Morris Manning & Martin, LLP

IP NewsFlash January 2011 : USPTO Announces Pilot Program for Extension of Provisional Patent Application Time Period


New Program May Provide More Time to File Regular Patent Application – But The Risks of Provisionals Still Remain

There is an old adage, "if it sounds too good to be true, it probably is … ." This adage certainly applies to dealing with government agencies such as the U.S. Patent and Trademark Office (USPTO). Those who use the patent system to file and obtain patents for valuable inventions and technologies may be intrigued by the recent USPTO announcement of a new program that – on its face – seems to provide additional time to file non-provisional patent applications. Specifically, the program purports to provide for a twelve-month extension of the time for patent applicants to file a non-provisional patent application (NPA) claiming priority to an earlier-filed provisional patent application (PPA).

On December 8, 2010, the USPTO issued a press release titled as follows: "USPTO Implements Pilot Program Effectively Allowing a 12-Month Extension to the Provisional Patent Application Period."  A twelve month extension for provisional patent applications sounds too good to be true! And regrettably it is – the title suggests a much bigger benefit than is really provided.

A close reading of the Pilot Program press release reveals that the ostensible benefits of the program are not as great as one might think.  Like so many other things with laws and regulations, you have to read the fine print.

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