Patent and Invention Help Forum

PPA -> NPA -> PPA with Additional One Year

PPA -> NPA -> PPA with Additional One Year
« on: September 05, 2021, 10:41:46 AM »
Dear Brad,

I have a provisional patent application that is about to expire, and I am not ready yet to finalize everything in order to file non-provisional (mainly because of claims).

I need to keep the priority date. It is very important for me.

I read in David Pressman's book Patent-it-Yourself that it is possible to convert non-provisional into provisional. I want to save some fees.

Standard way written in the book: i convert my provisional to non-provisional, in this case i have to pay $80 for filing, $175 for a search, $200 for examination.

But if I convert this non-provisional patent application to new provisional immediately after filing, can I file non-provisional only with a filing fee paid?

That is

(almost one year ago) I applied for the provisional (PPA-1),

(in next few days) I will convert it to non-provisional (NPA-1) and pay $80 for filing,

immediately after that I convert into another provisional (PPA-2), paying $75 (or there any additional surcharges should be added?),

and only in a year I will finally fill non-provisional with priority including to PPA-1, PPA-2, and NPA-1. (I do not need PCT, etc).

Thank you very much!



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Re: PPA -> NPA -> PPA with Additional One Year
« Reply #1 on: September 06, 2021, 09:34:59 AM »
Most people don't use the "convert" option going from PPA to Non-Prov. because you can lose a year of patent term.   If it were me and if the main thing that was holding you back was the claims, I would go ahead and file your non-prov. now without claims (claims are no longer required in non-provs) and your  non-prov can essentially be a duplicate of your provisional and claim priority back to your provisional.

It usually takes the patent examiner 6-18 months to even review your case and once they do you have up to 6 months to from that point to respond (with payment of government extension of time fees).   So you could easily buy yourself 12 months to add in claims to your application.

Remember, you can add or change claims at any point in the patent process as long as you have proper support for those claims and claim terms in your spec.  So the claims should never be a reason to delay your filing because those are the one thing you can change later.

I have never done the method you are suggesting so I don't want to comment on that.  It seems like it should work but the method I presented above would be more common and would save your patent term. 

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