Patent Law FAQ

The process for restoring the benefit of a provisional application after the 12-month deadline involves filing a petition under 37 CFR 1.78(b). This petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The MPEP outlines the requirements:

“A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.”

The Director may require additional information to determine if the delay was unintentional. If granted, this restoration allows an application to validly claim the benefit of a provisional application filed up to 14 months earlier.

To learn more:

• provisional application
• benefit restoration
• patent petition
• 37 CFR 1.78(b)

To learn more:

• 37 CFR 1.78(b)

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The process for restoring the benefit of a provisional application after the 12-month deadline involves filing a petition under 37 CFR 1.78(b). This petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The MPEP outlines the requirements:

“A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.”

The Director may require additional information to determine if the delay was unintentional. If granted, this restoration allows an application to validly claim the benefit of a provisional application filed up to 14 months earlier.

To learn more:

• provisional application
• benefit restoration
• patent petition
• 37 CFR 1.78(b)

To learn more:

• 37 CFR 1.78(b)

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The process for restoring the benefit of a provisional application after the 12-month deadline involves filing a petition under 37 CFR 1.78(b). This petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The MPEP outlines the requirements:

“A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.”

The Director may require additional information to determine if the delay was unintentional. If granted, this restoration allows an application to validly claim the benefit of a provisional application filed up to 14 months earlier.

To learn more:

• provisional application
• benefit restoration
• patent petition
• 37 CFR 1.78(b)

To learn more:

• 37 CFR 1.78(b)

If an applicant misses the 12-month deadline for claiming the benefit of a provisional application, they may be able to restore the benefit under certain conditions:

1. The nonprovisional application must be filed within 14 months of the provisional application’s filing date
2. A petition under 37 CFR 1.78(b) must be filed in the nonprovisional application
3. The delay in filing must be unintentional

The MPEP states: “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”

The petition must include:

• The reference to the provisional application
• The petition fee
• A statement that the delay was unintentional

The benefit of a provisional application can be restored if the nonprovisional application is filed within 14 months of the provisional application filing date. To restore the benefit:

1. File a petition under 37 CFR 1.78(b) in the nonprovisional application
2. Include the reference to the provisional application in an application data sheet
3. Pay the petition fee set in 37 CFR 1.17(m)
4. Provide a statement that the delay in filing was unintentional

As stated in MPEP 211.01(a): “If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional.”