Preface
This brief note is not legal advice and is for educational purposes only.
Discussion
So, you’ve filed a provisional application (which establishes the priority date) and the 1 year deadline for filing a non-provisional (aka utility) patent application claiming the priority date is fast approaching for whatever reason (i.e. client fails to respond (pretty common), client stalling, you forgot about it, etc.)
So assuming that you need to preserve the priority filing date AND the provisional either has claims or you can quickly add at least one claim, then the quickest and least expensive in time and money outlay (at least initially) is to file what was the provisional as a utility application.† ‡
Don’t pay any fees. You’ll next get from the USPTO (US Patent and Trademark Office) hopefully a filing receipt, an application number, and a FORMALITIES LETTER which is titled:
NOTICE TO FILE MISSING PARTS OF NONPROVISIONAL APPLICATION
FILED UNDER 37 CFR 1.53(b)
Filing Date Granted
In this notice may be listed things like:
- The statutory basic filing fee has not been received.
- The application search fee must be submitted.
- The application examination fee must be submitted.
- Surcharge as set forth in 37 CFR 1.16(f) has not been received.
- The surcharge is due for anyone of:
- late submission of the basic filing fee, search fee, or examination fee,
- late submission of inventor’s oath or declaration,
- filing an application that does not contain at least one claim on filing, or
- submission of an application filed by reference to a previously filed application.
Then normally there is this:
SUMMARY OF FEES DUE:
The fee(s) required (including the fees noted above) are as follows. … entity discount is in effect. If applicant is
qualified for micro entity status, an acceptable Certification of Micro Entity Status must be submitted to establish
micro entity status. (See 37 CFR 1.29 and forms PTO/SB/15A and 15B.)
- $… basic filing fee.
- $… surcharge.
- $… search fee.
- $.. examination fee.
- $(0) previous unapplied payment amount.
- $… TOTAL FEE BALANCE DUE.
Other items may be required such as a properly executed oath/declaration, etc.
Hopefully you can reach the inventor before the 2 months to respond are up. If not, you can extend the deadline somewhat by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136(a).
† It is NOT advised to convert a provisional into a non-provisional unless your client does not mind losing a year of patent term.
‡ Also remember in the non-provisional to claim priority to the provisional.
