Can a nonprovisional application be converted to a provisional application if it lacks claims?
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: