Who cares about Patent Term?: Biotechnology Patent Applicants

For patent applications filed since 1995, the patent term is calculated by adding twenty years to the filing date. US applicants can add up to one year to the term by first filing a provisional application and then, after a one-year delay, filing a regular (non-provisional) application.  This is because the filing of the provisional application does not trigger the beginning of the twenty year term.  Provisional applications have the additional benefit of delaying some prosecution costs. However, the total application cost may well be greater because of the added fees and attorney oversight.

Shifted Term: Although the patent term with a provisional application can be up to twenty-one years from the provisional filing (not counting other term adjustments), the effective term (issue date to expiry date) is not really changed. Rather, because the USPTO does not examine (or even queue) provisional applications, the extra year on the end of the term is balanced by an extra year in prosecution. Thus, the trade-off is a question of whether the additional enforceable time is more valuable in three years from filing or in twenty years. 

Taking Advantage of Provisional Patent: The chart below shows the percent of US originated patents issued in 2010–2011 that claim priority to one or more provisional patent applications, grouped by USPTO technology center. Provisional applications have become popular across all technology areas. However, when compared with other areas of technology, the patents examined in Technology Center 1600 (Biotechnology and Organic Chemistry) are much more likely to claim priority to provisional applications and gain the year of delay.  In that area, research competition and a norm of academic publication requires that applications be filed early in the development process to avoid loss-of-rights. Yet, products are typically not ready or approved for market by the time of issuance. It is unclear at this point how many applicants will take advantage of the USPTO’s two-year delay program.

USPTO Technology Centers:

 1600 – Biotechnology and Organic Chemistry
 1700 – Chemical and Materials Engineering
 2100 – Computer Architecture, Software, and Information Security
 2400 – Computer Networks, Multiplex communication, Video Distribution, and Security
 2600 – Communications
 2800 – Semiconductors, Electrical and Optical Systems and Components
 2900 – Designs
 3600 – Transportation,Construction, Electronic Commerce, Agriculture, National Security and License & Review
 3700 – Mechanical Engineering, Manufacturing, Products

Over the past several years, the percent of patents that claim priority to a provisional application has continued to rise. I expect that trend to continue.

  

62 thoughts on “Who cares about Patent Term?: Biotechnology Patent Applicants

  1. Mr. Bloom, exactly right. Our implementation 20year patent term required internal priority to place US applicants on the same footing as non US applicants.

    Provisional applications were “invented” by England a long time ago to prevent the lost of patent rights by pre-filing public use and publication. The US never adopted the English innovation, but preferred the grace period.

    As to why the English system was sabotaged by the Federal Circuit — we, Max and I, had that discussion awhile back. It happened when the EPO adopted the Feds view that claims had to have full 112. p. 1 support to antedate intervening art. This was not really required under the Paris Convention.

    Even so, it might be useful as an alternative thought to do away with the current proposal for a grace period in first-inventor-to-file, and substitute the old English system where intervening art disclosing what the provisional discloses is removed, regardless that the claims do not have full Section 112, p. 1 support in the provisional.

  2. The drug companies have other special provisions.

    I believe this feature of provisional applications was implemented when we went to 20-year-from-filing terms, in implementing TRIPS. The Paris Convention mandates a 12-month priority right for foreign filing, while TRIPS requires a 20-year term for enforceability. This trick where the provisional filing doesn’t count against your term is necessary to maintain parity between U.S.-only applicants and foreign applicants that file first elsewhere. For example, if I file a priority application in Germany and then a U.S. application a year later (properly claiming priority), TRIPS requires that the US give me 20 years of enforceability with respect to my US filing date. That gives me a term that lasts until 21 years after my priority filing. The U.S. inventor who wishes to get the same deal can do it by filing a provisional application first.

  3. Thanks,

    Is this then just a boon to the drug companies? What other arts have patents more heavily value weighted to the end years of patent term?

  4. So to finish, that last year, from July 23,2001 to July 22, 2022, when the drug has gross sales of 2 billion a year, much more valuable to your drug company than getting issued a year earlier, in 2014, when you can’t even sell the drug anyway, since you don’t have FDA approval.

  5. Anon,

    A provisional does not change the length of the term, it shifts the timing. That is, if you filed a non-provisional application today, and received no term extension, your patent would expire by July 22, 2021. If, instead, you filed a provisional first, then a year from now filed the non-provisional application, with no term extension, your patent would expire on July 22, 2022.

    If you are a pharmaceutical company and your patent is to a drug which has to be taken daily for life for maximal efficacy, and as of today you’ve demonstrated efficacy in animals (hence using today as the date of actual reduction to practice and invention), it will probably take you 5-7 years to get through FDA. You don’t care if the patent (which will probably first issue as a narrow compound claim anyway) takes 3-5 years to issue because it won’t matter until FDA approval and ability to sell anyway.

  6. Actually, EG, while Radar does not cite the case, the rule I talk about (requiring Section 112, p. 1) support for a claimed invention) was established a long time ago either by the CCPA or by the Feds. I have cited it several times in these threads and would be pleased to cite it again if necessary.

    The prior uncited case was one of statutory construction, referencing the requirement in 120 not just for a claim of benefit, but for Section 112, p. 1, support for a (claimed) invention. Without that, there is no priority at all.

  7. anon,

    Consider: re published provisional, is it effective as prior art as of it filing date?

    The only other possiblility is prior invention. In the US, that requires an actual reduction to practice. However, a (provisional) patent application does not count as an actual reduction to practice.

    So, one would have to contact the inventors and see if they actually reduced to practice. If so, you might have something.

  8. Thank you, Moonbeams. I did not know that.

    I have never even considered “converting” a PPA to RPA, I guess because I never had a PPA that was complete — something else always comes up in the intervening year that needs to go in.

    Rarely a day goes by when there isn’t something to learn on this blog.

  9. “the failure of the provisional to disclose utility will be fatal to moving the effective prior art date to the date of filing of the provisional.”

    I don’t necessarily agree with this categorical statement, Ned. If you read Giacomini and it’s discussion of In re Hilmer which explained the basis for adding 102(e), the Federal Circuit might well treat a disclosure of the claimed compound as anticipatory under 35 USC 102(e) even if the provisional provides no teaching of utility (that the provisional would not teach at least some utility for the claimed compound would likely be very rare). Here’s the quote from Giacomini that suggests to me that all the the provisional need to do is disclose what is being relied upon for anticipation: Section 102(e) codified the “history of treating the dis-closure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is enti-tled, provided the disclosure was contained in substance in the said earliest application.” Admittedly, this quote from Giacomini isn’t necessarily free from doubt on this question, but I believe your categorical statement above goes too far.

  10. One of the challenges of analyzing provisional practice is that we have very little information about the provisionals that are filed and then go expired without a corresponding nonprovisional being filed.

    I looked at a random sample of provisional serial numbers assigned more than two years ago and about 1/2 were unavailable in PAIR. The other 1/2 were available because a nonprovisional was filed and published.

    That tells me that about 1/2 of the provisionals that are filed are left to expire without a nonprovisional being filed.

    That tells me that cost savings, and not term extension, is the primary motivation for filing provisionals.

  11. This A and A’ is difficult to follow (the broken tags do not make it any easier).

    This is how I think it rolls.

    Think of it this way. An application that is published may have material unclaimed. That unclaimed material is not hidden in a cupboard from the rest of the world – it serves as prior art whether or not it is claimed. Thus, the function of claiming is not material – to the rest of the world for which the item serves as prior art.

    The only difference between this single application and the claiming of priority to a provisional application is due to the fact that a provisional application, left alone is not considered published – for the rest of the world, it is as if it never existed.

    But once a nonprovisional claims priority and the nonprovisional is published (thus causing the provisional application to become published), all bets are off and the material of the provisional, whether claimed or not, is open to the world and is prior art.

    The only thing that I am not sure of is what is the date given to the material of the provisional application – for purposes of prior art against the world. I understand the law gives the date of the provisional as the priority date to the nonprovisional application, but prior art date against the world is different from application priority date.

    What buzzes in the back of my head (and unfortunately I cannot give a cite for this) is the notion that an application – even a provisional application – serves as a sign of what is obvious as of the filing date for whatever content (claimed or not) that is in the application – published or not (yes the Office does have the ability to use unpublished applications as prior art). It is along this line that I would think that the filing date of a published provisional application (published either through conversion or through publication via a nonprovisional) is the date that must be given to all of the material of the provisional application – for purposes of prior art against the world.

  12. unless one files a complete patent application and adds nothing at all

    If so, what would be the point of filing the provisional in the first place?

  13. Yes. A’, disclosed in both but not claimed, is prior art as of the provisional filing date if both also discloses A and A is actually claimed.

  14. Regarding “fixed,” I agree that if A is an invention of one of the applicants, the failure to claim it could be fixed in the prosecution of the patent application (or in a continuation from the patent), in which case the issued patent would be prior art with respect to A as of the provisional’s filing date.

    But, what if A is not the invention of the applicant?

  15. Yeah, and given all the pitfalls that could prevent an effective filing date, provisionals are hazardous to one’s patent health and should be avoided unless one files a complete patent application and adds nothing at all when filing a non provisional or international application claiming priority to it.

  16. Ned, ignore my 6:40 pm comment. I misread what you wrote as “the provisional disclosed A and A’, but the patent only claimed A.” I’m sure you agree that in this case, the disclosure of A’ is prior art as of the provisional filing date.

  17. Example 2:

    Prov. discloses A. Patent discloses A and A’, but claims only A’. No patent claim is entitled to an effective filing date as of the provisional. The effective prior art date of A is the filing date of the patent.

    Is there a case directly on point, Ned? I’m not interested in similar or suggestive cases. I’m asking: are you aware of a case presenting exactly these facts and reaching the result you state?

    You must agree that it is an odd result (also a result that could be easily “fixed” by the owner of A’ to the detriment of the party against whom A’ is being cited, provided that A’ or a child of A’ is pending).

  18. Malcolm, actually, it is irrelevant whether the subject matter forming the basis of the rejection is claimed in the patent or published application. It is rather important that some claim in the patent or published application be “fully supported” “in the manner provided by Section 112, p.1, in the provisional” While enablement is part of this analysis, it is not sufficient. The claims must not rely on any new matter.

    To defeat the examiner, then, all one has to show is that the claims rely on such new matter. If so, the patent or application has no effective filing date as of the date of the provisional.

    Example:

    Prov. discloses A, but no utility. Patent discloses A, discloses utility and claims A. The claims to A have an effective filing date of the filing date of the patent, not that of the provisional. Ditto the effective prior art date of the A subject matter of the patent: it has an effective date as of the date of the patent, not the provisional.

    Example 2:

    Prov. discloses A. Patent discloses A and A’, but claims only A’. No patent claim is entitled to an effective filing date as of the provisional. The effective prior art date of A is the filing date of the patent.

  19. Perhaps what Dennis really meant is that if one converts his patent application into a provisional, then files another 111(a) application claiming benefit to the earlier conversion, one gets (up to) one more year of term.

  20. For many inventions with quick, relatively short commercial lives, early patent issuance is more important.

  21. Regarding 2, I have had two recent cases of my own where I defended on the basis that the claims in the patent were not supported in the provisional and for this reason the effective prior art date of the disclosure in the patent was the date of the patent, not the date of the provisional. I didn’t even have to get into whether the subject matter cited as prior art was disclosed in the provisional.

    ??? This strikes me as very weird. I mean, it would seem that the first question to be asked is “is the subject matter cited as prior art disclosed in the provisional.” That’s a rather more objective issue (similar to a new matter analysis) than the issue as to whether the provisional disclosure would suffice to “support a claim in the utility application,” which would seem to entail more of an enablement analysis …

  22. Ugh! Once again you got me. Yes indeed, the provisional is deemed published when a patent or patent application referencing it is published. It is citable then, but the date of publication is the prior art date, not the date of filing of the provisional.

    Thanks.

    Regarding 2, I have had two recent cases of my own where I defended on the basis that the claims in the patent were not supported in the provisional and for this reason the effective prior art date of the disclosure in the patent was the date of the patent, not the date of the provisional. I didn’t even have to get into whether the subject matter cited as prior art was disclosed in the provisional.

    The claims in the patent in the cases I handled all had new matter in them, matter not found in the provisional. I suspect that this will be a normal situation if the provisional is of the skimpy variety.

  23. Ned: the disclosure of a provisional is not prior art and can never be cited as prior art.

    That’s a bit of an overstatement.

    Provisional applications are published at least as early as the date on which the utility application is published. On that date, the disclosure in a provisional is certainly prior art to any new application filed after that date, and it doesn’t matter what the provisional discloses.

    As to your second point, I think in practice it’s an exceedingly rare instance where the first requirement is met and the second isn’t. I’m not aware of any case where such a situation was presented. Are you?

  24. If you say so Ned. This is why I’m here, to grasp the differences between the US way of thinking and that in Europe. My writing “102(e) priority contests” is just my European way of thinking, breaking through. Sorry about that.

  25. EG, thanks for the post. I had read Malcolm post incorrectly. I agree that for prior art purposes, the disclosure does not have to disclose utility to anticipate.

    But, still, if it is this very same disclosure in the patent that the subject matter forming the basis of the benefit or a priority claim to the provisional, the failure of the provisional to disclose utility will be fatal to moving the effective prior art date to the date of filing of the provisional.

  26. Interesting conspiracy theory.

    As to the new act, it seems to require the following for an earlier effective prior art date:

    1) the subject matter of interest has to be disclosed in the patent or published application;

    2) the patent must be entitle to an effectively date to the “earliest” parent that discloses this subject matter.

    This seems consistent with current law to a degree. What might be missing is that the subject matter of interest does not need to be continuously disclosed throughout the chain. In other words, if the grandparent disclosed A and B, the parent disclosed A but not B, and the patent disclosed and claimed A, and again disclosed B, B would be entitled to a prior art date as of the grandparent despite it not being disclosed in the parent. Under current law, B would be “abandoned” for not being included in the parent.

    “(d) Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application–

    ‘(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’.”

  27. Ned, I see Malcolm made the same point I made. He just was able to “pull the trigger” on his post faster than me.

  28. Giacomini involved electronic data storage method, Ned. But what you appear to be confusing is “effective filing date” for claim support under 35 USC 112, first paragraph, versus “effective prior art date” for anticipation under 35 USC 102(e). That anticipation under 35 USC 102(e) of a claimed compound doesn’t require a disclosure of utility in the reference I know is supported by case law I’ve seen long ago, as reflected by the following from MPEP 2122:

    In order to constitute anticipatory prior art, reference must identically disclose the claimed compound, but no utility need be disclosed by the reference. In reSchoenwald, 964 F.2d 1122, 22 USPQ2d 1671 (Fed. Cir. 1992) (The application claimed compounds used in ophthalmic compositions to treat dry eye syndrome. The examiner found a printed publication which disclosed the claimed compound but did not disclose a use for the compound. The court found that the claim was anticipated since the compound and a process of making it was taught by the reference. The court explained that “no utility need be disclosed for a reference to be anticipatory of a claim to an old compound.” 964 F.2d at 1124, 22 USPQ2d at 1673. It is enough that the claimed compound is taught by the reference.). >See also Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1383, 8 USPQ2d 1001, 1013 (Fed. Cir. 2006) (“[P]roof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.”).<

    Hope that’s clear

  29. I reread your post. You are right, you did not discuss the requirement for the reference to have an effective filing date in the provision. You simply discussed that the “disclosure” cited in the reference did not have to disclose utility to be effective.

    Still, if the provisional discloses no utility for a compound that is subject matter of interest, it is also probable that patent or published application will not have an effective filing date as of the provisional’s filing date if the effective filing date at all depends upon this very same compound.

  30. We are talking here about effective filing dates.

    Not really. We are talking about anticipation and what is required for a reference to anticipate versus what is required for a claim to be valid.

  31. Giacomini should be good law even under the AIA. But then again, it might not. There’s several portions of the AIA, including the new “grace period” provision, that are phrased very oddly (like in the new “grace period” provision, it talks about “or otherwise publically disclosed”) using terminology that’s never been in the patent lexicon before. That’s going to create some real statutory construction “land mines” in litigation which may take years to sort out.

    In fact, Ron Katzelson poses a very plausible “conspiracy” theory that the Goliaths (e.g., Microsoft) who pushed for the AIA deliberately inserted these statutory construction “land mines” into the legislation. The hope of these Goliaths is that, in litigation, they would be able to urge that these new phrases should be construed differently (based on the canon of statutory construction that if Congress uses different phrasing, it was intended to mean someting different), and favorably for the Goliaths. Only time will tell if the statutory construction “land mines” blow up like the Goliaths might hope.

    To me, the language of the AIA has the same “scary” feel as Hatch-Waxman, another poorly drafted piece of legislation that’s like a multi-headed “hydra,” ready to devour litigants in many different ways. For example, the Paragraph IV Certification cases have become almost a “cottage industry” for attorneys who handle them. I wish Congress would leave well enough in the patent law area, they simply screw it up and make everything worse.

  32. I am not sure you are right that utility is not required for an effective filing date.

    I’m not sure that I ever made such a statement, Ned.

  33. Maybe someone who has used it will drop by and explain why they did so. I vaguely remember some discussion of this procedure here many years ago …

  34. Malcolm, you may be right regarding the requirement for anticipation, but I am not sure you are right that utility is not required for an effective filing date.

  35. EG, I don’t recall a case that actually held what you just said. We are talking here about effective filing dates. Is there a case that has actually held that a claim to a compound is entitled to an effective filing date to an earlier application that does not disclose a utility for that compound? I find that puzzling,as it appears to violate the statute which require “disclosed in a manner provided by Section 112, p. 1)

  36. “The other caveat is that if you convert your provisional to a non-provisional under 37 C.F.R. §1.53(c)(3), then the PPA filing date *is* relevant to the patent term (i.e., term will be calculated from the PPA filing date, not the conversion date).”

    Very good point Malcolm. That’s probably the reason the “conversion” route is rarely used (I’ve never used it).

  37. Malcolm,

    1) the disclosure of a provisional is not prior art and can never be cited as prior art.

    2)for a patent or published application to be prior art as of the provisional filing date, there are two requirements:

    - first that the subject matter cited be disclosed in the provisional; and
    - second, that the patent or published application have the benefit of the filing date of the provisional for at least one claim.

    The latter requirement is critical. The skimpy provisional may be too skimpy to support any claims in the patent. If so, no claim in the patent is entitled to an effective filing date as of the date of the provisional so it is completely irrelevant what the provisional discloses.

  38. And to add further to EG’s point, not only is a positive disclosure of utility not required for anticipation, but the earlier disclosure can even disparage the later-claimed “invention” as lacking utility and still anticipate the later-filed claims.

  39. The provisional patent application (PPA) adds nothing to the patent “term.” The “term” begins on the day the regular patent application (RPA) is filed and runs for 20 years. What happens before that day has no effect on the “term.” The PPA is irrelevant to the patent term.

    I think that last sentence was Dennis’ point, BB. But I agree with you that Dennis’ characterization of the rules is inaccurate.

    The other caveat is that if you convert your provisional to a non-provisional under 37 C.F.R. §1.53(c)(3), then the PPA filing date *is* relevant to the patent term (i.e., term will be calculated from the PPA filing date, not the conversion date).

    link to uspto.gov

  40. Giacomini. That was the name. Thanks EG. Will still be good law under the Bill, I imagine. Another demonstration that FItF is a turbo-charged, super-aggressive variant of ROW FtF.

  41. Thanks MM. In Europe we might call it “self-collision”. The risk is well-known and well-understood. But I had thought it to be an exclusively EPC issue, with inventor’s own earlier domestic filings in the USPTO and JPO exempted from counting against her as prior art at home. Thus, I’m quite alarmed, to think of American inventors inadvertently shooting themselves in their own faces. You can’t afford to lose any more of them, can you?

  42. Dennis,

    BB is correct. The provisional filing simply doesn’t start the patent term ticking; only a non-provisional filing does.

  43. “whether a provisional can take away the validity of a later-filed claim of a rival.”

    MD, it might. See Federal Circuit’s 2010 decision in In re Giacomini (the effective 102(e) date of the non-provisional may be based on the provisional filing date). And Malcolm is correct, you don’t need the type of disclosure required by 35 USC 112, first paragraph. For example, if its the compound being claimed, all the provisional needs is a disclosure of the claimed compound and a method for making it (or a method that would be obvious to carry out to make); a disclosure of utility isn’t required.

  44. I also would add to these:

    a) Internal memos from the inventors addressed to the patent department describing the invention. Comparing the final application with the draft gives some insight in the drafting process.

    b) Scientific paper drafts. The patent department simply files them as provisionals before the paper is submitted to a conference.

    c) For the marketing documents, the worst I’ve seen was a 500 pages consisting of paper scraps, multiple copies Powerpoint presentation printouts, and a software user manual. The document was rather testimony pleading AGAINST the existence of an invention.

    d) Provisionals filed in a foreign language resulting from the Hilmer doctrine. The Koreans do this a lot.

  45. Forgot to mention, MD: I don’t know how the bill will change this. Generally speaking, I don’t believe it will have any effect on the problem I described. With respect to disclosures in provisionals specifically, I’m not familiar enough with the bill’s details to know the answer. I’m assuming that the issues will remain more or less as described above unless someone convinces me otherwise.

  46. MD I was idly supposing that a skimpy pro might be good to knock out a later claim of a rival, even if it is not good enough to support a claim of the full application filed one year after the pro. Could that happen?

    I believe so. Anticipatory disclosures do not need to be enabled to the same extent that claims need to be enabled. More commonly what you see is a broad description of an invention that could not be granted as a claim (e.g., because there is no data provided that would support the breadth of the disclosure) blocking a later attempt to obtain a broad claim based on later-obtained data. In the field, this is sometimes referred to as “shooting yourself in the face.”

  47. But MM, I was hoping for more. For example, can you remind me how it works in the USA, with:

    1. whether a claim of the full application is entitled to the date of the provisional filed one year earlier

    as opposed to:

    2. whether a provisional can take away the validity of a later-filed claim of a rival.

    I was idly supposing that a skimpy pro might be good to knock out a later claim of a rival, even if it is not good enough to support a claim of the full application filed one year after the pro. Could that happen?

    Also, can you comment, when the Bill comes in to force, will the position change at all?

  48. In the biotech and pharma field, the standard practice for pharmaceutical related patents (new chemical entity, new use, etc.) is to file a provisional application drafted to the same standards as a utility or PCT application. The reason is fairly simple – new pharmaceutical drugs take at least ten years from discovery to regulatory approval by FDA, and often much longer, and typically a new product does not reach peak sales until 4-5 years after market introduction. Patents typically expire when a product is at or close to peak sales. Extending the effective patent term by one year as a result of filing a provisional application can be worth anywhere from tens of millions of dollars to a billion or more. A full bells and whistles provisional is necessary because the biotech/pharma industry is highly competitive, and the only way of being certain that priority, enablement, etc. is definitively established is to file a provisional that is substantially identical to the downstream utility or PCT. Often the utility or PCT is completely identical to the provisional, other times new data, compounds, etc. will be added. The strategy is driven solely by economics, and seeking desperately to extend the effective patent term for the small percentage of pharma patents that actually result in approved products.
    Typically examination is low priority – since absent FDA regulatory approval you can’t sell product, there is no particular reason to obtain a patent quickly. I’m actually delighted when the patent office delays examination and I get a “free” extension under 154(b).

  49. Dennis: “US applicants can add up to one year to the term by first filing a provisional application and then, after a one-year delay, filing a regular (non-provisional) application.”

    This statement is clearly inaccurate, and, consequently, so is the premise.

    The provisional patent application (PPA) adds nothing to the patent “term.” The “term” begins on the day the regular patent application (RPA) is filed and runs for 20 years. What happens before that day has no effect on the “term.” The PPA is irrelevant to the patent term.

    Saying that a PPA extends a patent’s term by a year is one of the ploys used by crooked patent lawyers to sucker applicants in to shelling out an extra $3000 to get a PPA drafted and filed.

    The situation is precisely analogous to making a public disclosure a year to the day before filing the RPA — the public disclosure does not extend the patent term.

    The only situation I can think of where a PPA might affect the period during which the patent may be enforced is if the published claims and the final patent claims are nearly identical and someone infringes after publication but prior to issue.

    When there is publication, the application is published 18 months from the PPA filing date, and so 18 months earlier than if the PPA had not been filed. So the effect of PPA is to move the publication date 12 months closer to the date the patent term began, but the term itself is not changed. It is still 20 years.

    After 1995 “patent term” is pretty much a bogus concept anyway. The only meaningful time frame is the enforcement period, which runs from the date of publication (under certain circumstances) or the date of issue (if there is no publication or if the published claims are amended) to the date the patent dies, whatever date that may be.

  50. I believe the publication period needs a few caveats.

    Those desiring complete non disclosure have that option (at the choice of non-filing abroad).

    The option to change from complete non-disclosure to disclosure is available if the option above is reevaluated prior to any foreign filing deadline.

    The 18 months later is drawn back to the earliest priority claim. If the full year of the provisonal prior to the filing of the nonprovisional (or conversion of the provisional to a nonprovisional) is used, publication would be 6 months after the latter action.

    I believe that a strategy of delaying publication as long as possible is useful for any art that you want to prevent possible competition from seeing what you are up to (that would be every art).

  51. Me, I am hoping to see some discussion about the role of provisionals in 102(e) priority contests. Using a provisional, you can block the filings of your competitors without disclosing to the public anything in advance of your A publication, 18 months later. That strikes me as a useful strategy, at least in chem/bio.

  52. In my experience, there are different types of provisionals. (1) Some that don’t even appear to be drafted by an attorney but are just the submission of marketing materials, academic article, or something along those lines. (2) Others are hastily put together applications because the client needed something filed immediately or perhaps because the client wants something on file very cheaply. (3) But then, there are full applications with claims and everything.

    For those in the last category, I’m guessing a judgment call has often been made that enforcement will be more valuable twenty years down the road. For the first two, probably not much judgment has been made. The latter two are also likely to present section 112 problems when the attorney drafts the non-provisional or attempts to amend during prosecution.

    (This is all obvious stuff but I thought some type of discussion on provisionals, their pitfalls, and benefits was warranted).

  53. Is there a correlation between use of provisionals and arts that are not predictable. I’m thinking that chem/bio experiences a gap between defining the invention and creating the comparative data to put in the specification, whereas engineering and physics don’t need that extra year for generating that extra numerical data.

  54. Filing early, when you are not ready and quite possibly before you actually have a true invention, does not seem like very grown-up behavior to me.

  55. Does entry into the program effectively delay substantive prosecution for an additional year after the 1yr provisional wait? Anyone have experience with this?

Comments are closed.