UPDATE: Change Proposed in USPTO

It seems that the deferred examination fee policy currently in effect in the Japanese Patent Office has caught the attention of the USPTO. The USPTO has just proposed a similar change that would effectively provide a 12-month extension to the provisional patent application period.

Currently, a nonprovisional application can be filed without filing fees or an executed oath or declaration. The applicant subsequently receives a Notice of Missing Parts of Nonprovisional Application requiring payment of the filing fees and submission of the executed oath or declaration.

Under the proposed change, the applicant would be permitted to file a nonprovisional application containing at least one claim within the 12-month statutory period after the filing of the provisional application, pay the basic filing fee ($330), and submit an executed oath or declaration. The application would need to be in condition for publication and the applicant would not be able to file a nonpublication request. The applicant would then receive a Notice of Missing Parts with a 12-month-from-filing deadline, at which point the applicant would pay the outstanding search and examination fees ($760) along with any excess claim fees, and a surcharge.

The benefits of this change are three-fold:

  1. The deferred search and examination fees would grant the applicant additional time to “test the market” before deciding to continue with prosecution.

  2. Applications which applicants decide not to prosecute are removed from the USPTO’s workload

  3. The public benefits by the increase in applications that enter the pool of prior art.

This proposed change is currently open for comment until June 1, 2010. Then it’s a matter of if and when it gets implemented.


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