Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned

By Dennis Crouch

Provisional patent application (PPA) filings continue to rise with over 160,000 filed in FY2012. Despite the relatively large number of filings, more than half of these applications are abandoned without ever reaching the non-provisional application stage. And, it appears that this rate-of-abandonment is growing. At the same time (and because of the growing absolute number of provisional filings), a larger percentage of non-provisional applications claim priority to a provisional filing than ever before.

ProvisionalChart
The chart above shows the number of provisional patent applications filed each fiscal year for 1995-2012. 1995 is a partial year because provisional patent applications were created as an option as part of the 1995 GATT Uruguay Round implementation and only became available mid-year. Since then, over 1.7 million provisional applications have been filed. A provisional application is essentially a one-year place-holder offering no rights other than the filing-date priority claim. During that year, the USPTO ignores the application until the applicant takes some additional step – typically filing a non-provisional application or an international PCT application. At the end of the year, the provisional application is automatically abandoned. [But see, two year provisional].

By design, the vast majority of provisional patent applications are filed on US-originated inventions.

For most, provisional applications are seen as a low-cost mechanism for claiming a priority date and for delaying the eventual higher cost of drafting and filing a non-provisional application. Others (especially those in the pharmaceutical industry) use provisional applications as a way to shift the patent term back by one year.

The cost-savings is quite apparent once you consider the reality that most provisional applications are abandoned and never result in a non-provisional application. One problem with the cost-savings approach is that provisional applications only serve their purpose if they include a sufficient disclosure. In a small study of provisional applications, I found around 35% do not include even a single claim, and about 15% are essentially a stack of presentation materials.

The large number of abandoned provisional applications leads to several important results. First, the two-step filing process likely helps applicants do a better job of weeding out lower-quality inventions by the time examination begins. On the flip side, more weeding is probably necessary because the low cost and formality of provisional applications likely induce the filing of more weeds. Second, because the USPTO never makes-public the non-relied-upon applications, hundreds of thousands of patent applications are kept secret and their disclosures never made public. Although the information may still be useful for the applicant as a trade secret, the abandonment most likely means that the idea has been shelved and likely lost.

118 thoughts on “Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned

  1. I see now that about the time early this morning when we were having our dialogue above, you wrote your Thank You letter to Paul that appears lower down in the thread. Good to see that you did think it appropriate to thank him. But as for the rest, I see no reason to apologise or take anything back. My question remains unanswered. Leo (below, at 10:21) enunciates it with a clarity that I envy.

  2. Thanks, an interesting read, but inapposite to the context of establishing PUR.

    Of course it is, but constructive reduction to practice is also “inapposite” to the context of establishing PUR. You can bluff your clients with this kind of BS, anon, but you can’t get away with it here. Or maybe you can, if you bury it with a dozen or so comments about “arrows” and MM.

  3. Okay, you’ve done your “You dare to question me?” routine. Now, why don’t you answer the man’s question – What is it about the AIA that compels a reversal of the CAFC’s very clear and unequivocal statement in In re Costello? Here, I’ll reproduce that statement for you:

    It has long been settled, and we continue to approve the rule, that an abandoned application, with which no subsequent application was copending, cannot be considered a constructive reduction to practice. It is inoperative for any purpose, save as evidence of conception.

    Your original statement, as correctly pointed out to you by Mr. Morgan, was utter BS, and you know it. But you’ll never admit it.

  4. And leave the MM accuse others of what you do aside as well – “blithe” describes your posts, evidently made without reading the case or understanding both the pre and post AIA US patent law.

  5. You’re the one always demanding that the relevant authority be quoted. I see why now. Without it you don’t know your way around the MPEP. I think you should now at least say thank you to that nice man Paul Morgan, don’t you?

    Again far too eager to criticize and too slow to actually read what I have posted.

    Try reading the actual case and then jump in with your “instant” congratulations.

    Note that I DID thank Paul for the interesting reading. Then note that the CURRENT MPEP does not address the point at hand (and then kindly retract your wayward accusation). It is not I that does not know my way around the MPEP, but rather – as displayed – I quite know the limitations of the MPEP quite well, thank you.

  6. Be that as it may, anon, you made no mention of the MPEP or of Costello when blithely announcing to us all (as acte claire) Nov 27 at 10:41 your opposite “does not and cannot” commandment.

    You’re the one always demanding that the relevant authority be quoted. I see why now. Without it you don’t know your way around the MPEP. I think you should now at least say thank you to that nice man Paul Morgan, don’t you?

    The AIA amends 102. We know that The amendments to 102 are of a nature that forces a reversal of the Costello case? Why should they do that then? You know, even if you assured me, with all the personal authority you could muster, that that was the case, somehow that wouldn’t be enough for me to put any reliance whatsoever on your blithe assurance.

  7. Lol – slow kid IANAE?, rather not, especially in comparison to your face-spiked history.

    Try to be gracious and accept the bone I threw to you rather than attempting (again) to be a smart-@$$.

  8. In other words, the 1983 CAFC decision does not address the AIA changes – at all.

    Be careful of sound byte quotes. It’s a whole new world with the AIA !

  9. LOL MaxDrei – you might want to be careful of “instant demolitions” and read the actual case in the context of the law of the land when that case was decided.

    Quite the contrary from demolishing my case, the fact that the AIA was adamant in radically altering the law of 102 moreso supports my view here.

  10. Paul,

    Thanks, an interesting read, but inapposite to the context of establishing PUR. The case was for establishing a patent right and deals with a failure to swear behind and an attempt to patent based on the earlier abandoned application. This too was a case based on old law wherein PUR simply did not exist (note the equitable charge of NOT benefiting from an abandoned application, as well as dealing with 102(e), which no longer exists in the post AIA world of PUR).

    As noted in other discussions, sound byte quotes from the era of pre-AIA must be carefully scrutinized for applicability.

  11. Thanks Paul for that instant demolition of anon’s “does not and cannot change the reduction to practice status” taken straight out of the MPEP. I suppose anon will now tell us that in 1983 the Federal Circuit got it wrong.

  12. MPEP: “While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice. .. In re Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 392 (Fed. Cir. 1983″

  13. I hesitate to comment on domestic US law but IANAE is it really “exactly the same”? Something tells me that if the Paris year expires on a Sunday it is timely to claim priority the following day; but NOT so with pro to regular. If I’m right, why did the legislator do that? It can’t be for convenience. For amusement perhaps.

  14. Wow, this time the glib answer has some gist to it.

    Thanks for explaining the joke to the slow kid, Dennis.

    Now would that answer be any different had the 24 month provisional project matured?

    Difficult to say, because it would have required a statutory amendment which would have necessitated a slew of related and supporting amendments including the publication thing, but I highly doubt they would have let provisionals sit around unpublished for longer than 18 months.

    But I suppose the real answer is that it’s a little too convenient that the lifespan of a provisional is exactly the same as the convention priority window, and nobody ever seriously considered that it would be a good idea to give provisional filers any longer than that before committing to a regular, whether or not said regular would have been examined before two years.

  15. Wow, this time the glib answer has some gist to it.
    Now would that answer be any different had the 24 month provisional project matured?

  16. Curious as to why the default publication protocol (noting that an applicant must affirmatively choose not to publish a no provisional application) is different for provisionals.

    I thought the PTO routinely published all provisionals still pending at 18 months. I guess this is yet another one of those AIA changes?

  17. Curious as to why the default publication protocol (noting that an applicant must affirmatively choose not to publish a no provisional application) is different for provisionals.

    Is there anything in the Congrssional record indicating why a difference would/should exist? (Not a rhetorical question)

  18. Yes. I think these would all be useful (and I'd love to talk with you about several ideas). In my view provisionals are particularly different for a number of reasons — including b/c they are not examined, given a search report, or made public. Rather, the abandonment is wholly a private decision by the applicant typically with no input from anyone else. 

  19. I see. But, in that case it would be appropriate to compare the abandonment rate of provisionals to the abandonment rate of PCTs or regular US apps. I.e., what is the “yield” from each source? If the yield rate is decreasing for all types of parent apps, then it would appear to be a broader trend. I don’t have those data handy though.

  20. “Second, because the USPTO never makes-public the non-relied-upon applications, hundreds of thousands of patent applications are kept secret and their disclosures never made public.”

    Of which, “…about 15% are essentially a stack of presentation materials.” i.e., published as presentations.

    How many are published as journal articles?
    How many are refiled?

    -Rao

  21. Correction, I meant AIA’s first to file system. Late in the day, and office actions and prior art to review is taking its toll.

  22. Several practical points:
    1. AIA will increase number of provisional, may reduce time from filing a provisional to filing a nonprovisional or PCT.
    2. Multiple provisional have and should continue to be filed as development takes place, and a single nonprovisional or PCT can claim priority to multiple provisionals.
    3. Entity engineering and product development managers often have authority to prepare and file a provisional application during product development and R&D, but not the level for filing of a nonprovisional or PCT. Most often, no patentability search or opinion is done at this stage. Entities have patent review committees with budgets for regular reviews for decisions on investing in patent protection and often will perform a search and obtain an opinion as a part of this process in order to make a reasoned business decision.
    4. Entities have budgets and not all developments can be protected by patents, and no entity can afford to invest in protecting all development efforts, unless you are just trying to build a co-licensing of defensive patent portfolio and have tons of cash. Most often, an entity can only afford to protect a subset of its development efforts. Contrary to the suggestions above, product development and R&D will continue even without patent protection.
    5. Just because a provisional application is abandoned, does not mean that the entity has stopped development work or will not use the technology.
    6. Investing in patent protection is expensive and prudent business management will require a higher level of early protection under the AIA first to invent system and a greater degree of scrutiny as to which early protected inventions should proceed for full patent protection. Therefore there will likely be an increase in the number of provisionals that do not result in a nonprovisional application claiming priority thereto.

  23. I wonder if the analysis takes into account multiple related provisional applications filed within the same year and used for a priority claim in a single non-provisional or PCT application. This could create a distorted perception of provisionals that were not actually abandoned and also were not really representing multiple inventions/disclosures.

    The other practice is re-filing the same provisional if, at the end of the first year, there has been no interest and no public disclosure, so the client re-starts the provisional year. This could also create a false impression of additional provisionals filed then abandoned.

    As for universities who file a provisional and allow it to lapse, the disclosure is typically published by the professor, so, in these cases, it does not remain a trade secret.

  24. I had heard of the Enveloppe but supposed it to be spelt “Solo”.

    There is a paper product called “Solo”, but in that one you put coffee, not ideas. ;-)

    The Soleau envelope could be useful for an employee inventor to make sure that his name is not forgotten when his employer files an application. I have a small collection of books of a literary genre dedicated to the question of Who Really Invented X?. Most of them concern US patent law, and in a certain one the question of FTI crops up in the form of the authentication of laboratory notebooks. The issue was whether the date inscribed by a notary public was authentic.

    When I was in industry I was provided with a notebook with numbered pages, but was never clearly indoctrinated why this was supposed to be important. I did have quite a few clever ideas, but getting a patent wasn’t really on the program. I also heard the suggestion that if you wanted to establish the date of your invention under US law you could send yourself some registered mail that you would leave sealed. I don’t know whether this is worth anything.

    If you’re gonna do something about your innovation, but won’t file an application for one reason or another, just PUBLISH it. It needn’t really be conspicuous, just public.

  25. I brought it up because it is a legal requirement.

    Gee, a mere comment or two ago it was a “diversion.”

    Can you point me to this “legal requirement,” please? If you can’t/won’t then we’ll just have to assume that you’re bluffing.

  26. you’re the one who brought it up, twice

    I brought it up because it is a legal requirement.

    The fact that you try to label this as “bluffing” is pathetic.

    Your essay better be d@mm good….

  27. The EQE D1 paper will often include a question on whether a certain application meets the conditions for admissibility. The 2008 edition comprised this question:

    A Japanese scientist having his residence in Tokyo has written an article for a Japanese scientific journal. The article describes an invention which he would like to protect. The article is in Japanese. As the journal with the article will be published tomorrow, he faxes the article to the EPO today, 4 March 2008, together with a cover sheet indicating in
    English that a European patent is sought. He only gives his name and e-mail address.

    a) Will the faxed article be considered a European patent application and be accorded a date of filing?

    b) What formal requirements have to be fulfilled for the EPO to start with the search and within what time limits must these requirements be met?

    This was a really a test of the knowledge of the newly introduced EPC 2000 dispositions. The answer to (a) is of course YES, see the examiner’s report on page 3. You can see how minimal the current requirements are!

  28. As I type this though, I do now remember ages ago somebody in mainland Europe muttering about whether a US pro could be a priority document.

    I used to be rather bothered by this question. There was a note by the EPO president in the OJ stating that US provisionals would be accepted in Europe. I thought that this was a proclamation by fiat, until I realised that a provisional could be “converted” into a regular application after one year, and therefore potentially conferred the same exclusive rights from the filing day as a regular utility application (even though there is no practical interest in this). I remember blurting about this here or at ipkat, but old blog comments are not easily searchable.

    Is the equivalency with a “regular” application even necessary? Art. 87(1) EPC 1973 used to provide for the recognition of inventor’s certificates as valid priority rights. These were an innovation rewarding system common in socialist countries which did not really confer any exclusion rights. In the former GDR you could file either for a “Wirtschaftspatent” or an “Ausschließungspatent”. I believe that both types were theoretically available to nationals, but one one was really meant for foreign applicants. For the certificates, a committee would convene and decide on the value of the reward. An certificate is therefore arguably not quite the same thing as a “regular” patent application in the EP, GB or US sense. Interestingly the notion of inventor rewarding schemes is not exclusive to our time, or to the political system.

    The recognition of foreign inventor certificates was abolished in EPC 2000. I’d have to dig to find out what their status was under the Paris Convention. Was a bit of Realpolitik involved?

    When was the US pro born? I forget.

    1995. I was there!

    But it was a long time ago, right.

    The US provisional is in my eyes a revival of an old idea, the “patent caveat“, which existed from 1836 to 1909. You will find them mentioned a lot in the controversies surrounding the invention of the telephone. I would have to dig in a good research library to find out more about them, but there is a eery sense of familiarity to them. Incredible how debates on patent law tend to repeat themselves.

    I would also have to find out the relationship between the Uruguay Round mentioned by Dennis and the PLT, which was pushed by the US.

  29. I see. Thanks Leo. Of course in Germany you can file a utility patent application under the Gebrauchsmuster Act (10 year utility patents) or the Patents Act (20 year utility patent) or as an EPO patent application. Germans like things to be regular. The more regularity the merrier they are. The more patent statutes the better.

    I am sure nobody in Europe would dare to suggest that any filing at the USPTO that is in pursuance of a utility patent and that is sufficient to establish a date nevertheless fails the EPC “regular” test.

    Could it be that a US court will find a US pro not in accordance with the EPC definition? Why should it do that? What cause could it have, to do that?

  30. The "flash in the pan" reference is to the fact that so many provisionals are filed and then quickly abandoned without further development.  So, for my inquiry, the relavent question is the percentage of provisionals that are abandoned.  A second important inquiry, not addressed here, is time series of the percentage of non-provisional applications that claim priority to a provisional application.  That figure has been steadily growing. (For this second inquiry, I tend to filter-out foreign-originated applications.  

  31. No problem, Max.

    I suppose it means something like “As provided for, under the relevant governing “regulations” ie Statute”. That would cover the US pro, right?

    Well, that’s the rub, as they say. EPC Article 87 says that “a regular national filing shall mean any filing that is sufficient to establish the date on which the application was filed, whatever the outcome of the application may be.” Leaving aside the slight circularity of that definition, a U.S. nonprovisional application must have at least one claim to receive a filing date. But 35 USC 111 exempts provisionals from the “one claim” requirement. So, do the U.S. statutes define two “regular” applications, having different requirements for establishing a filing date, or just one? For the purposes of the Paris Convention, I think “regular” likely means the former, but the nature of this job is to worrry about things like this.

    I have no idea how long the U.S. provisional application has been around. Quite a while, I should think.

  32. “Flash in the Pan”?

    I think you may be considering the wrong denominator in the ratio, Dennis. Over the last 15 years US apps with provisional parents have grown from about 5% of all utility apps to about 15% of all utility apps. The proportion has been stable for the last 12 years at least, and is comparable to the proportion of apps that claim CON/CIP/DIV parents or are parentless (both about 20%).

  33. Great stuff Fly. I had heard of the Enveloppe but supposed it to be spelt “Solo”. A right of continued (I emphasise the “continued” word) use, established by depositing (in an envelope) a written description of subject matter which the depositor has already started to exploit and wishes to continue exploiting in the same way. A PUR in fact.

    Perhaps this is the germ of the PUR idea (personal, confined to one jurisdiction) which we find in the present day harmonised patent law of Europe.

  34. Here’s Soleau’s original 1912 patent for an dual-pocket envelope suitable for time-stamping.

    He didn’t use his own envelope to protect his invention…

  35. The use advocated by “anon” of a US provisional to substantiate anything beyond priority reminds me of the French enveloppe Soleau. For $20 you can get the French patent office to keep for 5 years (extendable to 10) a proof that you were in possession of some information on a certain date.

    The practice and usefulness of this old system is extremely restricted. It is not an IP right, and it does not confer any kind of license to sell some creation. It finds application beyond the patent system.

    From the Wikipédia entry:

    In case of an invention, the envelope only constitutes proof that the depository knew the invention before any patent application at the INPI or at the European Patent Office for the French territory, and allows him to continue exploiting the invention. Personal exploitation is practically very restrictive and can’t be licensed in either manner to third parties. It is only valid for French jurisdiction and intends to assert a date of creation, not to protect an invention, idea or work.

    I just thumbed through a treatise on French IP law (Azéma, Galloux: Droit de la P.I., 6ème édition, Dalloz, 2006), and (somewhat surprisingly) couldn’t find any reference to the Soleau envelope! (I think I would have spotted it if it existed).

  36. Oh sorry to anybody now feeling patronised. There was no intention to be patronising. It had simply not occurred to me that a US pro might be regarded as anything other than a “regular” national filing. After all, “provisional” specifications, without any claims, have since the 19th century been the classic way to make a priority-date-defining first patent filing at the UK national Patent Office. See Section 3 of the UK 1949 Patents Act. Thus, the idea that “regular” in the EPC might exclude a provisional application never occurred to me.

    I don’t know of any definition of “regular”, whether in the EPC or in the 1949 Act. I suppose it means something like “As provided for, under the relevant governing “regulations” ie Statute”. That would cover the US pro, right? And see the bit in Art 87 about it being irrelevant whether the priority-date-defining filing lapses the next day.

    As I type this though, I do now remember ages ago somebody in mainland Europe muttering about whether a US pro could be a priority document. Nothing ever came of it though. When was the US pro born? I forget. But it was a long time ago, right.

    Another reason for the Link was the Paris Convention language in it, about the need to bump off your first filing BEFORE filing your successor pro. I thought that was being helpful for readers

  37. I see. So the “(fluid) legal status” of constructive reduction to practice becomes a factual, non-legal status, or is at least treated as a factual matter (as a matter of law?) once it has been achieved. That’s quite clear.

  38. You now divert to the “qualifying public use” – try focusing on one thing at a time, OK? (The qualifying public use is plainly in the PUR law – that’s easy enough for you to investigate – after you finish what you have already due).

    LOL! I’m not diverting to anything – you’re the one who brought it up, twice. And yes, I’m aware that “qualifying public use is plainly in the PUR law.” But you haven’t explained to us why it is that you need to make a “qualifying public use” as part of a plan to obtain PUR.

    More bluffing on your part, huh?

  39. Not at all – are you?

    (Your reading of “constructive” in its legal sense is different than after the fact that such a thing has been achieved – it’s like I said – the status once achieved is treated as a factual matter (even as you pedantically over analyze the legal meaning of the term). The point being that the phrase – and not just the modifier – is what is in play. Once the reduction has happened, that reduction does not go away if the patent application lapses, goes abandoned, is converted to a non-provisional, is claimed priority from a non-provisional or any other such event. The factual basis (of yes the legal term) has happened and cannot be erased.

    Your arrows miss (yet again).

  40. I am not whining – I am asking you to actually read all of my comments am use a little common sense.

    What is amusing is the level of effort being directed at trying to find fault with my posts – and failing miserably. You now divert to the “qualifying public use” – try focusing on one thing at a time, OK? (The qualifying public use is plainly in the PUR law – that’s easy enough for you to investigate – after you finish what you have already due).

    Since you have so much time for this topic, I am expecting your essay answer to be breathtakingly stellar.

    BTW, your essay answer would have nothing to do with what you think my “qualifications for teaching this class” are.

  41. Now you’re being patronizing, Max. I’m sure bja is familiar with EPC Article 87. The question is whether a provisional application filed under 35 USC 111 how sections (2) and (3) apply to a provisional application filed under 35 USC 111(b)? Is a U.S. provisional (that lacks a claim) one type of “regular national application” or is it something different? I think the answer is the former, but I don’t think it’s a silly question, as the U.S. statutes don’t make it particularly clear.

  42. Once obtained, it is what it is (along the lines of a factual status as opposed to a (fluid) legal status).

    That’s interesting. My legal dictionary gives a definition for “constructive” that is almost the precise opposite of yours.

    Having a tough day, anon?

  43. Your whining about criticism of your comments is pretty amusing, anon.

    Come on, Mr. Substance, you can do better than that. Here’s your comment, verbatim:

    I have already stated that the provisional is but one part of the plan for PUR. I have already stated that you still need to make a “qualifying public use.”

    Please explain to us why it is that you need to make a “qualifying public use” as part of a plan to obtain PUR. Or are you just stringing random statements together as a bluff?

    I was almost done with the answer to your essay question, but I’m having second thoughts – I don’t think you’re qualified to teach this class.

  44. Effective filing date – agreed. Constructive reduction to practice? – disagree. The end status does not and cannot change the reduction to practice status. Once obtained, it is what it is (along the lines of a factual status as opposed to a (fluid) legal status).

  45. #1. What’s the case that states that? We both know there’s not one. I like to make sure that I’m not the one that finds out the answer to this type of question. My malpractice carrier appreciates that.

    #2. Not possible unless you do a formal claims set. This is why I do AT LEAST a messy claims set.

  46. BTW, no PCU defense has ever been successfully raised in any reported case under the prior very similar but narrower U.S. PCU statute which covered all of the many “business method” patents.

    Apples and oranges Paul – this merry-go-round has been ridden before.

  47. Your post directly compared to me – it is you that thus needs to write more clearly (or better yet, leave out the mis-shot smart-@$$ arrows that – as usual – miss the mark).

  48. I’m no expert, but as far as I can tell, not one of these statements is correct.

    You are right in so far as you are no expert. Everything else you have posted about me is wrong – including your attempted dig at terms of use (still a bit sullen over that beat down I gave you, eh?)

    Try to read my comments as I have actually written them – these are pieces to the strategy. If you spent HALF the time you spend trying to find fault with my posts you would have been well done with the essay answer.

  49. Noticed what IANAE? That you continually get face spiked attempting to play Walleyballl? That you continually employ a drive-by insult parade in the best attempt at emulating MM (with the same sorry results), or that you continually not add to any substantive conversation?

    All of these are plainly noticeable.

  50. Universities are another likely source of abandoned provisionals. The provisionals containing a presentation deck or grant application as the disclosure likely come from universities. University technology transfer offices frequently file provisionals to placate faculty who insist on patenting their discoveries regardless of their commercial merit. Unfortunately, this low cost provisional filing strategy leads to subsequent problems if/when a utility application is filed.

  51. Any thoughts Leo? Yes, plenty. Drafting for the USA and drafting for the ROW are poles apart. Perhaps with the AIA we shall start to see some convergence. As to:

    #1. No, it’s not questionable

    #2. Yes indeed, you might have a “verbatim support issue” at the EPO. But the way to avoid that is to provide in the specification of your prio filing the verbatim text you are going to need for your future claims. Mr Palmer surely knows this already.

  52. You are certainly not the first person to raise issue #1, but I wonder how questionable this really is. Has the EPO ever found that priority was lacking because a provisional didn’t meet the formal requirements for a patent application? If this is a real problem, it’s easily addressed by putting in any claim, no matter how broad or narrow it is.

    Max, any thoughts?

    Regarding #2, that’s my chief concern. I don’t always include formal claims, but I almost always include something that looks awfully similar. The inventor’s words are not usually enough to give you the near-verbatim support you’re ultimately going to need.

  53. BTW, a provisional or other application that has been truely abandoned [no RCE, continuation, divisional or parallel application] is no longer a constructive reduction to practice of that invention as well as no longer an effective filing date.

  54. 2 problems:

    1. It’s questionable as to whether this qualifies as “an application” under PCT and EPO rules.

    2. You have an inherent verbatim support issue with your EPO patents.

    I’m not saying that you’re wrong, because I also like a good disclosure. I’m just pointing out some potential pitfalls. I’d try to include at least one claim (or something that purports to be a claim) if I were you, no matter how many antecedent basis and clarity issues it has.

    I typically go to the other end of the spectrum for the above reasons. I write a full claims set and just edit and add a bit to what I got from the inventor for the specification.

  55. You are not reading my posts clearly enough. I have already stated that the provisional is but one part of the plan for PUR. I have already stated that you still need to make a “qualifying public use.”

    You’re not writing your posts clearly enough. You actually said that a provisional application can be used to “generate” PUR. Then you said that constructive reduction to practice (as provided by a provisional application) provides clear and convincing evidence of PUR. Now you’re saying that one seeking PUR must make a “qualifying public use.” I’m no expert, but as far as I can tell, not one of these statements is correct.

    I thought that the Terms and Conditions of this website prohibited misrepresentations of the law?

  56. Prior enablement and possession are relevant evidence for an interference, and even under the AIA for a [rare] DERIVATION case for partial evidence. Also for a state court claim for stolen trade secrets.
    But they are NOT relevant to a 35 USC 273 “Defense to infringment based on prior commercial use.” Only proof of prior commercial use is relevant.*

    BTW, no PCU defense has ever been successfully raised in any reported case under the prior very similar but narrower U.S. PCU statute which covered all of the many “business method” patents.

    *[Proven prior commercial use inherently proves both prior conception and prior actual reduction to practice before the AIA invention date of the patent owner, but that is irrelvant for the PCU defense, which does not create prior art and is purely personal.]

  57. anon, if you would but see, he made his point very powerfully and pithily, and in the best way possible, with humour. I laughed out loud. Very therapeutic. Thanks IANAE, laughs are most welcome.

  58. You were conflating because I was distinctly talking about the US PUR and you lumped my discussion into that “euro requirement.”

    Actually, I was asking Max, a European practitioner, a question about the European rule. I’m sorry that I confused you.

  59. Again, IANAE, if you think you have made a point, you have failed.

    Again, anon, if you think you’re qualified to make that assessment, you’re wrong. And I’m not the only one who has noticed.

  60. …PUR must be established by clear and convincing evidence. A constructive reduction to practice provides that …

    Citation for the second part, please?

  61. You were conflating because I was distinctly talking about the US PUR and you lumped my discussion into that “euro requirement.”

    Too much dancing from you – you would be better off finishing your essay answer.

  62. somebody round here is under the misapprehension that filing a patent application on an invention is what you have to do when you are serious about launching a new product.

    Surely everybody reading this blog is well aware that filing a patent application is what you do when you are serious about preventing the commercialization of a new product.

    Everybody except for the oppressed majority that is anon, apparently.

  63. Whether the mere act of filing a patent application could conceivably make any evidential contribution whatsoever to the question whether there has yet been any commercial use of an invention is where our opinions differ.

    You are not reading my posts clearly enough. I have already stated that the provisional is but one part of the plan for PUR. I have already stated that you still need to make a “qualifying public use.”

    You are in way too much of a hurry to attack my posts. I suggest that you take a deep breath and actually read and understand before replying.

    In the AIA I fail to see any such protection offered to those who invest in innovation. As far as I can see, Leo gets the point but anon not.

    I am talking about the US PUR – as such, I get the point and Leo does not. As I mentioned to Leo, don’t conflate. Keep clear in your mind the topic that I am talking about. I have expressly made clear to you that US PUR is different, that US First to File is different. You ignore these portions of my post for reasons unknown, but the result is that you simply look foolish and too eager to attack. Those attacks are poorly planned, poorly executed, and rather meaningless.

  64. Reading my own stuff, I’m struck by the appalling thought that somebody round here is under the misapprehension that filing a patent application on an invention is what you have to do when you are serious about launching a new product. Lay people often suppose that the way to get clearance for it is to patent it. But not readers here, surely!

    But that leads me to think, Leo, that spending a large lump of money on a clearance opinion would count, I suspect, as evidence tending to suggest that, indeed, serious and effective preparations to use commercially are being made. Not enough by itself, but a help, I would think.

  65. A constructive reduction to practice is clear and convincing evidence of something. We agree on that anon.

    Whether the mere act of filing a patent application could conceivably make any evidential contribution whatsoever to the question whether there has yet been any commercial use of an invention is where our opinions differ.

    The euro “preparations” is to cover situations where there has been serious and effective preparatory investment but, as yet, no commercial use as such. In the AIA I fail to see any such protection offered to those who invest in innovation. As far as I can see, Leo gets the point but anon not.

    Leo, thanks and, in answer to your question on this very point, I doubt it. I’ve never heard anybody yet assert that the mere act of paying for the filing of a pat appln could conceivably have any probative value whatsoever for the proposition that serious and effective preparations have been made to start real commercial use of an invention.

    Take a random thousand pat applns on file at the PTO. In how many of them was Applicant already at the time of filing effectively and seriously preparing to launch on the market something within the scope of the claims? I know what I think.

  66. You are a bit off MaxDrei – in the US version, PUR must be established by clear and convincing evidence. A constructive reduction to practice provides that – and that is what is effected by a provisional filing. Sure, there needs more – but in your over eagerness to attack my thought, you neglected to read closely enough.

    Leopold, no wonder your arrows so often miss the mark. You seeing dancing where there is none. Also don’t conflate a euro requirement of “effective and serious preparations” with the US PUR, which has no such requirement.

  67. Nice substance, Max. (Especially as compared to the dancing that anon is doing.) Keep it up – I find your posts to be very educational.

    Question: Do you think a multinational spending $2000 or so on a provisional application would qualify as “effective and serious preparations” for future commercial use?

  68. Quite how a “filing” at the PTO can substantiate anything at all about “use” of an invention in commerce is beyond me, anon. Forget everything to do with who invented it first. That’s beside the point. Prior user is about commercial use, and nothing at all to do with notions of conception or constructive reduction to practice.

    Now if you had wanted, you could have had in the AIA a PUR that includes within its ambit “effective and serious preparations” for future commercial use. But that would have been altogether too much harmonisation to swallow, I suppose.

  69. By itself? Not as helpful. As a component in a plan (showing for example enablement and possession) if can be quite helpful. Add in the “public qualifying event”.

    Then the pundits here should visit the other thread and actually answer my essay question (I know Leopold is working on it). How about the rest of you who obviously have too much time on your hands – up for it gentlemen?

  70. You clearly miss the point that it is you that needs to improve your substantive content. You started here with an interesting concept, but you have fizzled tremendously.

    Buck up man, it’s not too late for you to add value.

  71. Quite simple: the filing can serve as the necessary documentation required to establish PUR.

    MaxDrei, you get way too excited way too easily over way too minor things.

  72. I fail to see anywhere in the statute – 35 USC 273, below – where filing a provisonal and then abandoning it and keeping it secret would have any benefit or effect on this AIA expanded “Defense to infringment based on prior commercial use”? [The U.S. PCR defense being referred to above as a prior user right or PRU.]
    A provisional is not evidence of prior commercial use, and invention dates or abandoned filing dates are irrelevant for the PCR defendant.

    “A person shall be entitled to a defense under section (b) 282 with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if–
    (1) such person, acting in good faith, commercially used the subject matter in the United States, so long as such use is either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and
    whether or not the subject matter at issue is accessible to or otherwise known to the public, except that the
    (2) such commercial use occurred at least 1 year before the earlier of either–
    (A) the effective filing date of the claimed invention; or
    (B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).
    (b) Burden of Proof- A person asserting a defense under this section shall have the burden of establishing the defense by clear and convincing evidence. .. ”

  73. DC: the abandonment most likely means that the idea has been shelved and likely lost.

    Equally likely (if not more likely): the idea was not inventive in the first place and therefore all that was “lost” was some small amount of money that barely registered on the bank account of the spender.

  74. That last sentence Leo: great question. So good in fact that I shall not be in the least surprised to see it go unanswered.

  75. make others complete the job

    Only you, The Chosen One, have that superpower!!! We all bow down before your Pure Substance!

  76. My preference is to have no claims in a provisional. Apart from that, I write them the same as a non-provisional, and bill about 75% as much.

    Some would argue that they need to write claims to focus the app, but those are the guys who habitually write the claims first, which I never have.

  77. Maybe you missed my comment that both PUR and First to File are different in the US. Maybe you missed my posts on how PUR is a great way to have your Trade Secret cake and ear your competitor’s hard- earned patent cake.

    Maybe. You don’t expect people to read everything you post, do you? But did any of those posts tell us how filing a provisional will generate PUR?

  78. After you sir – I mentioned that you started with some substantive posts, don’t quit now and make others complete the job you merely started.

  79. Lol – you actually want me to say more…?

    Especially as I have more than abundantly discussed PUR on these boards.

    Maybe you missed my comment that both PUR and First to File are different in the US. Maybe you missed my posts on how PUR is a great way to have your Trade Secret cake and ear your competitor’s hard- earned patent cake.

    Either way, Leopold, you are incorrect in thinking that I have not answered MaxDrei. Rather, my answers have already been posted.

    Better trolling please.

  80. Under the patent law of Europe, filing a pro would generate diddly squat in the nature of a PUR. So, anon, what makes you so confident that it will generate non-zero PUR under the AIA?

    A great question, Max. I wonder why anon won’t answer it?

  81. Isn’t part of that rule the ability to abandon the first and only claim to the latter?

    You tell me, Oh Substantive One. And tell everyone also: when does the abandonment of the earlier filed provisional take place? When I request abandonment? Or sometime afterward? And cites please.

  82. Do you even have provisionals in Europe MaxDrei?

    I will answer that one: YES! Surprised?

    What is a “provisional” überhaupt? Essentially, this is an application for which the requirements are relaxed. No abstract or claims are required, no specific requirements for the form of the disclosure or the language are imposed. All these deficiencies can, at least in theory, be fixed at a later stage, or in a second filing claiming priority.

    If this corresponds to your definition of a “provisional”, then it is possible to file such applications at the EPO. They just don’t have any special name.

    Since the provisions of the Patent Law Treaty were implemented in the 2000 revision of the EPC, the requirements for getting a valid filing date have been very relaxed.

    From the Guidelines A-ii-8-4.1:


    4. Examination on filing
    4.1 Minimum requirements for according a date of filing

    [...]
    To be accorded a date of filing, these documents do not have to meet any particular requirements as to form or presentation. It is essential, however, that the documents be sufficiently legible to enable the
    information to be discerned.
    [...]
    4.1.3 Description
    The contents of the description do not require close scrutiny – it is sufficient to identify a document (or documents) which appear(s) to include a description. [...]

    Getting a valid filing date is crucial for internal or international priority.

    There is an added bonus for filing at the EPO: you can file your “provisional” for ***FREE***!

    In Europe no fees are immediately due on the filing day. The filing and search fees can be validly paid within one month after filing, but if you don’t pay them you still get keep your priority date. A certified copy of the priority application will set you back about US$65, which is still a lot cheaper than a US provisional. It may not even be required for a second filing with an office covered by an electronic PRIO doc exchange program is in place.

    So, if under AIA a foreign filing is worth as much as a domestic one for priority, you could just as well file with the EPO.

    The problem is those reduced filing requirements is that informal documents drafted by laymen will cause a lot of difficulties in properly establishing priority under the EPO’s directly and unambiguously derivable standard. The place where your document was filed makes no difference whatsoever as far as the EPO is concerned.

  83. You assume far too much for someone who has often plied the line of “I am here to learn” while the only learning evident was learning how many dead horses can stack up next to a drinking well.

    On the contrary, I did not want to assume which direction MM was going. It is not often that he ventures into substantive grounds, and my comment of “interesting” was a kind gesture to bring out more of this type of post.

    So on the other hand, we have you quickly jumping to the wrong conclusion and making an @$$ out of yourself. Maybe you should pay more attention to what is being said, and less attention to who is saying it.

  84. I’m referring to running afoul of the PCT rule against claiming an invention that “could have” claimed priority to an earlier application (e.g., an earlier provisional application disclosing the claimed invention and pending at the time the second provisional application was filed).

  85. What? You mean you really don’t know what MM’s alluding to? Call yourself a patent attorney and know nothing of the basic provisions of the Paris Convention, binding on your domestic US clients? You shouldn’t be allowed to practise, anon.

    And you want us to educate you too? That’s rich.

  86. From your silence I will draw such inferences as I please

    As Leopold will tell you, I have hardly been silent. But that has never stopped you in the past from drawing whatever inferences you want to draw anyway (I am reminded of huge mountains of dead horses near perfectly good drinking wells).

  87. Yes, anon, we have provisionals in Europe. There is no requirement under the EPC for any claims (or even any filing fees) till the end of the priority year.

    I believe the terminology “provisional” that we find in the AIA comes from the UK Patents Act of 1949. I belive that the PUR in the AIA was inspired by the EPC. I think I understand your reluctance to be drawn. From your silence I will draw such inferences as I please.

  88. I wonder how many people who re-file provisionals prior to actual abandonment of the earlier filed provisional are aware of how such activities can affect their priority rights internationally.

  89. Do you even have provisionals in Europe MaxDrei?

    As to PUR under AIA, I have posted enough already to teach you and do not care to provide yet another tutorial. I am sure if you think long and hard on this you can come to an understanding that would be more satisfying than my spoon feeding you. (don’t forget that the US PUR is not the same as the Euro PUR, just as the US First to File is not the same as the Euro First to File)

  90. (P)rior (U)ser (R)ights

    Greatly expanded under the America Invents Act, and an unparalleled upgrading of Trade Secrets in the Patent Law regime.

  91. A great way to force competitors? Or a great way to delude yourself. Under the patent law of Europe, filing a pro would generate diddly squat in the nature of a PUR. So, anon, what makes you so confident that it will generate non-zero PUR under the AIA?

    Not getting at you, you understand, just asking you (for my own education) to explain to me PUR under the AIA.

  92. A patent attorney with mostly individual inventors tells me most of the provisionals he prepares get abandoned. I wonder if small inventors account for a significant percentage of those abandonments in general?

    But meanwhile the inventor had a year to try to license his or her invention with a more safety than with no pending application at all. [At least for a patent attorney prepared provisional, and even more so under the AIA starting next March]

  93. It would be interesting to see if there’s a correlation between the increased abandonment-without-priority rate and the rate at which provisionals are filed by late-night “invention help” companies, some of which rely on the low cost for drafting and filing low-quality provisionals to suck in naive independent inventors who then can’t afford the significantly higher rates for filing a non-provisional. (Sadly, this data is likely unavailable due to the confidentiality provisions in the law.)

  94. POINT ONE

    For most, provisional applications are seen as a low-cost mechanism for claiming a priority date and for delaying the eventual higher cost of drafting and filing a non-provisional application.

    This is precisely the WRONG way to view provisionals. I cannot tell you how much effort must be spent to educate people on this point. If cheap and dirty is what you put forth, then cheap and dirty is what you get and your tie to the non-provisional will always be suspect. The writing of a provisional should be taken with the same level of care a the writing of a non-provisional in almost ALL circumstances (there are a few emergency-type circumstances, but these should be the rare exception).

    POINT TWO

    Although the information may still be useful for the applicant as a trade secret, the abandonment most likely means that the idea has been shelved and likely lost.

    Or not – one new way of looking at this is the use of the provisional to establish a PUR. File. Abandon. Keep as Trade Secret. If someone else comes along, let them do all the heavy lifting of prosecuting a patent and clearing the field for you – you and your customers are inoculated, and the best part is that the other party has no clue that you have this PUR until after they have expended the time, money and effort to obtain a patent and have then gone to the pains of enforcing their rights, and then – and only then – discover that you (and your customers) are immune to their exclusivity.

    It’s a great way to force competitors to spend their resources for your benefit.

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