Provisional patent applications

Godek, A.R. (2000), Cement Industry Technical Conf., Sat Lake City, May, 513 Coghill, P.J. (2000), Australian Patent Provisional Application No PQ 1176, CSIRO Minerals, 513... 

J. Graham, Activated Carbon for Odor Control and Method for Making Some. US Patent provisional Application serial No. 60/254,900, December 11,2000... 

The third invention reported by the authors [19] was related to sulfur oxidation, but the invention was not patented. It was only registered with the Statutory Invention Registration (SIR). What this means is that, it is not a utility patent as the rest of the documents considered in this Chapter, rather a SIR registered document containing the specification and drawings of a provisional application filed for a patent, which has not been subjected to examination yet. It is issued by the PTO, if the applicant, among other requirements, waives the right to receive a patent on the invention within such period as may be prescribed by the Commissioner. The invention such as this, on which a statutory invention certificate is published, is not a patented invention for most purposes. 

Sharpless, B.K., Fokin, V., Rostovtsev, V.V., Green, L., and Himo, F. (2005) Copper-catalysed ligation of azides and acetylenes. US Patent Application 2005/0222427 Al, published October 6, 2005, filed May 30, 2003 provisional application filed May 30, 2002. 

The first and easiest thing that might be done is nothing at all. The applicant may simply decide not to pursue the invention, and after 12 months, the provisional application is automatically abandoned without any affirmative action by the applicant required it s as if the patent application never existed at all.12 In this regard, it must be reemphasized that a provisional patent application is not examined for patentability by the USPTO and, accordingly, will never give birth to an issued patent.13... 

This does not mean that a provisional patent application will never be publicly available. In the case in which a later-filed nonprovisional patent application is published by die USPTO and that later-filed patent application claims priority to die provisional application, then that provisional patent application is available to the public as part of that patent application s file history. 

Let s start with the most recently filed patent application and then work backward. For compound D, there was no provisional patent application that was filed containing its structure. Rather, the compound made its first appearance in the nonprovisional patent application therefore, it properly claims priority to a filing date of July 29, 2009. The third (last) provisional application that was filed contained compound C only, and it was filed on April 15, 2009, so compound C s effective priority date is April 15,2009. The second provisional application that was filed contained compound B only, and it was filed on December 29, 2008, so compound B s effective priority date is December 29, 2008. 

One way to avoid the scenario just outlined for compound A, where effectively a whole year of priority filing for that compound has been lost, is to include the contents of each provisional patent application in the next provisional application. If that had been done in this example, the provisional application containing compound B that was filed on December 29, 2008, would also contain the subject matter from the earlier provisional application containing the compound A. This way, if for some reason the 1 year time frame was missed as in the example, the priority date for compound A would be December 29, 2008, rather than pushed all the way forward to July 29, 2009. This may not seem like much, but in a highly competitive area it can sometimes mean a lot.19... 

So if an applicant files a provisional patent application on June 1,2007, and files a nonprovisional patent application in the United States on May 28, 2008, that claims priority from the provisional patent application, then, under normal circumstances the patent application will be published around December 1, 2008. The application that is published is the nonprovisional patent application and not the provisional application. However, on the day the nonprovisional patent application is published, the provisional application together with the patent file history (including the formal correspondence between the applicant and the patent office) become available to... 

The patent attorney drops off the patent application with the U.S. Postal Service (USPS) using Express Mail to Addressee Service and includes a stamped, self-addressed return postcard to make sure that the patent office gets the application (not that he doesn t trust the USPS). He deposited the provisional patent application at the post office on January 13, 2005, and later received the postcard confirming that the USPTO had received the provisional application. He dutifully placed the... 

A U.S. provisional patent application is not published or becomes publicly available until a regularly filed application that claims priority to it is published. At the time the regular application is pubhshed, the file history then becomes available to the public, including any provisional applications from which the regular application claims priority. Electronic file histories for recent U.S. patent applications are available for free at the USPTO s website under the Patent Application Information Retrieval (PAIR) menu. 

In order for the provisional application to be relevant 102(e) prior art as of the date it is filed, the subject matter of that provisional application must provide written support (enablement—i.e., teach one to make and use the invention) for the portion of the pubhshed patent application or issued patent that is being rehed on as 102(e) prior art. 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

A provisional application does not confer upon an inventor any ability to exclude others from practicing the invention, nor does it affect the term of any patent issued on a nonprovisional application subsequently filed. 

Effective June 8, 1995, inventors may file a new type of patent application—the provisional application—in the U.S. PTO. Provisional applications may offer significant advantages to at least some patent applicants. However, if not used carefully, the provisional application may, in some instances, lead to the loss of significant patent rights. 

The provisional application was intended to provide a domestic priority document and thereby "level the playing field" for domestic patent applicants relative to their non-United States counterparts. Applicants who have filed previously in countries outside the United States have been able to, and still can under the current statute, use their earlier-filed foreign patent application to secure a priority date for the United States application (if the... 

The filing of the provisional application does not trigger the 20-year patent term. Rather, only the later-filed regular application starts the 20-year period (90). Thus, by filing a provisional application, followed within 12 months by a regular application claiming priority from the provisional application, an applicant can effectively obtain a patent term of 21 years (as measured from the date of the provisional application) (91). 

Concerns. The requirements for a provisional application appear deceptively simple. Indeed, the PTO initially urged that the provisional application would provide a quick and inexpensive method for inventors to obtain a priority date because claims were not required and, supposedly, the written description need not be as detailed as a regular application (109). Almost immediately, however, it was recognized that the use of the provisional application might not be as easy as first suggested (110). Nonetheless, it is also evident that the new provisional application offers significant benefits to the patent applicant. It es-... 

Enablement-type issues may not arise during prosecution of the patent application thus an applicant may obtain a patent based on the provisional application s priority date. During... 

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