USPTO Proposes Change That Would Effectively Allow a 12-Month Extension to the Provisional Patent Application Period

Washington – The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed change that would effectively provide a 12‑month extension to the existing 12-month provisional application period. This change would be implemented through the missing parts practice in nonprovisional applications.

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period. The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination.

“One of the things I kept hearing at the many roundtables we’ve held with inventors all across the country was that additional time flexibility during the provisional period would greatly benefit them,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The existing 12-month provisional period may provide too little time for inventors to test the marketplace. Giving applicants a 12-month period to reply to a missing parts notice would effectively give applicants more time to evaluate the value and market potential of their inventions. It not only helps applicants decide whether to incur the additional costs involved in pursuing a patent, but also, makes the patent office more efficient in enabling the delivery of new products and services to market.”

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application. The proposed change would not alter this requirement but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application.

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration. In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request. Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.

The USPTO has published in the Federal Register a request for comments, due 60 days after publication, to gather public feedback on, and to determine the level of interest in, the proposed change to missing parts practice. The notice is available here: For technical questions, please contact Eugenia A. Jones, Office of Patent Legal Administration (571) 272-7727.