Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (1)
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
MPEP 201 - Types of Applications (1)
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
Patent Law (4)
What happens to the filing date when converting a provisional application to a nonprovisional application?
When converting a provisional application to a nonprovisional application, the filing date of the nonprovisional application will be the filing date of the provisional application. This is stated in MPEP 601.01(c):
“The filing date of the provisional application is the filing date of the nonprovisional application.”
However, it’s important to note that this conversion must be done within 12 months of the provisional application’s filing date. If the conversion is not done within this timeframe, the nonprovisional application will receive a new filing date.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
Yes, under certain circumstances, a nonprovisional application filed without claims can be converted to a provisional application. This option is available for applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, but it must be done within specific time limits and meet certain requirements.
The MPEP states: “As 37 CFR 1.53(c)(2) permits the conversion of an application filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), an applicant in an application, other than for a design patent, filed under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one claim has the alternative of filing a petition under 37 CFR 1.53(c)(2) to convert such application into an application under 35 U.S.C. 111(b), which does not require a claim to be entitled to its date of deposit as a filing date.”
Key points for conversion:
- The petition must be filed within 12 months of the original application’s filing date.
- The application must comply with the requirements of 37 CFR 1.53(c)(2).
- This option is not available for design patent applications.
- For applications filed on or after December 18, 2013, conversion is unnecessary as claims are not required for a filing date.
To learn more:
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.
Patent Procedure (4)
What happens to the filing date when converting a provisional application to a nonprovisional application?
When converting a provisional application to a nonprovisional application, the filing date of the nonprovisional application will be the filing date of the provisional application. This is stated in MPEP 601.01(c):
“The filing date of the provisional application is the filing date of the nonprovisional application.”
However, it’s important to note that this conversion must be done within 12 months of the provisional application’s filing date. If the conversion is not done within this timeframe, the nonprovisional application will receive a new filing date.
To learn more:
Can an oath or declaration from a provisional application be used for a nonprovisional application?
No, an oath or declaration from a provisional application cannot be used for a subsequent nonprovisional application. The MPEP 602.05 states:
‘The oath or declaration filed in a provisional application is not sufficient for the purposes of a nonprovisional application filed under 35 U.S.C. 111(a) or a national stage application filed under 35 U.S.C. 371, even if the nonprovisional application claims the benefit of the provisional application under 35 U.S.C. 119(e).’
This means that when converting a provisional application to a nonprovisional application or filing a nonprovisional application claiming priority to a provisional, a new oath or declaration must be submitted. This requirement ensures that the inventors properly declare their inventorship for the nonprovisional application, which may contain additional or modified content compared to the provisional application.
To learn more:
Yes, under certain circumstances, a nonprovisional application filed without claims can be converted to a provisional application. This option is available for applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, but it must be done within specific time limits and meet certain requirements.
The MPEP states: “As 37 CFR 1.53(c)(2) permits the conversion of an application filed under 35 U.S.C. 111(a) to an application under 35 U.S.C. 111(b), an applicant in an application, other than for a design patent, filed under 35 U.S.C. 111(a) on or after June 8, 1995, without at least one claim has the alternative of filing a petition under 37 CFR 1.53(c)(2) to convert such application into an application under 35 U.S.C. 111(b), which does not require a claim to be entitled to its date of deposit as a filing date.”
Key points for conversion:
- The petition must be filed within 12 months of the original application’s filing date.
- The application must comply with the requirements of 37 CFR 1.53(c)(2).
- This option is not available for design patent applications.
- For applications filed on or after December 18, 2013, conversion is unnecessary as claims are not required for a filing date.
To learn more:
Can a national application be converted to an international application?
Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.
For more information on conversion, visit: conversion.