[Patentpractice] Revival of provisional application?

Thu Jun 5 21:42:12 UTC 2025

 I disagree in part with Roger.

For countries other than the U.S., Paris Convention Art 4 says you can make
the priority claim "whatever may be the subsequent fate of the application."

But for a U.S. daughter, Paris doesn't apply.  You have to meet the
requirements of  § 120, including that the daughter must be "filed before
the patenting or abandonment of or termination of proceedings on the first
application."

I'm a bit confused about this one.     § 119(e)(2) says you can't rely on
the provisional unless the fees are paid --- but the reference to §
41(a)(1)(A) or (C) -- I don't understand that.  They're nonprovisional and
plant patent.)

On Thu, Jun 5, 2025 at 4:27 PM Roger Browdy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> katherine at koenigipworks.com
>
>
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> *Targeted Intellectual Property Strategy*
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> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *Timothy Snowden via Patentpractice
> *Sent:* Thursday, June 5, 2025 10:50 AM
> *To:* patentpractice at oppedahl-lists.com
> *Cc:* Timothy Snowden <tdsnowden at outlook.com>
> *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
>
>
>
> *Targeted Intellectual Property Strategy*
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