Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (4)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
To learn more:
For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
To learn more:
Patent Law (4)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
To learn more:
For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
To learn more:
Patent Procedure (4)
What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?
If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed.
(MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.
To learn more:
To learn more:
Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?
While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:
“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)
However, this exception comes with strict conditions:
- The delay in filing must have been unintentional.
- The nonprovisional application must be filed within 14 months from the provisional filing date.
- A petition to restore the right of priority must be filed promptly.
It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.
To learn more:
For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:
“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”
This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.
For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.
To learn more:
For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.
However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.
To learn more: