USPTO Director David Kappos announced recently a potential new pilot program aimed at addressing the request of inventors that they be given additional time to develop an invention disclosed in a provisional patent application before having to file a non-provision, or “full” application. Currently, the deadline is 12 months. If an inventor waits longer than 12 months after filing a provisional, then he or she can no longer claim the benefit of that early filing date. The benefit of the early filing date is, of course, that the amount of prior art that can be used to reject the application is slightly smaller.
Apparently, inventors have been asking for this time period to be extended from 12 to 24 months, but the PTO realized that only congress can actually make that change. However, the PTO claims to come up with something that is just as good:
While the current one-year requirement provided by law can only be amended by Congress, the USPTO has found it could achieve the essence of the request by changing our “missing parts” practice to provide for an additional 12 months
to perfect a non-provisional patent application. This would serve as a vehicle for inventors, at their option, to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a regular (non-provisional) patent application forward.
English, you say? Sure. You can actually file a patent application without all, or part of the required fee. If you do so, the PTO will send you something called a “Notice of Missing Parts.” Under the current practice, you need to respond to this notice by paying the fees in full within 2 months, or pay surcharges to respond even later than that, up to a total of 7 months. The pilot program Kappos is proposing would allow you to pay part of your fees, the basic filing fee, but omit the search and examination fees. If you pay just the basic filing fee, the PTO is considering giving you up to 12 months to pay the remaining fees. Apparently, Kappos and the PTO believe that:
This would serve as a vehicle for inventors, at their option, to effectively have up to 24 months to make decisions regarding the significant investment of time and money required to take a regular (non-provisional) patent application forward.
So how is this idea “almost useless” as I claimed above? For an inventor, the amount of fees that would be deferred by this pilot are $380. Meanwhile, what does that non-provisional application need to contain?
The non-provisional application disclosure requirements would have to be met in order to receive a filing date and enter the 12-month extension period. That means the non-provisional application for which a 12-month extension is requested would have to have a written description that clearly describes the invention so that someone with ordinary skill in the same technology can make and use the invention. It would also have to contain at least one claim, and drawings, when necessary, to understand the invention.
In other words, the application that has to be filed within 12 months of the provisional needs to be, you know, a real application. The single biggest expense in filing a real patent application is the attorney’s fee, not the filing fees. If you’re an inventor, not a Fortune 500 corporation, then you’re not likely to find a patent attorney willing to lift a finger to help you without several thousand dollars in advance. In addition, only big companies have a large enough volume of patent work to negotiate low, fixed rates. Depending on complexity, the total cost for an attorney just to prepare and file an application can run anywhere from $5,000 to $10,000 or more. Does the PTO seriously think that allowing you to defer $380 for an additional 12 months is going to have a significant impact? In their defense, $380 > $0, so … maybe?