Can I convert my provisional application to a nonprovisional application?

Can I convert my provisional application to a nonprovisional application?

Yes, you can, but you do not want to.  It is best practice to file a new application and claim priority.  A “conversion” will cost you patent term.

When we talk about “conversion,” the MPEP means to change an application, typically a provisional, to a nonprovisional.  The MPEP also allows a nonprovisional to be changed to a provisional as well.

The MPEP states: A provisional application can be converted to a nonprovisional application, but you lose patent term.

Instead, you should file a separate nonprovisional application within 12 months of the provisional application’s filing date. This nonprovisional application can claim the benefit of the provisional application’s filing date. Here’s what you need to know:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date.
• It must include a specific reference to the provisional application.
• The nonprovisional application can expand on the content of the provisional application but must support any claims that rely on the provisional filing date.

Remember, if you don’t file a nonprovisional application within 12 months, the provisional application will automatically expire, and you’ll lose the benefit of its filing date.

Practice tip:

Any patent attorney who does a direct conversion from a provisional to a non-provisional without just filing a new non-provisional and claiming priority is arguably committing malpractice, as the client is losing patent term.

Learn why provisional patent applications are always wrong for startup companies.

For more information on nonprovisional application, visit: nonprovisional application.

For more information on Patent Application Process, visit: Patent Application Process.

For more information on provisional application, visit: provisional application.

For more information on USPTO, visit: USPTO.