Case 1:19-cv-11586-FDS Document 176-6 Filed 04/21/21 Page 1 of 2
`Case 1:19-cv-11586—FDS Document 176-6 Filed 04/21/21 Page 1 of 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` EXHIBIT W
`
`EXHIBIT W
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 176-6 Filed 04/21/21 Page 2 of 2
`
`[ii] PTO Processing; Conversion.
`Section 111(b)(8) provided that Sections 131, 135, and 157 did not apply to provisional
`applications, which meant that provisional applications were (1) not subject to examination
`(Section 131), (2) could not be the basis for an interference (Section 135), and (3) could not be
`issued as a statutory invention registration (Section 157).
`The PTO’s rules barred provisional applicants from filing information disclosure statements,
`which would serve no purpose in the absence of a PTO search and examination. They barred
`amendments except those necessary “to make the provisional application comply with all
`applicable regulations.”
`Prior to a 1999 amendment, Section 111(b)(5) provided that a provisional application “shall be
`regarded as abandoned 12 months after the filing date of such application and cannot be subject to
`revival thereafter.”
`Section 111(b)(6) allowed an applicant to convert a complete Section 111(a) application into a
`provisional application. An advantage of a provisional application is that its filing does not start
`the 20-year-from-filing patent term.
`In 1999, Congress amended Section 111(b)(5) to allow conversion in both directions, that is, from
`provisional to non-provisional as well as from non-provisional to provisional: “[n]otwithstanding
`the absence of a claim, upon timely request and as prescribed by the Director, a provisional
`application may be treated as an application filed under subsection (a). Subject to section 119(e)(3)
`of this title, if no such request is made, the provisional application shall be regarded as abandoned
`12 months after the filing date of such application and shall not be subject to revival after such 12-
`month period.”
`In amending Rule 53(c) to conform to this statutory change, the PTO required payment of a fee
`and the addition of at least one claim if the provisional application did not contain a claim. The
`PTO also warned that a conversion from provisional to non-provisional status may be inadvisable
`because it can result in loss of up to a year of potential patent term.
`The legislation allowing conversion to a nonprovisional application may have been desirable to
`cure a potential problem with the status of provisional applications as the basis for priority in other
`countries. It would seem to resolve conclusively any doubt about whether a U.S. provisional
`application constitutes a “regular national filing” of a patent application within the meaning of
`Article 4 of the Paris Convention. It removes an argument that might have been made to a court in
`another country that a U.S. provisional application is not a true patent application because it cannot
`be examined or be issued as a patent. Hence, the change establishes the status of a provisional
`application as a regular filing for transnational law purposes even if, in fact, few applicants exercise
`the right of conversion from provisional to nonprovisional.
`4 Chisum on Patents § 11.02[1][g][ii] (2021)
`
`