Claiming Priority to Provisional Applications

As the following chart demonstrates, provisional patent applications are increasingly relied upon by US patent applicants.  More than 1/3 of recently issued utility patents of US-origin claim priority to at least one provisional application. (Here, I defined US-origin as patents that do not claim priority to any prior foreign or international applications). Of applications that claim provisional priority, most (~80%) claim priority to only one provisional application.  

I have written previously that provisional applications are serving their intended role of adding 1-year delay to the prosecution process. By design, the US 20-year patent term does not begin until the filing of a subsequent non-provisional application. Thus, a provisional application has the dual benefit of (1) establishing an early priority date for patentability while (2) shifting the patent term one-year later.

For the cumulative frequency chart below, I created a dataset of about 165,000 patents that have issued since January 2005 and that claim priority to at least one provisional patent application. For each patent, I identified the number of days between the filing of the earliest provisional application and the subsequent non-provisional application. According to the Patent Statute, a non-provisional application must be filed by the 12-month deadline or else be deemed abandoned. About 40% of the non-provisional applications were filed within one day of the 12-month deadline. About 70% were filed within two-weeks of that deadline.

72 thoughts on “Claiming Priority to Provisional Applications

  1. A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention.A patent applicant is an inventor or joint inventors who are applying for a patent on their own invention, or the person who is applying for a patent in place of the inventor.

  2. Non-Amer PA,

    The claims as filed ARE part of the specification. The US Examiner will likely reject any claims not supported by the spec (under 35 USC 112, 1st paragraph), but you can then amend the spec to add what’s in the as filed claims. Another reason for adding at least some claims to a provisional to avoid a complete miss under 35 USC 112, 1st paragraph (especially if the provisional is being prepared and filed in a hurry, as it many times is).

  3. @IANAE, you wrote: If the provisional spec doesn’t support the claim, what good does it do you to also have the unsupported claim in the provisional?

    I thought in America (as well as many but perhaps not all countries), the claims are part of the specification and therefore supporting in and of themselves.
    Anyone care to comment ?

  4. Merry Christmas and Happy New Year, MM. I’m a forgiving person too. I also know when to “sleeping dogs lie.” Do you?

  5. That’s not an answer

    Yes.

    It is an answer. It is the answer.

    It may be an answer you do not like, but that does not change the fact that it is the answer.

    Dissection is not allowed.

    Thus your question is a bogus question that deserves no further discussion.

    That is the law.

  6. EG: You may not boil down (that is, parse) a clim to only the mental step and call it “effectively” a purely mental step claim.

    That’s not an answer, EG. It’s also false because I’m not calling a claim in the form [oldstep]+[newthought] a “purely mental step claim.” I’m merely pointing out an irrefutable fact (one that you are incapable of refuting, apparently, that is for sure) that such a claim is effectively a claim to a mental process, at least as far as practitioners of the prior art are concerned.

    Do you really need to me to explain why that is the case, EG? Or you that dishonest? Or that ignorant?

    Once again, I’m reminded of my arguments with creationists. When confronted with a bad fact, they l.i.e. or simply change the topic. Extremely dishonest, and also extremely telling about the true nature of their positions.

    Why can’t you be honest about this non-religious matter, EG? The non-sockpuppet/non-txxbxxgxrs who post here regularly disagree about all kinds of stuff but we’ve all been able come to terms with this straightforward isssue.

    Do you really think you that eligible, valid, and enforceable patents can be obtained merely by adding a step of “thinking a new thought” to an OLD process step? Really? If so, please explain how such a claim is not, effectively, a claim to a “new thought”, at least from the perspective of practitioners of the prior art step recited in the claim. Explain to me how that can possibly be the case, EG. Saying “it just isn’t” or “it can’t be” is not an answer.

    Claims to novel, non-obvious but purely mental processes are barred for a reason. Do you believe that adding an old but patent-eligible step (e.g., “drinking a cup of coffee”) prior to a novel, non-obvious step of thinking a new thought can result in a granted, enforceable claim? That is exactly what you are suggesting, EG. Do you really believe that?

    The best part about this conversaion, EG, is that I’m a forgiving person. I won’t hold it against you if you come clean. If you don’t come clean, however, I won’t let you forget it when your pathetic claims are trampled under the iron heel of reason.

  7. And as others have suggested, please stick to the subject on this thread.

    Don’t you realize who you are talking to EG? This is Malcolm, and Patently-O is his playground and he can hijack any thread he wants to.

    At least in his own mind, and isn’t that all that matters?

    /off sarcasm

  8. It was a non-answer, EG.

    EG,

    I think that’s heady praise coming from the master of the non-answer.

  9. in the form… effectively…

    Already answered – dissection is not allowed.

    You may not boil down (that is, parse) a clim to only the mental step as call it “effectively” a purely mental step claim. Thus your question is a bogus question that deserves no further discussion.

    That is the law.

  10. RM that refers to being allowed to claim priority from a document that could have issued as a patent. The argument goes that a document with no claims could not issue as a patent.

    I haven’t heard that argument before. Has that actually worked in a court anywhere?

    without a claimed invention, how are you supposed supply the names of the inventors?

    That’s an oldie but a goodie. US system is weird that way.

  11. Red it is not always true that a treaty somewhere alwys makes things harder. Take our predicament in Europe, with 40 countries under the EPC but all members of the Paris Convention. For the provisions of substantive First to File patent law, Paris provisions are top, EPC provisions defer to Paris and, finally, national law defers to both. Thus, when Paris decrees that you have a 12 month right of priority, but only in respect of the first application in a Paris member, effective to protect the “same” invention, that’s exactly the extent of the priority right that you get. 12 months and not a day more.

    Is the USA a member of Paris? How stand the provisions of the AIA relative to Paris, on Convention priority? Any issues?

  12. LOL, let’s try it again:

    Do you agree that claims in the form [oldstep]+[newthought] are effectively claims to a new thought, at least as far as practitioners of the prior art are concerned? If not, why not? If so, what policy basis is there for granting such claims but not permitting claims to purely mental processes?

    That’s what I get for posting in the wee hours.;)

  13. EG

    If you can’t accept my answer

    It was a non-answer, EG. You recited a script of patent txxbxxggxr talking points that did everything BUT answer the question.

    It’s very interesting. Your friend Kevin whom you correspond with regularly (always agreeing with whatever pro-patent position he’s taking), your friend Gene (enough said) and you simply won’t answer these incredibly straightforward questions.

    Here it is again:

    Do you agree that claims in the form [oldstep]+[newthought] are not effectively claims to a new thought, at least as far as practitioners of the prior art are concerned? If not, why not? If so, what policy basis is there for granting such claims but not permitting claims to purely mental processes?

    Why won’t Kevin, Gene or EG answer these very straightforward questions? It’s an issue that was raised front and center during the oral arguments in Prometheus. The government said you couldn’t get a patent merely by adding a new thought to an old process. None of the Justice contested the statement. Neither party contested the statement.

    And yet the leading shills for more patents refuse to even discuss the issue.

    Go figure.

  14. As I’ve told you before, MM, I’ve said my piece in response to your question and it’s over and done with as far as I’m concerned. If you can’t accept my answer, go pound some salt. And as others have suggested, please stick to the subject on this thread.

  15. Nice non-sequitor reply. I guess when you cannot talk intelligently about the law you dredge up all matter of other “interesting things”.

  16. So you’re telling me that an application disclosing one embodiment of a telephone that uses two empty bean cans with a string connection between holes in their bottoms and a claim to a telephone comprising two empty containers with a string connecting between holes in their bottoms lacks written description support and is not enabled?

    This blog really does have some of the dxmbxst trolls.

  17. If the provisional application was filed with a detailed description of a telephone that uses two empty bean cans with a string connecting between holes in their bottoms and a claim to a telephone comprising two empty containers with a string connecting between holes in their bottoms, the claim is supported and enabled.

    This blog really does have some of the dxmbxst trolls.

  18. you’re looking at the filing date of the claims, not the application.

    The filing date of the claims go to the earliest supporting date.

    Since adding claims in and of themselves cannot add new matter (that’s a separate rejection), you are just barking up the wrong tree.

  19. in the form… are effectively…” = Dissection,

    no matter how you slice it, this is not allowed in a 101 analysis.

  20. “We’re talking about a claim that is axiomatically not supported by the description. That means the claim has to be self-enabling and self-supporting.”

    What?

    If the provisional application was filed with a detailed description of a telephone that uses two empty bean cans with a string connecting between holes in their bottoms and a claim to a telephone comprising two empty containers with a string connecting between holes in their bottoms, the claim is supported and enabled.

    Original claims are part of the specification and don’t have to be “self-enabling” or “self-supporting.”

    “…if that’s something you invented and want to protect, you really should be adding it into the description in the first place, where you can describe it much more fully.”

    If you invented it, you might want to claim it.

    Claims are not limited to the exact disclosed embodiments. Maybe in your classroom, I mean practice, but not in real life.

  21. Hey EG,

    Have you managed to wrap your giant brain around the fact that claims in the form [oldstep]+[newthought] are effectively claims to the new thought, at least as far as practitioners of the prior art are concerned?

    Are you able to admit that yet? Or are you worried about what Kevin and Gene might think?

  22. Claims as filed are part of the disclosure for provisionals and non-provisionals.

    Well, yes, obviously. But that’s not the point.

    We’re talking about a claim that is axiomatically not supported by the description. That means the claim has to be self-enabling and self-supporting. In which case, if that’s something you invented and want to protect, you really should be adding it into the description in the first place, where you can describe it much more fully.

    If you failed to include something in your description that you want to claim, and that is so straightforward that it can survive not being supported by the remainder of the spec, chances are you have bigger drafting problems than can be solved by adding claims to a provisional.

  23. 5. Disclosure at 6/1/2014 is prior art to the divisional because the “effective filing date of the claimed invention” is 1 year after the disclosure.

    Why not?

    Because it’s false. Keep wanking, though. You might convince a naive client that your argument is reasonable and manage to separate him/her from a bunch of his/her money. Congratulations.

  24. Actually it would be a difference, MM, if true. The point is that art might be prior art to a set of claims that exist after the effective filing date of the earliest filed application because under 102/103 prong you’re looking at the filing date of the claims, not the application.

    I don’t doubt that some defendant will make this argument based on the plain reading of the statute and the bifurcation of the definition.

    The scenario might look like this:
    1. File a provisional on 1/1/2014 without any claims but disclosing two inventions A and B
    2. There is some third party public disclosure on 6/1/2014 of invention B.
    3. The non-provisional is filed on 12/31/2014 with claims to invention A.
    4. A divisional is filed 7/1/2015 claiming priority to the np claiming invention B.
    5. Disclosure at 6/1/2014 is prior art to the divisional because the “effective filing date of the claimed invention” is 1 year after the disclosure.

    Why not?

  25. Dennis,

    Does this analysis miss a large section of applications by excluding US applications claiming priority to international applications? Our general practice is to file a provisional, file a PCT at 12 months, then do US national phase entry at 30 months. Would this scenario, which I assume is quite common, be reflected in your analysis? If not, the percentage of applications claiming priority to provisionals may be significantly higher.

  26. Provisional Patent Drafting is even more a “technical drafting trap for the unwary” than any contract and ownership drafting exercise (a la Stanford v Roche).

    Many people see quick, cheap and easy and forget that a good provisional should be done with as much care (and cost) as a non-provisional. Too often, clients have a different notion, and it is very difficult to disabuse them of that notion. Too often, my fellow attorneys fail to see this distinction and think that an “it’s in there somewhere” approach is good enough when filing what is basically a client’s marketing and engineering proposal (modified slightly to remove some offending “musts” and “shalls”).

    Quick. Cheap. Easy.
    And decidely much worse off than a true (but expensive) patent application (be it provisional of non).

  27. Excuse me, I meant to say in the first sentence: My intution that viewing priority based on the “claimed invention” (if that’s the interpretation to be given new 102/103 under the AIA) appears to be in conflict with the Paris Convention appears to be correct.

  28. My intution that viewing priority based on the “claimed invention” (if that’s the interpretation to be given new 102/103 under the AIA) appears to be in conflict with the Paris Convention. See Article 4(H):

    Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.

  29. Any thought that if new sections 102/103 of the AIA bases priority on the “claimed invention” date whether that would violate the Paris Convention, PCT, and TRIPS which base priority on the filing date?

  30. The same way you know how much to disclose in order to describe/enable the claims for your future amendments and continuations. By fully disclosing what was invented.

  31. FYI, I don’t see that. All I see is what looks like an exponential curve fit to data points. I don’t see data points at all.

    I’m using IE8, fully updated.

  32. Rare in my practice. I usually either have instructions to file in 90 days, or I’m pushing someone to decide at 10mos.

  33. . The argument goes that a document with no claims could not issue as a patent.

    True on its face, but…

    provisionals can always be converted
    claims can always be added (without adding new matter, of course)

    …so the “could have issued argument” is moot.

    As for not claiming snything broader, the no-claims provisional is perfect, as you can only claim narrower than the etire spec (remember to not add new matter and you are golden)

    As for inventors being named, again – name all that contributed to the spec (you can always delete inventors that do not end up with contributions to the eventual claims).

    Easy Peasy

  34. I believe the desirability of filing a claim in a provisional seems not from US law but from ambiguities in foreign law. I think there is a treaty somewhere, maybe EP as they always like to make things harder, that refers to being allowed to claim priority from a document that could have issued as a patent. The argument goes that a document with no claims could not issue as a patent. There are also foreign requirements about not claiming anything broader than what you originally appreciated as being your invention, which would be hard to do without a claim in the provisional.

    Plus, without a claimed invention, how are you supposed supply the names of the inventors?

  35. Hey guys… FIle often and File Early… I LOVE provisional patent applications as they are AWESOME “insurance” against office actions if properly drafted and used as a strategy to protect your non-provisional filing.. OF COURST it is increasing.. It is CHEAP INSURANCE…

    If YOU need to know how to file a provisional patent application yourself and get some GREAT pointers then take a look here:
    link to provisionalpatentvideo.com

    Enjoy!

    Dave

  36. Of course, we can always continue to ignore what MM says.

    And to boot, we would be corect 99.9999999999999999995% of the time!

  37. I don’t think you are quote understanding Chisum.

    Perhaps you can explain why you feel Chisum is arguing as you think he does.

  38. doesn’t the term sock puppet require there be some other poster supporting the same proposition? I’m just pointing out that current practice does not comport with the language of 102/103 because of the change in language.

  39. I think people need to go back to reading what the act says.

    Or we can just ignore the sockpuppet and its pathetic cry for attention.

  40. If you spend the 15 minutes to write the broader claim at provisional time, you avoid that mess.

    If the provisional spec doesn’t support the claim, what good does it do you to also have the unsupported claim in the provisional?

  41. I know what current practice is. However, under the AIA, I don’t think that that can be true any longer. Take a look at my comment above.

    102/103 now use the “effective date of the claimed invention” as the triggering date for prior art purposes as compared to merely the “effective date” for which a definition is supplied allowing it to be either the patent application date or the earliest claim to priority.

  42. Part of the problem with support is the breadth question. Let’s say inventor comes in with a pretty good disclosure of his new telephone that uses two empty bean cans with a string connecting between holes in their bottoms, and you go ahead and file it as the provisional.

    Later, you file the non-provisional application claiming a telephone comprising two empty containers with a string connecting between holes in their bottoms. Do you get the benefit of the filing date of the provisional for that claim? How about for a claim where it is an empty peach can?

    Arguably yes, for both, but some examiners will be, shall we say “skeptical.” If you spend the 15 minutes to write the broader claim at provisional time, you avoid that mess.

  43. I think people need to go back to reading what the act says.

    link to govtrack.us

    The definition under the AIA of “effective filing date” (notice that it takes “of the claimed invention” out of the quotes) can be either the earliest claim to priority or the filing date of the application.

    But, new sections 102(a)(1) and 103 use the term “effective filing date of the claimed invention.” That is applying only the first prong of the definition of “effective filing date,” not the one that reaches back.

    Without claims you get no benefit under 102/103.

  44. I get waiting until the last few weeks to file, but it seems like there’s no plan if you’re filing 4-10mo after the provisional.

    Sometimes the client decides to convert the provisional to a utility application before the year is up, for whatever reason. CEO decides he/she wants a granted US patent sooner rather than later. Maybe the check arrived that day.

  45. bad joke ahead, “If you don’t have 112 support in the provisional, then you don’t get the benefit.

    I don’t see were the act says you have to have claims in your provisional, only that you have to have support for the invention as claimed.”

    But Chisum is arguing to do away with the requirement of actual claim support (meaning, regardless of the claim for benefit, there is no support in fact) in the case of prior art where the subject matter of the rejection has been carried forward.

  46. Indeed. That said, I always try to include claims in the provisional. Standard practice, unless the client has waited until the last possible second to give me the disclosure.

  47. The “claimed invention” spoken of in the AIA is that which is in the second application – The “effective filing date” still reaches back tothe earliest point at which the later claims can find full support.

    This part of the AIA did not change existing legal understanding on this matter.

  48. I don’t see were the act says you have to have claims in your provisional, only that you have to have support for the invention as claimed.

    This is correct, bja.

  49. If you don’t have 112 support in the provisional, then you don’t get the benefit.

    I don’t see were the act says you have to have claims in your provisional, only that you have to have support for the invention as claimed.

  50. Interesting that there’s not bump at about 1-3mo. I know of several guys who file provisionals with invention disclosures immediately upon receipt and then docket 2mo or 3mo for filing non-provisional.

    The steady increase from 3mo through 11mo is weird to me. If you’re not just filing upon receipt of invention disclosure and then filing when you get the non-provisional done, then why the 7-9 mo filings? I get waiting until the last few weeks to file, but it seems like there’s no plan if you’re filing 4-10mo after the provisional.

  51. I want someone to analyze the effect of the AIA on the provisional practice of filing with no claims since the AIA ties the “effective filing date” to that of the “claimed invention.” Without any claims, you don’t get the date of the earlier application.

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