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All Questions in Patent Process >> How to revive a provisional

How to revive a provisional

Posted by Anonymous . updated on 2/26/2009
1) If a provisional application has been expired for over 12 months, is there a way to revive it ?

2) I am aware that the priority date is long gone, but would the revival be beneficial as a defense mechanism in the future ?

To illustrate:  if my provisional expired 12/12/03 and I am reviving it on 8/12/04, can I prove an earlier date of invention against the application filed on 2/12/04 ?
Answers (11)
 
clarkla...
Quote
1) If a provisional application has been expired for over 12 months, is there a way to revive it ?


No.  

Quote
To illustrate: ?if my provisional expired 12/12/03 and I am reviving it on 8/12/04, can I prove an earlier date of invention against the application filed on 2/12/04 ?


You cannot revive a provisional application.

But ignoring that, a filed provisional application might have evidentiary value for proving conception and reduction to practice of an invention assuming that the disclosure fully complies with 35 USC 112  first paragraph with regards to the claimed invention.

I've never actually seen a provisional so used, but perhaps a 102(a) or 102(e) rejection could be overcome using a declaration to swear behind the rejection and by using the expired provisional as evidence to establish both conception and reduction to practice on the provisional filing date.

 
 
Wiscagent
1)  No, you can not revive a provisional application.  You can of course (for $100) simply refile the same (or a new) provisional application.  As you noted, the priority date would be the date of the refiled application, not the original one.

2)  If you have maintained good records, including a filing receipt from the USPTO, and if you had your application witnessed, signed, and dated, that would be strong evidence that you had posession of whatever was filed on the date it was filed.  There still can be questions, of course about whether the invention was enabled, whether you are the true inventor, and so forth.
 
 
SoloEsq
Thank you guys, that helps. Just to get the fundamentals clear, it can be revived, provided that it is done w/i 12 months along with unintentional or unavoidable delay etc petition right ?
 
 
Wiscagent
"Just to get the fundamentals clear, [a provisional application for patent] can be revived ..."

No.

You can refile the provisional application, but that is simply treated as a new application.
 
 
SoloEsq
Got it, thanks !
 
 
Joe
Wrong!  See 37 CFR 1.137(g) "A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and ? 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances. "

So if it's within the 12 month period you CAN revive a provisional app, and keep your provisional filing date.
 
 
Joe
See 37 CFR 1.137(g) "A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section. Subject to the provisions of 35 U.S.C. 119(e)(3) and ? 1.7(b), a provisional application will not be regarded as pending after twelve months from its filing date under any circumstances. "

So if it's within the 12 month period you CAN revive a provisional app, and keep your provisional filing date.  After 12 months it would be dead anyways, so nothing to revive.
 
 
Wiscagent
The original poster asked:
  If a provisional application has been expired
  for over 12 months, is there a way to revive it ?  

The answer is NO.

The passage you quoted relates to a situation wherein the provisional application had some defect - such as failure to pay the required fee.  And as you noted, all the revival does, is keep the provisional application "alive" until the first anniversary of the original filing.
 
 
clarkla...
Quote
The original poster asked:
 ? If a provisional application has been expired
 ? for over 12 months, is there a way to revive it ? ?

The answer is NO.



I was going to respond similarly, then I noticed that the OP had also asked a second question about reviving a provisional during the pendency period. ? Joe answered the second question.


 
 
arfeigel
Hey, if you allow your provisional to expire after 12 months, then later file an identical application, might you fall prey to a 102(c) abandonment rejection?  I'd guess not, since I believe the courts read a big intent element into 102(c).  But I'm curious...

KB
 
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