Provisional patent

Weissig V, Boddapati S, Hanson R, Torchilin VP. Mitochondriotropic phospholipid vesicles. U.S. Provisional Patent Application NU-662Xq800, 2004. 

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. 

Only one party can be awarded a patent to an invention (die same invention cannot be patented twice), and die prize usually goes to the party that can establish that it was die first party to invent the contested subject matter. This is a consequence of die United States being a first-to-invent country (more will be explained regarding this facet of U.S. law in Chapter 3). The first-to-invent system makes a provisional patent application less critical than if die United States were a first-to-file country like the rest of the world. However, filing a provisional patent application in the United States is still advantageous because any... 

U.S. nonprovisional patent applications terms are normally 20 years from the date of their filing. A provisional patent application can establish the filing date of the subject matter disclosed in the application but does not start the 20-year clock ticking. One way of looking at the provisional patent application is that it effectively extends a 20-year patent term up to a 21-year patent term.16... 

After establishing that the compound is active in well-established biological models, a provisional patent application (number 61/136,899) is filed on July 15, 2008, describing the synthesis and biological activity of the compound A. 

The use of patent term in this context does not imply that there is 20 or 21 years of enforceable patent life with some limited exceptions, a patent is usually issued before it is enforced against infringers. If one considers that patent prosecution can easily take a few years before any claim issues from the filed patent application, than the enforceable patent life can be markedly shorter than the 20-year patent term. In the context used in this chapter, the patent term refers to the period from the filing date of the earliest patent application relied on for its priority date in the chain (the first-filed provisional patent application in this instant). 

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. 

Notice the nonprovisional patent application needs only to refer to the provisional patent applications to which it claims earlier priority it does not need to explain which provisional patent application supports what subject matter in the nonprovisional patent application. 

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... 

Can you appreciate the advantage of filing provisional patent applications They offer ease of filing and reduced costs and thus facilitate the prompt filing of inventions as they occur in the course of a research program. Moreover, they allow for an entire year of effort to develop additional compounds with protection of the inventions as they develop without having to wait for the entire body of work to be finished... 

Given the many advantages of filing a provisional patent application, it might be difficult to appreciate that there are circumstances in which it can be advantageous... 

Generally, as a parallel consideration, a regular patent application filed with the USPTO will eventually be published and thus made available to the public in much the same manner as that described previously for PCT applications.27 The timeframe for publication is usually 18 months from the filing of the first application from which priority is claimed (as is the case for a PCT-filed application), except a patent application entering the United States from the PCT will already be 18 months from the nonprovisional filing date and up to 30 months from any earlier-filed provisional patent application from which it claims priority (but, of course, such an application will have already been published by the PCT as a WO publication at the 18-month time point). 

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. 

The word probably is used because 102(e) prior art can be antedated by showing prior invention. On the surface, the applicant s chances don t look especially promising because he just filed die patent application, whereas the competitor s patent application just published. Since the normal time from filing a provisional patent application to publication of an application properly claiming priority to that application is approximately 18 months in the United States, there is at least a good chance die competitor actually invented the subject matter before the applicant as well. 

Similarly, in Australia, a provisional patent application can be lodged to establish priority the complete application must be filed within 12 months. 

J.-P. Belieres, M. Yoshizawa, Provisional patent application file No. 9138-0123. 

As a method for producing piperonal, it has been generally known a method of oxidizing 3,4-methylenedioxy-mandelic acid with nitric acid (for example, P. S. Raman Current Science, 27, 22 (1958), Perfumer Flavourist, 14,13 (1989), EP 429316, etc.). Also, it has been known that 3,4-methylenedioxymandelic acid can be produced by reacting 1,2-methylenedioxybenzene and glyoxylic acid in the presence of sulfuric acid, etc. (for example, Japanese Provisional Patent Publication No. 95573/1979, Perfumer Flavourist, 14, 13 (1989), etc.). 

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