[Patentpractice] Revival of provisional application?

Thu Jun 5 22:36:32 UTC 2025

Paris Convention Article 4 needs to come with an asterisk that says "Terms and Conditions Apply." For example, if the USPTO won't play ball and provide a certified copy in absence of payment of the fee, then, from a practical standpoint, it doesn't really matter what Article 4. Also, the Patent Law Treaty allows the USPTO to assign a filing date to a patent application filed by reference and then treat it as though it was never filed for purposes of Article 4 if the applicant does not meet the subsequent requirements within the set amount of time.

As for a US provisional, domestic benefit can be claimed under 119(e), which does not require copendency, or under 120, which does require copendency (there might be other significant differences, but I never claim 120 benefit to a provisional so I haven't looked into this). The former is accomplished by listing the nonprovisional in the ADS as "claims the benefit of provisional" and in the latter is accomplished by listing the nonprovisional as a continuation or CIP of the provisional.

It looks like David found the statutory loophole justifying not paying the nonprovisional fee. Back in 1994, 35 USC 119 and 41(a)(1) were amended so that 119(e)(2) refers to 41(a)(1)(C), which, at the time, listed the fee for a provisional application.
[cid:964e98fe-7916-41a6-a151-e25577303505]
However, in 2011, 41(a)(1) was amended so that the provisional fee was moved to 41(a)(1)(D) without a conforming amendment to 119(e)(2).
[cid:49fcaddd-bf55-4708-a3e5-81909e4352c2]

So Katherine, you have your petition/appeal pathway laid out when the USPTO refuses to acknowledge the benefit claim to the provisional—i.e., 35 USC 119(e)(2) doesn't require payment of the fee due to the typo and the rule requiring payment of fee exceeds the USPTO's rulemaking authority because it is substantive not procedural.

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, June 5, 2025 3:42 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] Revival of provisional application?

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<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Katherine Koenig <katherine at koenigipworks.com<mailto: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<mailto:katherine at koenigipworks.com>

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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>

[cid:ii_197420b41954cff311]

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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