[Patentpractice] Revival of provisional application?

Thu Jun 5 21:00:00 UTC 2025

I remember this came up in a discussion a couple of years ago. As I recall, someone was arguing that the statute did not require payment of the provisional filing fee to claim domestic benefit to the provisional under 35 USC 119(e). This might be technically true, but from a practical standpoint, you must pay the fee or the USPTO will not recognize the provisional on the filing receipt. See 37 CFR 1.78(a)(2) (requiring "each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d)  must have been paid for such provisional application within the time period set forth in § 1.53(g)").

Regarding foreign priority, the legal basis is stronger that it doesn't matter whether the applicant paid the filing fee (Paris Convention Article 4). However, the question that arises is whether the USPTO will provide a certified copy of the provisional for the foreign application if the provisional filing fee is not paid. My bet is that it won't but I don't know for certain (maybe the internal division at the USPTO that makes provisionals accessible in DAS does not coordinate with the division that confirms the fee has been paid).

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Roger Browdy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, June 5, 2025 2:27 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Roger Browdy <Roger.Browdy at FisherBroyles.com>
Subject: Re: [Patentpractice] Revival of provisional application?

I don’t understand why you need to revive at all.  It received a filing date.  Was a basic fee paid that is required for retention?  A provisional does not have to be alive when a PCT or non-provisional is filed.  Why revive at all?

Roger L. Browdy

Partner

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Patentpractice
Sent: Thursday, June 5, 2025 10:57 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: Re: [Patentpractice] Revival of provisional application?

Hi Timothy,

Thank you for your reply, that’s good news.  One rub is that the AAU representative also told me that the POA I’d filed won’t be processed because the provisional has lapsed (I’ve been told – and have seen – this many times when trying to access provisional applications filed by the client, which I think is so frustrating), so I won’t be able to see the entire filewrapper.   Hopefully the client still has all the documentation he’d received – and he doesn’t have access to the file either!  He thinks he filed as a guest and doesn’t have a USPTO account?  Nothing like untying a knot at the last minute!

Best regards,

Katherine

Dr. Katherine Koenig

Registered Patent Attorney

Koenig IP Works, PLLC

2208 Mariner Dr.

Fort Lauderdale, FL 33316

(954) 903-1699

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Targeted Intellectual Property Strategy

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Timothy Snowden via Patentpractice
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Subject: Re: [Patentpractice] Revival of provisional application?

So if I understand that the prov was filed 6/16/2024, and went abandoned 2/25/2025 due to failure to respond to NTFMP, then you should be able to petition to revive unintentionally abandoned application. I just did the same thing in a self-filed provisional where the ADS had not been signed by all inventors and so was treated as not having been filed. They didn't get the notice, the application went abandoned, and as soon as we discovered it when I got the case we filed petition to revive. PTO form SB0064. Make sure to comb through the file history and also file with the petition a reply to any outstanding requirements. It's less than 2 years, so you only have to state that the delay was unintentional - you don't need a statement.

On 6/5/2025 9:44 AM, Katherine Koenig via Patentpractice wrote:

Hi everyone,

We have a utility/foreign filing deadline of 6/16/2025 based on the filing date of a US provisional application (6/16/2025).  The client filed the provisional application himself, and had provided me with the application as filed and the ADS he’d filed.  I’m today learning that he’d received a Notice to File Missing Parts because no certification statement for his micro-entity status had been filed with the application.

I called the AAU and was told the provisional has been abandoned since 2/25/2025 because the client never replied to the Notice.  I’m aware of petitioning to restore the right of priority to a prior-filed provisional that has naturally expired at the end of the 12-month term, but is there a way to revive a provisional for failure to respond to a Notice?  The AAU representative told me there’s nothing we can do, and I’m not aware of any solution – but hoping someone here has a better answer.  Thank you!

Best regards,

Katherine

Dr. Katherine Koenig

Registered Patent Attorney

Koenig IP Works, PLLC

2208 Mariner Dr.

Fort Lauderdale, FL 33316

(954) 903-1699

katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

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