Provisional Application

I.

PROVISIONAL APPLICATION FILED ON OR AFTER DECEMBER 18, 2013

35 U.S.C. 111

Application.

[Editor Note: Applicable to any patent application filed on or after

December 18, 2013. See

35 U.S.C. 111 (pre-PLT

(AIA))

or

35 U.S.C. 111 (pre-AIA)

for

the law applicable to provisional applications filed under 35 U.S.C. 111(b)

before December 18, 2013.]

*****

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application

for patent shall be made or authorized to be made by the inventor,

except as otherwise provided in this title, in writing to the

Director. Such application shall include—

(A) a specification as prescribed by

section

112(a)

; and

(B) a drawing as prescribed by

section

113

.

(2) CLAIM.—A claim, as required by

subsections (b) through (e) of

section 112

, shall

not be required in a provisional application.

(3) FEE.—The application shall be

accompanied by the fee required by law. The fee may be submitted after

the filing date of the application, within such period and under such

conditions, including the payment of a surcharge, as may be prescribed

by the Director. Upon failure to submit the fee within such prescribed

period, the application shall be regarded as abandoned.

(4) FILING DATE.—The filing date of a

provisional application shall be the date on which a specification,

with or without claims, is received in the United States Patent and

Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence

of a claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

,

if no such request is made, the provisional application shall be

regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival after such 12-month

period.

the absence

of a claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

,

if no such request is made, the provisional application shall be

regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival after such 12-month

period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section 119(e)

, and as prescribed by the

Director, an application for patent filed under subsection (a) may be

treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST

FILING DATE.—A provisional application shall not be entitled to the

right of priority of any other application under

section

119

,

365(a)

, or

386(a)

or to the

benefit of an earlier filing date in the United States under

section 120

,

121

,

365(c)

, or

386(c)

.

(8) APPLICABLE PROVISIONS.—The provisions of

this title relating to applications for patent shall apply to

provisional applications for patent, except as otherwise provided, and

except that provisional applications for patent shall not be subject

to

sections 131

and

135

.

37 CFR 1.9 Definitions.

(a)

*****

(2) A provisional application as used in this

chapter means a U.S. national application for patent filed in the

Office under

35 U.S.C.

111(b)

.

*****

37 CFR 1.53 Application number, filing date, and

completion of application.

[Editor Note: Applicable to patent applications filed under

35

U.S.C. 111

on or after December 18, 2013.]

*****

ct

to

sections 131

and

135

.

37 CFR 1.9 Definitions.

(a)

*****

(2) A provisional application as used in this

chapter means a U.S. national application for patent filed in the

Office under

35 U.S.C.

111(b)

.

*****

37 CFR 1.53 Application number, filing date, and

completion of application.

[Editor Note: Applicable to patent applications filed under

35

U.S.C. 111

on or after December 18, 2013.]

*****

(c)

Application filing requirements — Provisional

application.

The filing date of a provisional application is

the date on which a specification, with or without claims, is received in

the Office. No amendment, other than to make the provisional application

comply with the patent statute and all applicable regulations, may be made

to the provisional application after the filing date of the provisional

application.

(1) A provisional application must also include the

cover sheet required by

§ 1.51(c)(1)

,

which may be an application data sheet (

§

1.76

), or a cover letter identifying the

application as a provisional application. Otherwise, the application

will be treated as an application filed under paragraph (b) of this

section.

(2) An application for patent filed under paragraph

(b) of this section may be converted to a provisional application and

be accorded the original filing date of the application filed under

paragraph (b) of this section. The grant of such a request for

conversion will not entitle applicant to a refund of the fees that

were properly paid in the application filed under paragraph (b) of

this section. Such a request for conversion must be accompanied by the

processing fee set forth in

§

1.17(q)

and be filed prior to the earliest

of:

(i) Abandonment of the application filed under

paragraph (b) of this section;

(ii) Payment of the issue fee on the application

filed under paragraph (b) of this section; or

(iii) Expiration of twelve months after the

filing date of the application filed under paragraph (b) of this

section.

(3) A provisional application filed under paragraph

forth in

§

1.17(q)

and be filed prior to the earliest

of:

(i) Abandonment of the application filed under

paragraph (b) of this section;

(ii) Payment of the issue fee on the application

filed under paragraph (b) of this section; or

(iii) Expiration of twelve months after the

filing date of the application filed under paragraph (b) of this

section.

(3) A provisional application filed under paragraph

(c) of this section may be converted to a nonprovisional application

filed under paragraph (b) of this section and accorded the original

filing date of the provisional application. The conversion of a

provisional application to a nonprovisional application will not

result in either the refund of any fee properly paid in the

provisional application or the application of any such fee to the

filing fee, or any other fee, for the nonprovisional application.

Conversion of a provisional application to a nonprovisional

application under this paragraph will result in the term of any patent

to issue from the application being measured from at least the filing

date of the provisional application for which conversion is requested.

Thus, applicants should consider avoiding this adverse patent term

impact by filing a nonprovisional application claiming the benefit of

the provisional application under

35 U.S.C. 119(e)

,

rather than converting the provisional application into a

nonprovisional application pursuant to this paragraph. A request to

convert a provisional application to a nonprovisional application must

be accompanied by the fee set forth in

§

1.17(i)

and an amendment including at least one

claim as prescribed by

35 U.S.C. 112(b)

,

unless the provisional application under paragraph (c) of this section

otherwise contains at least one claim as prescribed by

35 U.S.C. 112(b)

l application pursuant to this paragraph. A request to

convert a provisional application to a nonprovisional application must

be accompanied by the fee set forth in

§

1.17(i)

and an amendment including at least one

claim as prescribed by

35 U.S.C. 112(b)

,

unless the provisional application under paragraph (c) of this section

otherwise contains at least one claim as prescribed by

35 U.S.C. 112(b)

.

The nonprovisional application resulting from conversion of a

provisional application must also include the filing fee, search fee,

and examination fee for a nonprovisional application, and the

surcharge required by

§ 1.16(f)

if

either the basic filing fee for a nonprovisional application or the

inventor's oath or declaration was not present on the filing date

accorded the resulting nonprovisional application

(

i.e.,

the filing date of the original

provisional application). A request to convert a provisional

application to a nonprovisional application must also be filed prior

to the earliest of:

(i) Abandonment of the provisional application

filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after the

filing date of the provisional application filed under paragraph

(c) of this section.

(4) A provisional application is not entitled to the

right of priority under

35 U.S.C. 119

,

365(a)

, or

386(a)

or §

1.55

, or to the benefit of an earlier filing

date under

35 U.S.C. 120

,

121

,

365(c)

, or

386(c)

or §

1.78

of any other

application. No claim for priority under

35 U.S.C.

119(e)

or §

1.78(a)

may be made in a design application

based on a provisional application. A provisional application

disclosing nucleotide and/or amino acid sequences is not required to

include a separate sequence listing; however, if submitted in a

provisional application filed on or after July 1, 2022, any submission

of nucleotide and/or amino acid sequence data must be by way of a

“Sequence Listing XML” in compliance with §§

1.831

through

1.834

on

based on a provisional application. A provisional application

disclosing nucleotide and/or amino acid sequences is not required to

include a separate sequence listing; however, if submitted in a

provisional application filed on or after July 1, 2022, any submission

of nucleotide and/or amino acid sequence data must be by way of a

“Sequence Listing XML” in compliance with §§

1.831

through

1.834

.

Effective December 18, 2013, the Patent Law Treaties

Implementation Act of 2012 (PLTIA), title II, amended

35 U.S.C.

111(b)

to more closely align the corresponding provisions for

nonprovisional applications in

35 U.S.C. 111(a)

and provisional

applications in

35 U.S.C. 111(b)

. The

corresponding provision in

37 CFR 1.53(c)

was revised

accordingly.

The parts of a provisional application that are required

are set forth in

37

CFR 1.51(c)

and

MPEP § 601.01(b)

. The filing date of

a provisional application filed on or after December 18, 2013, is the date on which a

specification as prescribed by

35 U.S.C. 112(a)

, with or without

claims, is filed in the United States Patent and Trademark Office. Although the

application will be accorded a filing date regardless of whether any drawings are

submitted, applicants are advised to file any drawing required by

37 CFR

1.81(a)

with the application. No amendment, other than to make

the provisional application comply with the patent statute and all applicable

regulations, may be made to the provisional application after the filing date of the

provisional application.

A provisional application must include a cover sheet

required by

37 CFR

1.51(c)(1)

, which may be an application data sheet

(

37 CFR

1.76

), the Office’s form SB/16, Provisional Application for

Patent Cover Sheet (available at

www.uspto.gov/patent/

forms/forms-patent-applications-filed-or-after-september-16-

2012

), or a cover letter identifying the application as a provisional

application. Otherwise, the application will be treated as an application filed under

37 CFR

1.53(b)

, which may be an application data sheet

(

37 CFR

1.76

), the Office’s form SB/16, Provisional Application for

Patent Cover Sheet (available at

www.uspto.gov/patent/

forms/forms-patent-applications-filed-or-after-september-16-

2012

), or a cover letter identifying the application as a provisional

application. Otherwise, the application will be treated as an application filed under

37 CFR

1.53(b)

. The filing fee is set forth in

37 CFR 1.16(d)

.

II.

PROVISIONAL APPLICATION FILED BEFORE DECEMBER 18, 2013

35 U.S.C. 111 (pre-PLT (AIA))

Application.

[Editor Note: Applicable to any patent application filed on or after

September 16, 2012, and before December 18, 2013. See

35 U.S.C.

111

or

35 U.S.C. 111 (pre‑AIA)

for

the law otherwise applicable.]

*****

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application

for patent shall be made or authorized to be made by the inventor,

except as otherwise provided in this title, in writing to the

Director. Such application shall include—

(A) a specification as prescribed by

section

112(a)

;

and

(B) a drawing as prescribed by section

113

.

(2) CLAIM.—A claim, as required by

subsections

(b)

through

(e)

of section

112

, shall not be

required in a provisional application.

(3) FEE.—

(A) The application must be

accompanied by the fee required by law.

(B) The fee may be submitted after the

specification and any required drawing are submitted, within

such period and under such conditions, including the payment of

a surcharge, as may be prescribed by the Director.

(C) Upon failure to submit the fee

within such prescribed period, the application shall be regarded

as abandoned, unless it is shown to the satisfaction of the

Director that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a

provisional application shall be the date on which the specification

and any required drawing are received in the Patent and Trademark

Office.

submit the fee

within such prescribed period, the application shall be regarded

as abandoned, unless it is shown to the satisfaction of the

Director that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a

provisional application shall be the date on which the specification

and any required drawing are received in the Patent and Trademark

Office.

(5) ABANDONMENT.—Notwithstanding the absence

of a claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to section

119(e)(3)

, if no

such request is made, the provisional application shall be regarded as

abandoned 12 months after the filing date of such application and

shall not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section

119(e)

, and as

prescribed by the Director, an application for patent filed under

subsection (a) may be treated as a provisional application for

patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF

EARLIEST FILING DATE.—A provisional application shall not be entitled

to the right of priority of any other application under section

119

or

365(a)

or to the

benefit of an earlier filing date in the United States under section

120

,

121

, or

365(c)

.

(8) APPLICABLE PROVISIONS.—The provisions of

this title relating to applications for patent shall apply to

provisional applications for patent, except as otherwise provided, and

except that provisional applications for patent shall not be subject

to

sections 131

and

135

.

35 U.S.C. 111 (pre-AIA)

Application.

[Editor Note:

Not applicable

to any patent application filed

on or after September 16, 2012. See

35 U.S.C. 111

or

35

U.S.C. 111 (pre-PLT (AIA))

for the law otherwise

applicable.]

*****

l apply to

provisional applications for patent, except as otherwise provided, and

except that provisional applications for patent shall not be subject

to

sections 131

and

135

.

35 U.S.C. 111 (pre-AIA)

Application.

[Editor Note:

Not applicable

to any patent application filed

on or after September 16, 2012. See

35 U.S.C. 111

or

35

U.S.C. 111 (pre-PLT (AIA))

for the law otherwise

applicable.]

*****

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except

as otherwise provided in this title, in writing to the Director. Such

application shall include—

(A) a specification as prescribed by the

first paragraph of

section 112

of this title; and

(B) a drawing as prescribed by

section 113

of this title.

(2) CLAIM.—A claim, as required by the second

through fifth paragraphs of

section 112

, shall

not be required in a provisional application.

(3) FEE.—

(A) The application must be accompanied by

the fee required by law.

(B) The fee may be submitted after the

specification and any required drawing are submitted, within

such period and under such conditions, including the payment of

a surcharge, as may be prescribed by the Director.

(C) Upon failure to submit the fee within

such prescribed period, the application shall be regarded as

abandoned, unless it is shown to the satisfaction of the

Director that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a provisional

application shall be the date on which the specification and any

required drawing are received in the Patent and Trademark Office.

submit the fee within

such prescribed period, the application shall be regarded as

abandoned, unless it is shown to the satisfaction of the

Director that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a provisional

application shall be the date on which the specification and any

required drawing are received in the Patent and Trademark Office.

(5) ABANDONMENT.—Notwithstanding the absence of a

claim, upon timely request and as prescribed by the Director, a

provisional application may be treated as an application filed under

subsection (a). Subject to

section 119(e)(3)

of this title, if no such request is made, the provisional application

shall be regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival after such 12-month

period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection and

section 119(e)

of

this title, and as prescribed by the Director, an application for

patent filed under subsection (a) may be treated as a provisional

application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST

FILING DATE.—A provisional application shall not be entitled to the

right of priority of any other application under

section

119

or

365(a)

of this

title or to the benefit of an earlier filing date in the United States

under

section 120

,

121

, or

365(c)

of this

title.

(8) APPLICABLE PROVISIONS.—The provisions of this

title relating to applications for patent shall apply to provisional

applications for patent, except as otherwise provided, and except that

provisional applications for patent shall not be subject to

sections 115

,

131

,

135

, and

157

of this title.

37 CFR 1.9 Definitions.

date in the United States

under

section 120

,

121

, or

365(c)

of this

title.

(8) APPLICABLE PROVISIONS.—The provisions of this

title relating to applications for patent shall apply to provisional

applications for patent, except as otherwise provided, and except that

provisional applications for patent shall not be subject to

sections 115

,

131

,

135

, and

157

of this title.

37 CFR 1.9 Definitions.

(a)

*****

(2) A provisional application as used in

this chapter means a U.S. national application for patent filed in the

Office under

35 U.S.C.

111(b)

.

*****

37 CFR 1.53 (pre-PLT (AIA)) Application number, filing date, and

completion of application.

[Editor Note: Applicable to patent applications filed under

35

U.S.C. 111 (pre-PLT (AIA))

before December 18,

2013.]

*****

(c)

Application filing requirements—Provisional application.

The filing date of a provisional application is the date on which a

specification as prescribed by

35 U.S.C. 112(a)

, and

any drawing required by

§ 1.81(a)

are filed in

the Patent and Trademark Office. No amendment, other than to make the

provisional application comply with the patent statute and all applicable

regulations, may be made to the provisional application after the filing

date of the provisional application.

(1) A provisional application must also

include the cover sheet required by

§

1.51(c)(1)

, which may be an application data

sheet (

§ 1.76

), or a

cover letter identifying the application as a provisional application.

Otherwise, the application will be treated as an application filed

under paragraph (b) of this section.

provisional application after the filing

date of the provisional application.

(1) A provisional application must also

include the cover sheet required by

§

1.51(c)(1)

, which may be an application data

sheet (

§ 1.76

), or a

cover letter identifying the application as a provisional application.

Otherwise, the application will be treated as an application filed

under paragraph (b) of this section.

(2) An application for patent filed under

paragraph (b) of this section may be converted to a provisional

application and be accorded the original filing date of the

application filed under paragraph (b) of this section. The grant of

such a request for conversion will not entitle applicant to a refund

of the fees that were properly paid in the application filed under

paragraph (b) of this section. Such a request for conversion must be

accompanied by the processing fee set forth in

§

1.17(q)

and be filed prior to the earliest of:

(i) Abandonment of the application

filed under paragraph (b) of this section;

(ii) Payment of the issue fee on the

application filed under paragraph (b) of this section; or

(iii) Expiration of twelve months after

the filing date of the application filed under paragraph (b) of

this section.

(3) A provisional application filed under

paragraph (c) of this section may be converted to a nonprovisional

application filed under paragraph (b) of this section and accorded the

original filing date of the provisional application. The conversion of

a provisional application to a nonprovisional application will not

result in either the refund of any fee properly paid in the

provisional application or the application of any such fee to the

filing fee, or any other fee, for the nonprovisional application.

Conversion of a provisional application to a nonprovisional

application under this paragraph will result in the term of any patent

to issue from the application being measured from at least the filing

date of the provisional application for which conversion is requested

ovisional application or the application of any such fee to the

filing fee, or any other fee, for the nonprovisional application.

Conversion of a provisional application to a nonprovisional

application under this paragraph will result in the term of any patent

to issue from the application being measured from at least the filing

date of the provisional application for which conversion is requested.

Thus, applicants should consider avoiding this adverse patent term

impact by filing a nonprovisional application claiming the benefit of

the provisional application under

35 U.S.C. 119(e)

(rather than converting the provisional application into a

nonprovisional application pursuant to this paragraph). A request to

convert a provisional application to a nonprovisional application must

be accompanied by the fee set forth in §

1.17(i)

and an amendment including at least one

claim as prescribed by

35 U.S.C. 112(b)

,

unless the provisional application under paragraph (c) of this section

otherwise contains at least one claim as prescribed by

35 U.S.C. 112(b)

.

The nonprovisional application resulting from conversion of a

provisional application must also include the filing fee, search fee,

and examination fee for a nonprovisional application, the inventor’s

oath or declaration, and the surcharge required by

§

1.16(f)

if either the basic filing fee for a

nonprovisional application or the inventor's oath or declaration was

not present on the filing date accorded the resulting nonprovisional

application ( i.e., the filing date of the original provisional

application). A request to convert a provisional application to a

nonprovisional application must also be filed prior to the earliest

of:

e required by

§

1.16(f)

if either the basic filing fee for a

nonprovisional application or the inventor's oath or declaration was

not present on the filing date accorded the resulting nonprovisional

application ( i.e., the filing date of the original provisional

application). A request to convert a provisional application to a

nonprovisional application must also be filed prior to the earliest

of:

(i) Abandonment of the provisional

application filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after

the filing date of the provisional application filed under

paragraph (c) of this section.

(4) A provisional application is not

entitled to the right of priority under

35 U.S.C.

119

or

35 U.S.C. 365(a)

or

§ 1.55

, or to the

benefit of an earlier filing date under

35 U.S.C.

120

,

121

or

365(c)

or

§

1.78(a)

of any other application. No claim for

priority under

35 U.S.C. 119(e)

or

§ 1.78(a)(4)

may

be made in a design application based on a provisional application. No

request under

§ 1.293

for a

statutory invention registration may be filed in a provisional

application. The requirements of

§§ 1.821

through

1.825

regarding application disclosures

containing nucleotide and/or amino acid sequences are not mandatory

for provisional applications.

*****

The parts of a provisional application that are

required are set forth in

37 CFR 1.51(c)

and

MPEP §

601.01(b)

. The filing date of a provisional application is

the date on which a specification as prescribed by

35 U.S.C.

112(a)

and any drawing required by

37 CFR

1.81(a)

are filed in the U.S. Patent and Trademark Office. No

amendment, other than to make the provisional application comply with the patent

statute and all applicable regulations, may be made to the provisional application

after the filing date of the provisional application

nal application is

the date on which a specification as prescribed by

35 U.S.C.

112(a)

and any drawing required by

37 CFR

1.81(a)

are filed in the U.S. Patent and Trademark Office. No

amendment, other than to make the provisional application comply with the patent

statute and all applicable regulations, may be made to the provisional application

after the filing date of the provisional application.

A provisional application must also include the cover

sheet required by

37 CFR 1.51(c)(1)

, which may be an application data sheet

(

37 CFR

1.76

), the Office’s form SB/16, Provisional Application for

Patent Cover Sheet (available at

www.uspto.gov/

patent/forms/forms

), or a cover letter identifying the application

as a provisional application. Otherwise, the application will be treated as an

application filed under

37 CFR 1.53(b)

. The filing fee is

set forth in

37 CFR

1.16(d)

.

III.

PROVISIONAL APPLICATION - IN GENERAL

One of the provisions of the Uruguay Round Agreements

Act (effective as of June 8, 1995), is the establishment of a domestic priority

system. The Act provides a mechanism to enable domestic applicants to quickly and

inexpensively file provisional applications. Under the provisions of

35 U.S.C.

119(e)

, applicants are entitled to claim the benefit of

priority in a given application in the United States. The domestic priority period

will not count in the measurement of the 20-year patent term. See

35 U.S.C.

154(a)(3)

. Thus, domestic applicants are placed on equal

footing with foreign applicants with respect to the patent term.

A provisional application is a regular national filing

that starts the Paris Convention priority year. Foreign filings must be made within

12 months of the filing date of the provisional application if applicant wishes to

rely on the filing date of the provisional application in the foreign filed

application.

NOTE:

(A) No claim is required in a provisional

application.

(B) No oath or declaration is required in a

provisional application

national filing

that starts the Paris Convention priority year. Foreign filings must be made within

12 months of the filing date of the provisional application if applicant wishes to

rely on the filing date of the provisional application in the foreign filed

application.

NOTE:

(A) No claim is required in a provisional

application.

(B) No oath or declaration is required in a

provisional application.

(C) Provisional applications will not be examined for

patentability.

(D) A provisional application is not entitled to

claim priority to any foreign application or the benefit of any earlier filed

national application.

A provisional application will automatically be

abandoned 12 months after its filing date and will not be subject to revival to

restore it to pending status thereafter. See

35 U.S.C.

111(b)(5)

. The period of pendency of a provisional application

is extended to the next succeeding business day if the day that is 12 months after

the filing date of a provisional application falls on a Saturday, Sunday, or federal

holiday within the District of Columbia. See

35 U.S.C. 119(e)(3)

and

37 CFR

1.7(b)

. For example, if a provisional application was filed on

January 15, 1999, the last day of pendency of the provisional application under

35 U.S.C.

111(b)(5)

and

35 U.S.C. 119(e)(3)

would be

extended to January 18, 2000 (January 15, 2000 was a Saturday and Monday, January 17,

2000 was a federal holiday and therefore, the next succeeding business day would be

Tuesday, January 18, 2000). A nonprovisional application claiming the benefit of the

provisional application must have been filed no later than January 18, 2000.

Effective December 18, 2013, a nonprovisional

application that was filed more than 12 months after the filing date of the

provisional application, but within 14 months after the filing date of the

provisional application, may have the benefit of the provisional application restored

by filing a grantable petition to restore the benefit under

37 CFR

1.78(b)

. See

MPEP §

211.01(a)

January 18, 2000.

Effective December 18, 2013, a nonprovisional

application that was filed more than 12 months after the filing date of the

provisional application, but within 14 months after the filing date of the

provisional application, may have the benefit of the provisional application restored

by filing a grantable petition to restore the benefit under

37 CFR

1.78(b)

. See

MPEP §

211.01(a)

.

A provisional application is not entitled to claim

priority to, or the benefit of, any other application under

35 U.S.C. 119

,

120

,

121

,

365

, or

386

. If applicant attempts to claim the benefit of an earlier

U.S. application or priority to a foreign application in a provisional application,

the filing receipt will not reflect the improper benefit or priority claim. Moreover,

if a nonprovisional application claims the benefit of the filing date of a

provisional application, and states that the provisional application relies upon the

filing date of an earlier application, the claim for benefit or priority earlier than

the filing date of the provisional application will be disregarded.

An application filed under

37 CFR

1.53(b)

may be converted to a provisional application provided

a request for conversion is submitted along with the fee as set forth in

37

CFR 1.17(q)

. The request and fee must be submitted in the

nonprovisional application prior to the earlier of the abandonment of the

nonprovisional application, the payment of the issue fee, or the expiration of 12

months after the filing date of the nonprovisional application. The grant of any such

request will not entitle applicant to a refund of the fees which were properly paid

in the application filed under

37 CFR 1.53(b)

. See

MPEP §

601.01(c)

.

35 U.S.C. 111(b)(5)

permits a

provisional application filed under

37 CFR 1.53(c)

to be converted to

a nonprovisional application filed under

37 CFR 1.53(b)

12

months after the filing date of the nonprovisional application. The grant of any such

request will not entitle applicant to a refund of the fees which were properly paid

in the application filed under

37 CFR 1.53(b)

. See

MPEP §

601.01(c)

.

35 U.S.C. 111(b)(5)

permits a

provisional application filed under

37 CFR 1.53(c)

to be converted to

a nonprovisional application filed under

37 CFR 1.53(b)

. A request to

convert a provisional application to a nonprovisional application must be accompanied

by the fee set forth in

37 CFR 1.17(i)

and an amendment

including at least one claim as prescribed by

35 U.S.C. 112

, unless the

provisional application otherwise contains at least one such claim. The request must

be filed in the provisional application prior to the earliest of the abandonment of

the provisional application or the expiration of twelve months after the filing date

of the provisional application. The filing fee, search fee, and examination fee for a

nonprovisional application and the surcharge under

37 CFR 1.16(f)

,

if appropriate, are also required. For provisional applications filed before December

18, 2013, if the inventor's oath or declaration was not filed with the provisional

application, it must be submitted with the request for conversion. The grant of any

such request will not entitle applicant to a refund of the fees which were properly

paid in the application filed under

37 CFR 1.53(c)

. Conversion of a

provisional application to a nonprovisional application will result in the term of

any patent issuing from the application being measured from at least the filing date

of the provisional application. This adverse patent term impact can be avoided by

filing a nonprovisional application claiming the benefit of the provisional

application under

35 U.S.C. 119(e)

, rather than requesting conversion of the

provisional application to a nonprovisional application. See

37 CFR

1.53(c)(3)

.

Design applications may not claim the benefit of a

provisional application under

35 U.S.C. 119(e)

. See

35 U.S.C

n. This adverse patent term impact can be avoided by

filing a nonprovisional application claiming the benefit of the provisional

application under

35 U.S.C. 119(e)

, rather than requesting conversion of the

provisional application to a nonprovisional application. See

37 CFR

1.53(c)(3)

.

Design applications may not claim the benefit of a

provisional application under

35 U.S.C. 119(e)

. See

35 U.S.C.

172

and

37 CFR 1.78(a)

.