program, a patent applicant needs to do the following:

1. Non-Provisional Patent Application.  File a non-provisional patent application during the 12-month pendency of the provisional patent application that is in condition for publication;
2. Basic Filing Fee.  The basic filing fee of $165 for small entity;
3. Oath or Declaration.  Signed Oath or Declaration;
4. Claim of Priority.  Make a valid claim of priority to the provisional patent application;
5. Certification and Request to Participate.  Submit a certification and request to participate in the Extended Missing Parts Pilot Program;
6. No Non-Publication Request.  The patent applicant CANNOT FILE A NON-PUBLICATION REQUEST TO MAINTAIN THE SECRECY OF THEIR PATENT APPLICATION (i.e. your non-provisional patent application will be published by the USPTO after only pending for 8 months assuming you filed the non-provisional patent application on the 12-month anniversary date of the provisional patent application filing date); and
7. Within 12-months after filing the non-provisional patent application, pay (i) the search fee of $270 for small entity, (ii) the examination fee of $110 for small entity, (iii) any excess claims fee, and (iv) a surcharge of $65 for small entities.

It should be noted that if you do not file a non-provisional patent application that is in condition for publication, include the basic filing fee and/or include a signed oath/declaration, you will only have 2-months (extendable) to do so.  To avoid paying extension of time and legal fees, it would be a best practice to include these items in your original filed non-provisional patent application.

Benefits of the EMPPP

By participating in the EMPP, patent applicants may receive the following benefits:

• Up to 12 months to pay the search fee and the examination fee; and
   
• Possibly reduced legal fees because a full set of claims are not required.

Detriments of the EMPPP

By participating in the EMPP, patent applicants may receive the following detriments:

• Increased Government Fees.  Overall government fees paid will be greater because of (i) the extra $65 surcharge and (ii) the additional $300 publication fee due when paying the issue fee;
   
• Increased Legal Fees.  Overall increased legal fees because of the additional work required by the patent attorney (the patent attorney must prepare a solid non-provisional patent application just as they normally would).
   
• Publication of Patent Application.  The non-provisional patent application will be automatically published for anyone to view on the USPTO website after 18-months from the provisional patent application's filing date (i.e. only 8 months after the non-provisional is filed typically).  Publication of the patent application can result in the loss of trade secrets and the published patent application can be used as prior art to reject a later filed patent application by the patent applicant.
   
• Loss of PTA.  The EMPPP does not change Patent Term Adjustment (PTA) provisions, which provide that time be added to the 20-year term of a patent for certain administrative delays by the USPTO.  PTA is offset, however, by an applicant's failure to reply within three months to a notice to file missing parts. Thus, any applicant that takes full advantage of the Pilot Program could lose up to nine months of patent term that might otherwise be available.

Conclusion

At first glance, the Extended Missing Parts Pilot Program appears attractive to inventors.  However, after considering the significant legal fees still required to prepare a solid patent specification and the required publication of the non-provisional application after 18-months, most inventors will find the EMPPP program an interesting option but eventually will decide that the detriments are not worth any potential benefits.