The United States Patent and Trademark Office (USPTO) is considering making a change to pendency of provisional patent applications.  The change, if adopted, would somewhat extend the existing 12‑month provisional application period to 24-months.  This change would be implemented through the missing parts practice common to nonprovisional applications. 

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.  

Currently applicants have a one-year period from the filing date of a provisional application to file a corresponding nonprovisional application in order to claim the benefit of the provisional application.  The proposed change would not alter this requirement but instead would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application.

Under the proposal, applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application was filed, pay the basic filing fee, and submit an executed oath or declaration.  In addition, the nonprovisional application would need to be in condition for publication and applicant would not be able to file a nonpublication request.  Applicants would be given a 12-month period to decide whether to pay the required surcharge and the additional required fees.

The USPTO is currently accepting comments on its proposal before considering it for implementation.  A copy of the USPTO Notice is available here.