Claiming Priority to Provisional Applications

By Dennis Crouch

An ever increasing proportion of US-based patent applicants rely upon provisional patent applications. For many, a provisional application is 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. More sophisticated parties also use a provisional application as a way to shift the patent term back by one year. One problem with the cost-savings approach is that provisional applications only serve their purpose if they include a sufficient disclosure to protect the eventual claims.

One question that I’ve had for a while is whether patentees ordinarily add new matter when filing a non-provisional application that follows a provisional priority document. New matter might be needed because the original provisional application was filed hastily without sufficient time to marshal and understand the important facts. Similarly, new matter might also be wanted if additional technological progress occurred during the interim. The question has been difficult to ascertain because the USPTO does not make its database of about 2,000,000 provisional applications publicly available other than the individual files in PAIR. This, despite the law that provisional applications count as prior art in many situations. Additionally, the USPTO does not ordinarily ask the applicant to identify whether any new matter (additional disclosure) has been added to the formalized non-provisional or, if so, what that new matter might be. Rather, applicants merely “claim priority” to the provisional without saying more. The AIA first-to-file transition offers an opportunity to shed some light on industry practice in this area.

As part of a project on the impact of the America Invents Act, I looked up a set of about 2,000 recently published patent applications that were each filed on or after the March 16, 2013 but that claim direct priority to a provisional patent application filed before that date. This cohort is interesting because the applications span the transition from the pre-AIA invention-date focus to the post-AIA filing-date focus. The cohort is particularly interesting for the provisional-priority question because applicants must declare whether the claims in the newly filed application are fully supported by the provisional.

Some Background: Under the new law, the filing-date focused (first-to-file) patent regime applies to patent applications filed on or after March 16, 2013 – with the caveat that these post-AIA application filings will be examined under the pre-AIA regime if each claim (ever) in the application has an “effective filing date” that is pre-AIA. In other words, a later-filed application will be judged under the first-to-invent rules if it properly claims priority to a pre-AIA application that sufficiently discloses the claimed invention. See AIA, Section 3(n). Under the plain language of the law, the regime used is done on a patent-by-patent basis rather than claim-by-claim or family-by-family.

Ask the Patentee Whether AIA Applies: Now, you might expect that the USPTO would be charged with examining the priority documents to ensure that the newly filed applications properly claim priority. That is not really done on a systematic basis. Rather, the Patent Office simply asks the applicant whether the new claims are fully supported by the priority document. For several reasons, I believe that the vast majority of applicants will be truthful in their response. People do lie, but attorneys strongly shy away from on-the-record lies that – if discovered – would lead to potential charges of inequitable conduct, violation of the rules of professional ethics, and malpractice. While attorney bars severely frown upon attorney dishonesty, patent prosecutors are held to an even higher standard that requires both “candor” and “good faith.”

Findings: Looking at post-AIA non-provisional applications that each claim priority to a pre-AIA provisional application: I find that the files of more than 80% of those applications assert that all claims in the non-provisional are fully supported by priority provisional application.

More on Methodology: For the study, I randomly selected a cohort of about 2000 recently published patent applications that were each filed on or after March 16, 2013 but that claim priority to a provisional application filed within 12-months before that changeover date. For each of those applications, I then used PAIR to determine whether the patent applicant indicated that all of the claims in the non-provisional application were effectively disclosed by the provisional filing. The result was that 1,743 out of 2,097 (83%) assert full disclosure by the provisional whereas 354 (17%) assert that the claims were not fully disclosed by the pre-AIA priority documents. Of some interest, large entities were much more likely to claim full priority than are small or micro entities. I also found nuance within firms that had multiple applications in my sample – i.e., some firms claimed full priority for certain applications but not for others.

Caveats and Conclusions: There are a few potential conclusions to draw from this result. My best guess: These results suggest that provisional applications are ordinarily being drafted with care and purpose to ensure sufficient disclosure. At the same time, I suspect that attorneys are also purposefully limiting invention scope so that full priority can still be claimed. As suggested above, I my guess is that few if any attorneys are improperly claiming full priority. Although not sufficient to claim statistical significance, my perusal of a handful of applications support these conclusions in that applications that claimed full priority were extremely similar to the associated provisional while the new matter was fairly quickly identifiable for those applications who admitted to new matter.

There are two important caveats to using this study to reflect more fully on the practice of provisional patent applications. First, the AIA changeover has likely impacted applicant behavior – making them potentially more careful than they would be in the ordinary situation. In particular, in the AIA changeover situation, adding new matter to the non-provisional claims does more than simply shift the effective filing date. Rather, it also alters the rules applied when judging novelty and obviousness. As I wrote in a prior post, depending upon their situation some applicants may prefer the old rule while others prefer the new. See Dennis Crouch, Should you Transform Your Pre-AIA Application to an AIA Application? (November 2013).

In addition, we also have a general data problem in that a substantial number of provisional patent applications expire without ever being claimed as a priority document. In a prior post, I wrote that: “48% of provisional applications filed in FY2011 were abandoned without being relied upon as a priority document.” Crouch, Abandoning Provisional Applications (January 2013). The point here is that we have no information regarding whether these abandoned provisionals applications are substantially more sloppy and poorly drafted – I suspect that they are.

172 thoughts on “Claiming Priority to Provisional Applications

  1. What are the odds that this will be yet another thread in which Ned fails to follow through on the discussion to its logical end, leaving my view of the law unanswered (but somehow not agreed to)?

  2. Some old thoughts worth repeating here (from an embedded link to an earlier discussion on provisionals -sans the dustkicking that ensued):

    November 26, 2012 at 8:25 am

    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.

  3. Once again I have scanned the complete 51 pages in the Armitage article available at the link provided by Reed and I find no support (under any context) for the notion that a purposefully abandoned provisional P1 (abandoned prior to its natural expiry) can somehow serve as a priority date for an after-abandoned-but prior-to-P1-defined-convention-year bar date additional filing of any type of application.

    The word abandoned still means every bit of what that word means.

    I again extend the invitation to Reed and Ned to either provide a definition of “abandon” that would appropriately allow them something the definitions I provided do not (this is the direct inherent meaning of the word in the statute having the meaning that I have indicated), or find a specific part of the Armitage explanation that supports the desired view.

    Currently, neither support what Ned has proposed.

    That being said, I still recommend the link – especially to MaxDrei, as detailed discussions abound, keeping in mind that some of the intricate details will be constrained to non-AIA examination bound applications and patents.

    I will further note that the propaganda offered with the promise of the AIA (this will make all patent related items simpler) will NOT reach that promise land until AFTER another seventeen plus years has passed. Until all applications/patents that can claim pre-AIA status (including those that earn the additional Patent Term Adjustments) pass out the limited time of protection, the simplicity promised under the AIA is a mirage as BOTH legal realms are in play, and much to the scriveners delight, patent law is MORE (not less) complex.

    1. Anon, can’t you get it through your thick skull that the repeal of the copendency requirement in the AIPA was intended to permit claiming priority to an abandoned provisional application?

      1. You have shown no support for this proposition.

        None.

        You keep on saying it without providing any support. The definition itself does not support what you say. There is no support in the Armitage article – under ANY context – to support what you say.

        Ned, you need to do more.

        1. anon, except I do not. Fulfill the statutory requirements and priority is good. It makes no difference that the provisional is non co-pendent. It does make a difference if it is a more than a year old.

            1. Anon, of course I have. I have also discussed the issue with Bob directly, and was on the board of directors of both the IPO and the AIPLA at the time we got the AIPA passed.

              The whole point is that we needed to end co-pendency simply to comply with the Paris Convention so that we could still claim priority to provisional applications within the convention year even where there was an earlier filed provisional outside the convention year disclosing the same invention. The only way to do that was to abandon P1 before filing P2. But if P1 was within the convention year, we still wanted to be able to claim priority to it.

              Anon, this is NOT rocket science. The problem you are having is that you are unfamiliar with the Paris Convention and its requirements.

              Trust me, patent counsel of major corporations such as Bob Armitage needed to know the Paris Convention backwards and forwards as their bread and butter was non US filing.

            2. even where there was an earlier filed provisional outside the convention year disclosing the same invention.

              Funny that Ned – that is expressly NOT pictured as one of the contexts in the linked Armitage article.

              I do not think that your memory is serving your well on this point.

              Sorry Ned if you feel that I am “not familiar.” Unfortunately for you in this exchange – even though you are so much more familiar – you have not supplied any support for your position.

              Still.

              You will have to excuse me that I simply do not take your word alone.

            3. Not exactly, anon. I have pointed out to you that 119 does not require co-pendency, and in fact that requirement was repealed.

              There is no basis in the law to not accord priority to provisional that is not co-pendent but nevertheless is within 1 year.

            4. There is no basis in the law to not accord priority to provisional that is not co-pendent but nevertheless is within 1 year.

              Except for the fact that the word in the statute does not allow it.

              You still have not provided a definition of the word.
              You still (also) have not provided any example from the Armitage article, in any context to support what you think the law ought to be.

              The problem Ned is that what you think is simply NOT what the law states.

              I do understand that you want it to be different, and that your wanting it to be different is blinding you from the plain words. But there is simply no getting around the plain words. Not unless you can provide a suitable definition (which you have not even bothered to try to do).

            5. anon, perhaps this will help:

              119(c)

              “(c)
              In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.”

              That is a codification of the Paris Convention requirements. Note, it suggests that an abandoned application may still be the subject of a priority claim, in which case, it remains “first” despite having been abandoned.

            6. Ned,

              What would help are the two very simple things I have laid out for you – and neither of which you have provided.

              Why are you resisting this so fiercely?

              Let me spit that quote right back at you, highlighting the phrases you seem to be missing:

              119(c)

              “(c)
              In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a SUBSEQUENT regularly filed application [that would be P2] in the same foreign country INSTEAD OF of the first filed foreign application [that would be P1], provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and WITHOUT leaving ANY rights outstanding, and has not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority.

              What part of cannot serve as a basis for claiming a right of priority do you not understand?

              Again, P1 abandoned is gone – you cannot reach back to the abandoned P1 for P1’s priority date. P2 – a provisional – cannot chain backwards to another provisional.

              No one is saying that you cannot file P2 and use the priority date of filed P2.

              Check again every context discussed by Armitage in the linked report. There is not a single solitary context in which priority date of abandoned P1 survives.

              Not one.

              So again, let me rub your nose in your own snide quote: “So, you cite an unidentified definition from some unidentified source and claim victory in this discussion. That is quite persuasive.

            7. The Armitage statement from page 8:

              Since the ‘right of priority’ upon filing a U.S. patent application is NOT a ‘priority right’ under U.S. patent law, but a ‘right’ WHOLLY under foreign patent laws, it is unclear how the disclaimer would be given its intended effect.” (emphasis added)

              Ned – clearly Armitage is noting the difference between US and foreign patent laws. You are not giving full and proper weight to what is actually being said by Armitage who is directly admitting that US law is different than foreign law. Instead you are (once again) trying to import foreign law into the the US patent law system.

              How many times does it take me busting you for this tactic in order for you to stop trying to do this?

              Will you (finally) give me something more than your mere word that you want the law to be something other than what it is plainly written to be? (the appeal that Congress would simply act again to change the meaning is a bit of an admission that the law says what I indicate, right?)

            8. anon, may I suggest you stand alone in your thinking. Given the whole purpose of provisionals and of eliminating the copendency requirement, it would be odd to have a judicial decision that would simply ignore all this and throw a monkey wrench into the law that is not required that can cause very serious damage to US inventors seeking to comply with the Paris Convention.

              Also, see slide 32.

              link to patentbar.com

            9. Ned,

              You continue to miss the point.

              I already addressed that slide by noting that “I think so” is hardly conclusive of anything.

              Further, you continue to merely “say so” and you have yet backed up your position, while I have utterly destroyed that position with the very words of the law as written.

              Your hubris is amazing. I certainly hope that you do not bank any legal arguments you make on this notion that you must be right therefore you can ignore the plain words of the statute.

              Once again, then (and yes to rub your nose in it): what part of “as not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority.” do you not understand?

          1. Try reading it objectively, without the pre-conceived notion that your stance must be correct.

            Let me know when you find any independent support for the notion that something abandoned means something other than what the definition of abandoned entails. In any context.

          2. If that is correct (which I doubt) then the strategy you refer to at 2.3.1.2 will not work since there are still outstanding rights from the abandoned provisional.

            1. Abstraction, if P1 is outside the convention year, there are no rights outstanding. So long as P1 is in the convention year, one can still claim priority to it, both for a 111(a) non provisional in the US, and for Paris Convention priority.

            2. Oddly,

              Ned refuses to do either thing I ask of him.

              He refuses to tell anyone what definition of “abandon” he is using, and

              He refuses to provide any context to his claim in light of the Armitage link.

              He continues to merely insist that “his word” is enough – even given all of the objective evidence to the contrary.

              And oddly he wants to make a big stink of “professionalism” when it is clear that his unsupported view can be considered rather reckless.

            3. Abstraction, well that might be the technical case. But the whole point is of eliminating the copendency requirement is to allow abandonment of P1 before filing P2 and still allow one to claim priority to P1.

              If this is STILL not sufficient for the Europeans, we should let them tell us. I am very sure Bob and the folks at the PTO who were behind this legislation got it cleared through the EPO before it was enacted.

            4. Not to rub your nose in it (ok, to rub your nose in it):

              So, you cite an unidentified definition from some unidentified source and claim victory in this discussion. That is quite persuasive.

          3. anon, you still have to consider that Armitage was dealing with a P1 that was outside the convention year as an assumption — such that one could not for THAT reason claim priority to it.

            There is nothing inconsistent with claiming priority to the abandoned application within the convention year. Armitage never said that at all.

            1. As I explained Ned (and clearly you have not read the Armitage article), example 2 was not dealing with P1 that was outside the convention year as an assumption.

              You are wrong.

              Again.

              Will you finally comply with either of the two very simple things I have asked of you, or will you (yet again) run away from a discussion with me when it is clear that you are wrong?

    2. We’ve discussed the statute and the statutory interpretation argument based on Congress’ amending 35 usc 119(e) to remove the co-pendency requirement, so I won’t rehash the statutory issues.

      The Federal Circuit has interpreted post-AIPA Sec. 119(e) and has articulated the four requirements that must be met for a non-provisional application to claim priority to a provisional application in Dupont v. MacDermid Printing Solutions, 525 F.3d 1353 (Fed. Cir. 2008):

      (1) the provisional must comply with the requirements of section 112, first paragraph, and the non-provisional must be for the same invention; (2) the non-provisional must be filed within twelve months of the provisional; (3) there must be an overlap of inventorship; and (4) the non-provisional must include a specific reference to the provisional. Id at 1358.

      Consistent with the statutory interpretation discussed before, the Dupont court does not articulate a co-pendency requirement or a requirement that the provisional not be abandoned.

      You may make the argument that express abandonment may call into question the efficacy of a priority claim under Sec. 119(e), but you have not cited statutory or case law authority that might give that argument any weight. Continuing to assert to Ned that he “needs to do more: is not the same thing.

      Thank you for your provocative insights, but I believe that further discussion that is not based in the law would not be fruitful.

      1. You still fail to account for the meaning of the word Reed.

        You are supplying some great collateral items, but failing in the first instance.

        Whether or not the requirement of co-pendency is articulated does not – cannot – override what the word “abandon” means. You asy I have cited no statutory law or case law – but I have provided you the meaning of the word and used your own Armitage reference to negate what you and Ned claim to be.

        You want to assume that your view is based in the law and you simply have not yet established that.

        Further, your new reference to Dupont is inapposite as that case does not deal with the fact pattern we are discussing.

        What is your definition of the word “abandon?”

        1. Thanks for the link to the case.

          Express abandonment under 37 CFR 1.138 is abandonment of the application, rather than the invention. (See words of Rule and MPEP 711.) To understand the distinction, consider the following hypothetical under 35 USC 120 practice:

          Day 1 – Application A is filed, disclosing and fulfilling Sec. 112 requirements for Invention X.
          Day 2 – Application B is filed as a continuation of Application A, also disclosing and fulfilling Sec. 112 requirements for Invention X.
          Day 3 – Application A is expressly abandoned under 37 CFR 1.138.
          Day 4 – Application C is filed as a continuation of Application B, also disclosing and fulfilling Sec. 112 requirements for Invention X, and also claiming Invention X.

          If we were to interpret the abandonment of Application A on Day 3 as abandoning all rights to Invention X, then the claims in Application C would not have the priority right to the Day 1 filing date of Application A. But that is not the case — only Application A was abandoned and not the rights in Invention X.

          Because provisional applications are abandoned under the same Rule as utility applications, which explicitly indicates that the application is being abandoned, the distinction between abandoning the application and abandoning the invention must be maintained.

          1. You might want to look at the source you yourself provided and note that Armitage wrote (care in just how “abandonment” is effected).

            Reed – I have already addressed these things.

            And I still do not have a definition of the word from you (Rule 1.138 does not say what you think it says) – I do understand the distinction, but apparently you and Ned still do not. Again – note that in Armitage’s several different contextual examples, the invention is ‘kept alive’ but only in P2 (and critically, only with P2’s priority date). NONE of his examples even hint that the priority date of P1 survives abandonment.

            Not one.

            Your instant hypothetical again misses the point, since you are again introducing a different fact pattern – you have a maintained chain – and once again not addressing the point under discussion – P1 abandoned prior to any chain to P2 (P2 cannot chain to P1).

    3. One of the things you should notice, anon, is that in Armitage’s examples, all the provisional applications are abandoned after they are filed

      1. Ned – that is a meaningless point – did you want them abandoned before they were filed?

        Still waiting on you to address the points I have provided to you Ned.

        What is your definition of “abandon?”
        Have you found any context in the Armitage article to support your view?

        1. Look at his examples. Every one of them has a vertical line after filing. It is Bob’s recommendation to abandon all provisional applications immediately after they are filed. This preserves the right claim priority to them even if they fall outside the convention year.

          1. Ned,

            I concede what you are saying in relation to foreign filings – but I already made clear that I was talking about US law. See 2.3.1.1.1.4.

            Also see Page 8 of the Armitage write-up.

            What you say does NOT pertain to US patent law as I have been trying to tell you.

            See how I have ripped apart your 119 quote?

            1. anon, on page 8 homages is talking about the distinction between the banning the right to a patent and not abandoning the right to claim priority. While one can abandon the right to obtain a patent by abandoning the provisional application, one does not he contends surrender the right to claim priority to it.

              This bolsters the argument that he understood and still contended that abandoning the provisional does not affect the right to claim priority to it provided the claim is made within one year. That is why he recommends abandoning provisionals after they are filed so that if they go out of the convention year, one might still be able to claim priority to a later provisional within the convention year and comply with the Paris convention. But if one had to sacrifice the right to claim priority to provisionals in United States while preserving Paris convention rights, I would think that Armitage would make that point that there would be a trade-off. But it is clear to do not make that point in believed that one could pursue the practice he recommended and still preserve the right the claim priority to abandoned provisional applications both for Paris convention purposes and for US non-provisional purposes. Nothing else makes sense. To read the statute the way you suggest, one would have to hamstring US rights if one were to comply with the Paris convention for foreign-filing purposes. But no one at the time or even today thinks that. If the US courts would to hold that the abandonment of a provisional application would preclude one from claiming priority to it even though there is nothing in section 119 to prevent it, I think there be such a hue and cry that Congress would immediately overrule such a decision.

            2. anon, please forgive all the typos in my last response. “homages” should be Armitage’s, “banning” should be “abandoning;” “it is clear that he did not make that point”….

            3. You cannot bolster the argument for US law as once again all you are doing is descending to a type of “the law should say X, while the law still says Y.”

              Focus Ned on US law and how you have not yest provided actual support for your position.

              Page 8 admits that what Armitage said about FOREIGN FILINGS does not have an analogue in US law. He in fact is not just silent about the difference in US law – he admits it.

              You have not commented on the destruction to your view as rendered in 119 – did you miss that post?

              (and don’t sweat typos – this is a blog and typos really are not a big thing)

            4. anon, will homages is wrong about 119 not having an analog to for law, because it did in section “(c)”. [I don’t recall when section “(c)” was added. Perhaps it was not in the statute when Armitage made his remarks.]

              On US law, there is nothing in US law that prevents a claim to priority to abandon application. The only thing that would prevent that, the requirement for codependency, was removed from section 119 in 1999.

              You still have the support your position by some statute or case law that actually states that one cannot claim 119 priority to it and abandon application. I guarantee you that such case law does not exist. Further, there is nothing that I know of in the statutory framework that would prevent such a priority claim under 119.

            5. Ned,

              Once again you are ignoring the destruction of 119(c) that I have already posted.

              Please catch up.

              You need to recognize that the law you wish to lean on to support your position does exactly the opposite.

              You keep on saying “nothing in US law” when it is quite evident that US law is not only “nothing,” but is conclusively “something” (and that something is fatal to your view).

              I do not think case law will exist as the clear impact of the language is not something that will likely even make it to court.

              Read my comment with the bold emphasis – 9.1.1.1.2.9.

            6. anon, since 119(c) is a codification of the Paris convention, and because the USPTO cleared its procedures involving provisional applications through the EPO and WIPO before the amendments of section 119 were made in 1999, your interpretation does not hold water. The abandonment of a provisional application abandons its right to a patent. It can no longer be converted into a patent application and therefore it fulfills the requirements of the Paris convention that a patent application be abandoned and leave no outstanding rights. The Paris convention does not prohibit a priority claim to such an abandoned application, but it still requires that the priority claim still be made within one year of the filing of the abandoned application. That is all that is required.

            7. your interpretation does not hold water

              LOL – WRONG Ned.

              My “interpretation” is nothing more than the plain words of the statute itself.

              You need to deal with those plain words.

              Sorry Ned, but all that you are doing is wanting to the law to say something other than what the law clearly says.

              As I have already told you – the Paris Convention is a treaty that is NOT self-enacting, and just because you see something in the treaty does NOT mean that it automatically translated into the enacting law.

              I ripped you apart directly on 119 using only the very words of the law.

              You have to live with what those plain words say. You cannot revert to any words in the Paris Convention that are not in the US law – and I clearly showed you what that US law says.

              What part of “and has not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority” do you not understand?

            8. anon, all I can say is that even though you have an argument, the consensus is against you. If the abandoned provisional application falls outside the convention year, it cannot serve as the basis for priority. I think that is what was intended.

              Regardless, I am very sure that if a court were to rule as you suggest they could, that court case would be quickly overturned by Congress because it flies in the face of the intent of the drafters who obviously included Bob Armitage.

            9. anon, all I can say is that even though you have an argument, the consensus is against you

              What consensus, Ned? You have shown nothing to back you up except your word.

              Sorry, as I have already stated, that is simply not good enough.

              The plain words of the law itself support me fully. You may wish there was a different law, but that will not help you.

              I am not sure why you would even bring up: “If the abandoned provisional application falls outside the convention year” as that has not been a part of our conversation.

              because it flies in the face of the intent of the drafters who obviously included Bob Armitage” You have not even shown this – as I have shown you that on page 8 of the Armitage article, Armitage himself openly admits that US law does not cover what you say US law covers. You continue to confuse what may lie as intent in a treaty with what Congress actually chose to do in enacting that treaty. You seem very much stuck on the Ned-IMHO law factor.

              When all is said and done, you have made no case for your position concerning US law.. Personally, I would be truly embarrassed to stand up in a court and attempt to convince the court with what you have shown here (which is to say, nothing much at all).

  4. Dennis writes “the Patent Office simply asks the applicant whether the new claims are fully supported by the priority document” and I have been asking how (in a case where the priority document is not identical with the pending application that contains the claim) shall I know whether my claim is “fully supported” by the priority document.

    Looking at 35 USC 112, I see the requirement for a written description and an enabling disclosure but no mention of the concept of “support”, in the specification, for the claim. How is it then that, when the PTO poses its question “Does your application contain even a single claim that lacks full support in the priority application?” everybody understands the question well enough to answer it truthfully?

    Take for example the typical situation in chemistry, where the priority document (provisional) claims a generic chemical formula and the prosecuted claim in the successor non-pro is identical. In the pro are but two worked examples of chemical compounds within the ambit of the claim, but in the successor non-pro there are those two Examples plus 18 more. Does the non-pro claim enjoy a level of “support” in the provisional that is “full”? Yes or No?

    1. Max, the issue of course is whether the application filed after March 16, 2013 has any claim that is not supported in an application filed before that date.

      Take your example of a claim to a genus. The pro has two examples. The non pro 18 more. The non pro is filed after March 16, the pro before.

      No matter how you argue your case, the addition of the new matter in the later specification with claims that cover these new examples is going to result in the new application having a claim that is not fully supported in the provisional such that one cannot make the require affidavit without committing fraud.

      At least, that is my opinion.

      Note, provisionals do not require claims. Claims in the provisional should be given little or no weight in the answer to this question.

      1. Ned thank you so much, for an answer that both reassured me and surprised me. Yes, I confirm that my pro was filed before March 16 and my non-pro just under a year later, after March 16.

        OK, let’s assume the pro has no claims. For me, that makes no difference. As you say, claims are not a required element of a pro.

        Now let’s set aside any thought of claims directed to the specific subject matter of one of the 18 new Examples. Can we just focus on the generic claim, of a text found verbatim in the “Summary” section of the claim-free pro? Does that text in the pro, and those two Examples in the pro, suffice to provide “full” support in the pro for that generic claim in the non-pro?

        1. Max, if a claim covers new matter, I would suggest that it is irrelevant that the claim also covers matter in the priority case.

          It is the addition of new matter that causes the problem.

          Compare MUNCIE GEAR INC. v. Outboard Co., 315 U.S. 759, 62 S. Ct. 865, 86 L. Ed. 1171 (1942). The applicant added new matter in an amendment. Some of the claims arguably were fully supported without the new matter. Nevertheless, the Supreme Court was not going to get into that fine a detail, and simply declared all claims invalid, essentially holding the filing date of the patent to be the date of the amendment, which was more than the statutory bar period beyond the date the claimed motor was in public use.

          The best bet is file two cases, one without the 18 new examples. There make the affidavit. In the other, do not.

          1. Ned, in These columns, sometimes it happens that I get a great new insight into the differences of understanding across the North Atlantic, when each side finds some aspect of its respective patent law so self-evident as to need no mention, and the two aspects clash.

            This was such a Moment for me. Many thanks.

            Now I see, why some Americans are so terrified of adding matter, during the Paris Convention priority year, when moving forward from pro to non-pro (so to speak). Now I see why some Americans find it so difficult to comprehend, how issues of entitlement to Paris Convention priority are addressed under the EPC. Thanks again.

            1. MaxDrei,

              In your wonderful “Now I see” eureka moment, do you see where an abandoned first provisional can be relied on for priority prior to a year’s time from that provisional’s filing date?
              Under US law?

              What definition of “abandon” are you using?

  5. Simple question: can someone detail how one claims priority
    aside from filling in the normal USPTO form PTO/A1A/14 ADS to effectively declare that “all claims are fully supported by the priority document.” I include the following statement in my application preambles that states: “This application claims the benefit of filing priority under 35 U.S.C. §119 and 37 C.F.R. §1.78 of the co-pending U.S. Provisional Application Serial No. 61/xxx,xxx
    filed March xx, 201x, for a . . . ” What else am I supposed to do? If this is incorrect, how would I correct it in an application that is still pending? Is there another form that everyone uses to accomplish this? What if I only wanted to claim that some are fully supported. How would I indicate that? And, how in the heck did Dennis go through 2000 provisional applications? Is he a robot?

    Regards, C3PO

    1. Russell, I am looking at what you call:

      “the normal USPTO form PTO/A1A/14 ADS”

      but on it see no hint of a suggestion that I:

      “declare that “all claims are fully supported by the priority document.”

      Conversely, in 35 USC 119, I see the exact same Paris Convention test namely “same invention”. Also in 35 USC 120 I see the same notion repeated “an invention……such invention”.

      This all suggests to me that “fully supported” is in fact unsupported by the statute and rules, and that the statute has instead enacted the Paris formula, plain and simple.

      May I ask, from what source are you deriving your “fully supported” test?

      1. Max, The Application Data Sheet includes the following statement/checkbox:

        [Check Yes or No] This application (1) claims priority to or the benefit of an application filed before March 16, 2013 and (2) also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
        NOTE: By providing this statement under 37 CFR 1.55 or 1.78, this application, with a filing date on or after March 16, 2013, will be examined under the first inventor to file provisions of the AIA.

        I wrote about this here: link to patently.wpengine.com and the USPTO discusses the issue here: link to uspto.gov

        1. Got it–thanks Professor!

          Max, in reading the Professor Crouch’s article I had the impression that a special statement had to be made now using some magic words like “fully supported” to claim priority. Apparently, you just make the claim like we did before AIA, except in the situation where someone wants to be examined under the AIA but wishes to still claim priority back to a provisional filed before March 16, 2013. That’s when one check the box on the ADS.

          Professor, I still have the question as to what does one do if some claims are supported by the pre AIA provisional and some are not, but you want pre-AIA examination for those claims eligible. Do you file a separate statement naming which claims should be examined how? Seems like your prior article indicated it was left up to the courts to figure that out in a contest. It’s claim by claim, right?

          1. Thanks Russell, sorry for the confusion created by my original article.

            You asked in a follow-up: I still have the question as to what does one do if some claims are supported by the pre AIA provisional and some are not, but you want pre-AIA examination for those claims eligible. Do you file a separate statement naming which claims should be examined how? Seems like your prior article indicated it was left up to the courts to figure that out in a contest. It’s claim by claim, right?

            Answer: The USPTO has announced that they are treating patent applications as a whole with regard to AIA applicability and have applied a one-drop rule. The basic rule is that the first-to-file rules of the AIA apply to any application with at least one claim whose priority date is on or after March 16, 2013. The only solution then would be to file two separate applications.

            Somewhat confusing. AIA or not-AIA is decided patent-by-patent. But, the actual priority date can still be claim-by-claim.

            Take a hypothetical example of a CIP that has one claim with an effective filing date of 1/1/2010 and another with an effective filing date of 1/1/2014 (because of new matter added). Because one claim is Post-AIA then the first-to-file rules apply. However, when applying those rules, the first claim will be deemed filed as of 1/1/2010.

            1. A note of warning might be added: do file separate applications. Do not file one application and then rescind claims that make the application fall into the post-AIA examination domain. Even if you make the application be as if you never had those claims, your removal will not move the application back into the pre-AIA examination bucket.

              (thanks again to the poster who noticed that claims to new matter would not be entered in the first instance and clarifying my understanding on that point)

      2. the statute has instead enacted the Paris formula, plain and simple

        Now that is some fanciful wishful thinking…

        1. anon, if the US did not treat domestic priority the same way as Paris Convention priority, that might be a treaty violation. I am sure the US courts, if ever presented the issue, would not intentionally do this.

          That being said, we have the notorious Rich and the Hilmer doctrine that rankled.

          1. …still not seeing a post from you that supports what you claim Ned.

            As to “treaty violation,” bah – that’s an empty point given that in US law these treaties are not self-enacting (you seem to draw a blind eye to this -either that or you are insisting – yet again – on ignoring actual US law in our discussions).

          2. well that post evaporated…

            Anywho, Ned you still have not supported your claim. As to ‘treaty violation,’ you do recognize that these IP treaties are not self-enacting, right? Please tell me that you at least recognize this aspect of US law (and are not trying to create Ned-IMHO law in this discussion).

          3. anon, all I am suggesting is that where there are two possible interpretations of 119, one that accords with a treaty and one that violates the treaty, which one do you think the courts will choose?

            We no longer have Rich on the court, who could be guaranteed not to keep the big picture in mind. He would rule that unless Congress expressly prohibited patenting X, that X could be patented — no need to look to the Supreme Court for guidance.

            1. Ned,

              All I am saying is that you cannot use a word that violates a basic portion of meaning for that word.

              Please feel free to join Reed in finding a definition that fits what you want to do.

            2. …and your anti-Judge Rich comment is completely out of line here.

              There are plenty of places for you to stop running away, turn around, and engage me in meaningful conversation.

  6. “Of some interest, large entities were much more likely to claim full priority than are small or micro entities.”

    One reason for this, and also a reason why the findings are probably skewed, is because many large entities rushed to get a provisional application on file prior to the AIA deadline. Then post AIA, the large entity filed two nonprovisional applications: one nonprovisional that did not add any new matter and claimed priority to the provisional application in order to preserve the pre-AIA status of the subject matter of the provisional, and another nonprovisional application containing new matter that either still claimed priority back to the provisional or did not claim priority at all. It seems micro entities would not want to eat the additional cost of this approach just to try to keep a pre-AIA status for some subject matter.

    I would also venture to say that new matter between provisionals and nonprovisionals will probably occur more frequently under the AIA as many large entities are rushing to get concepts on file while in the early stages of development before they are refined into their commercial embodiments.

  7. Pre-AIA provisionals were trap for the very cohort on whose behalf provisionals were ostensibly implemented for, the unwary lay inventor. Invariably lay provisionals lack important subject matter. The only way to ensure that the utility claims will be accorded the benefit of the provisional filing date was to write them and file them with the provisional, along with a supporting disclosure. Other than saving peanuts on a filing fee, this was worthless.

    Post-AIA provisionals in the “gap” add a spicy new bonus: the imposed opportunity to make yet another statement under penalty of perjury under an often uncertain and complex circumstance. Now, for my part I love this, because I think if everyone went through life under penalty of perjury for everything they did or said there would be a lot less mischief. Me and Cotton Mather. Homies. Unfortunately, not everyone is up to our lofty standards.

    1. Astute observations, Tourbillion. Dealing with the impact of Section 3(n)1 of the AIA (Abominable Inane Act) with respect to pre-AIA provisionals isn’t for the “faint of heart” (or the amateur).

    2. provisionals were ostensibly implemented for … the unwary lay inventor.

      I’d never heard this version of history before (can anybody confirm). I understood that the provisionals were introduced as domestic equivalents to the foreign applications which US applicants were allowed to claim priority to within 12 months of filing.

      Also, it wasn’t only lay inventors who misunderstood provisional filings (and most international patent prosecution rules) for most of the first decade of the 21st century. Provisional apps remained strange territory to a lot of professionals as well.

      Other than saving peanuts on a filing fee, this was worthless.

      Those peanuts add up if you are filing a lot of provisionals. There was and still is value in having an imperfect stake in the ground if one is concerned about bar dates and/or invention by others that would leave you with nothing.

  8. Dennis: One question that I’ve had for a while is whether patentees ordinarily add new matter when filing a non-provisional application that follows a provisional priority document.

    It happens quite often and, depending on the client’s behavior patterns and needs, it happens “ordinarily”. In a typical chem/bio case, for instance, a valuable invention may be ripe for filing at Day 1. Subsequently, additional supporting data may be obtained and put into the application. That data may not only provide additional support for an earlier presented broad claim (both enabling support and, under the present paradigm, support for non-obviousness if there are unexpected results) but it may also provide written description support for additional, narrower claims.

    In Europe it is different. Nobody is interested in whether a declaration of priority stands up or not, till there is art in the interval between the actual filing date and the declared priority date. But then it is of decisive importance and so the examination of priority is painstaking. Will it be the same at the USPTO?

    It’s always been that way at the USPTO, MD. Whether the Examiner spots the issue or not is a different issue but I’ve seen plenty of file wrappers where the patentee wishes to make an amendment to overcome some art and is prevented from doing so because the Examiner looked at the priority document and found that it lacked the necessary support (either enabling support or written description support).

    1. Fascinating. From the replies thus far, I gather that nobody”gets it” yet. Not Dennis, not Malcolm, not anon. Interference counts. Writing claims in. First to Invent. Date of conception. Diligence. All out the window, OK.

      AIA is “First to File”. That is to say, first to FILE in respect of the SAME invention. The Paris Convention has been regulating First to File priority competitions amongst inventors of the “same invention” since 1880-something. Take it from me, when another party filed for the “same invention”, in the interval between your instant filing and your priority filing, it matters, really seriously, EXACTLY what invention is the subject of your earlier filing.

      That is to say, your provisional.

      THIS is what is on the Dennis mind, I suspect.

      1. LOL – given your track record, and how everybody else doesn’t ‘get it,’ I would say that your suspicions are WAY off.

      2. From the replies thus far, I gather that nobody”gets it” yet.

        MD, there’s a big difference between the ideal world where every invention disclosure comes fully supported with all the necessary data and definitions a month before it needs to be filed, and the actual world where you get a corrupt PowerPoint file on a bar date that you first learned about it in an email accompanying the file.

        The attorneys almost always “get it.” The CEO types who insist on X number of patents filed per month, regardless of what’s actually patent-worthy or patentable? A lot of them will never “get it.” In part, that’s because they don’t need to “get it” in order to keep their fancy vacation home. They just need to talk a good talk on the golf course until it comes time to fail at running another company.

        1. “They just need to talk a good talk on the golf course until it comes time to fail at running another company.”

          It’s a skill.

        2. These CEO types who “insist on X number of patents filed per month regardless of what’s actually patent-worthy or patentable”. Why MM do they so “insist”? Presumably there is a good reason. After all, These CEO types are not so dim.

          Perhaps because that’s what works with “investors”, who buy the Shares and thereby keep the share price up?

          If so, it’s not the CEO types who don’t “get it” but, rather, the investors, no?

          As Tony Blair used to urge: education, education, education.

          1. MD Perhaps because that’s what works with “investors”, who buy the Shares and thereby keep the share price up?

            Right. That smokescreen works for a few years at best. Then the legal budget explodes (nobody could have predicted!) and starts to eat the bottom line like a cancer. Then someone asks “What happened? And where all the patents?” And shortly after it’s time to bail out with a big wad of cash and off to the next super adventure. Rinse. Recycle. Repeat.

            In politics, there’s a phrase for this sort of pattern: “falling upwards.”

    2. Malcolm, thanks for throwing light on what “supported” means. But it does beg another question. Sorry. Can you show me where it is decreed in the law of the USA that a declaration of priority is not “valid” unless the priority document contains not only a “written description” but also an enabling disclosure of the subject matter of the claim under consideration. anon tells us (twice now) that the answer for anybody who cares to look, silly billies, is all in the “oath” provisions of 35 USC 115, but I don’t see it there.

      Paris requires the priority document to be an application for protection of the “same” invention but does not require either a written description to US standard or an enabling disclosure.

      I can imagine Applicant stress ahead, trying to reconcile the AIA with the Paris Convention.

      It was all easier when the USA had First to Invent. Now, with First to File, the devil is all in the new detail.

      1. Paris… does not require either a written description to US standard or an enabling disclosure.

        Um, sure, goody for Paris. In case you have not opened your eyes yet though MaxDrei, Paris is not US law.

        1. I know what the Paris Convention requires. Stating it is intended to bring it home to readers that “support” is not acte claire or so self-evident as to need no definition or explanation. I’m trying here to flush out whether US law requires the same as Paris or different and, if different, different in what respects.

          To repeat, I’m asking everybody here to say more precisely what US law requires, in order to recognise a priority declaration as “valid”. In First to File, the issue is often key to resolving filing priority contests which, believe me, happen very often in First to File country.

          So far, MM has told me his notion of what “support” implies but not where he gets that notion from. I have to tell you, I’m disappointed in you all. It can’t be that difficult, to answer my question, can it?

          1. “I> I’m disappointed in you all. It can’t be that difficult, to answer my question, can it?”

            LOL – disappointment right back at you, with your eyes closed and searching for nails when another fastening device answers your actual question.

            You are doing that horse-dying-of-thirst-right-in-front-of-the-well thing again.

            (disappointed – but not surprised)

  9. Dennis tells me that Applicant has to swear that there is “support” in the priority document, while anon tells us that

    “any post-AIA transition date filing requires the applicant to swear under penalty that the priority right they are requesting is in fact a valid request”.

    Can somebody point me to the relevant words of the statute or of the official rules? For the time being, I’m not clear what is entailed by “support” or what makes a declaration of priority “valid”.

    In Europe it is different. Nobody is interested in whether a declaration of priority stands up or not, till there is art in the interval between the actual filing date and the declared priority date. But then it is of decisive importance and so the examination of priority is painstaking. Will it be the same at the USPTO?

    1. MaxDrei,

      See (at least):
      35 U.S. Code § 115 and
      35 U.S. Code § 25 (which itself references 18 U.S. Code § 1001

      1. Nowhere in here can I find support for the following:

        Dennis tells me that Applicant has to swear that there is “support” in the priority document, while anon tells us that

        “any post-AIA transition date filing requires the applicant to swear under penalty that the priority right they are requesting is in fact a valid request”.

        Anyone know the USC or CFR sections that directly support the statements above?

          1. So basically

            “(1) the application was made or was authorized to be made by the affiant or declarant; and

            (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application”

            =

            swearing that there is “support” in the priority document for the claims in the subsequently filed utility application?

            I’m trying to understand the link between the priority document and the claims in the utility application, and the requirement to swear there’s support for the claims in the provisional, and to me the declaration’s language does not support the link or the swearing requirement.

            Is there any other document that provides this link or the swearing requirement?

  10. Dennis, I don’t understand your point about being abandoned without having a claim for priority. All provisional applications are abandoned. Furthermore, there is no need for codependency to claim priority to provisional. In fact, one might formally abandon a provisional and still claim priority to it later provided the priority claim is made within one year.

    I don’t know if you knew this, even though I might not be relevant to your research.

    1. Ned – I am generally interested understanding the extent that provisional applications are well drafted legal documents as opposed to being a sloppy disclosure quickly thrown together. I can’t directly figure out that answer for provisional applications that have expired without a subsequent priority claim because those applications are kept secret from the public. I suspect (but do not know) that one reason that those particular applications are not used as priority documents is that there were poorly drafted.

      1. Dennis, I have never heard, let alone witnessed anybody not claiming a priority to a provisional application on the basis that it was poorly drafted. It is good for what it discloses and it might support some claims even if it may not support others. One never knows in advance, so even if one had a legal opinion that the claims in the non-provisional were not supported by the provisional, out of matter of caution every competent patent attorney that I’m aware of would claim priority.

        The explanation therefore must lie in the fact that no non-provisional was ever filed. This comports with my experience having been patent counsel of a large corporation. When we received a disclosure, we always filed a provisional application on it because we had patent committees that took their time in deciding whether to pursue patenting invention. Many times this decision was negative. Thus fully two thirds of all the provisional applications we may have filed may not have resulted in non-provisional applications due to later decisions by patent committees.

          1. Ned is basically right. No one abandons provisional applications because they were poorly drafted. Provisional applications are cheap to file so often they are filed and then abandoned.

          2. And, Dennis you have to understand the flow. An in-house attorney may have 100’s of disclosures passing by their desk a year. One way to buy time is to file a cheap provisional and then figure out later what to do. Another thing I see a lot is small companies file a provisional and then prune based on what else has come out that year. Often companies make a goal number of filings and budget for that, so they select the best ones to file.

            By the way big corporations do that. They set a goal of the number of filings for the year like 1,000. Then the attorneys and engineers better come up with 1,000 inventions. That is one big thing that has not been part of this debate on patents. That patents have become a way for companies to manage innovation. We have become the technical writers that put inventions into a form that higher layer managers can understand and it gives the higher layer managers a way of managing innovation. You come up with X patents this year in your division. The patent attorney is then often in a position of judging the disclosures as worthy or not for filing.

            In fact, I have never seen a provisional abandoned for poor quality. Because as Ned says it discloses what it discloses and that is better than nothing.

            1. That is one of the great tragedies I see in all this anti rhetoric. I see lots and lots of positive affects of patents. I see that claims that are being invalidated under 101 that can be used to build a special purpose processor.

              Really nutty. This is just like when they deregulated the banks. It was as if there was some manifest destiny that regulation was bad and it must be burnt down by both the left and the right. And, here we are seeing the same thing with patents. But those of us that actual practice with real inventions and real companies see the great carrot and stick that patents provide and see how much power it gives to the individual engineer.

            2. how much power it gives to the individual engineer

              Individual.

              and therein lie the threat to both the Left and the Right.

              Left: Personal property that is not of the state – that threatens ‘the masses’ – personal private property in all its forms is anathema to the commune.

              Right: any property that is not of the Corp’s. Especially property that has the characteristic of exclusivity. Especially property that has the game-changing, disruptive capability of innovation. Big Corp’s power base of size, money, and established market power can be reduced to dust with a mere single patent to someone else.

              These are very real forces in a very real world.

              An intellectually honest discussion will not attempt to hide these or kick dust over them.

            3. I will politely disagree with you NWPA on your post at 2.1.1.2.2.3 for a couple of reasons.

              No one particularly likes to disclose their stuff and it is human nature to disclose as little ad hope for as much in return. Thus, that aspect is not germane to the conversation. Also, Big Corp loves the disclosure that others make (if they can get away without paying any price for using that disclosure).

              Importantly, that second aspect is why the patent laws are (and have been) under attack in seeking to diminish the strength of patents in a number of ways.

              Forced publication prior to grant makes the Quo available to all immediately prior to any Quid being granted. Gossamer and fragile rights are offered up as a token gesture.

              Uncertainty of ability to enforce rights works to Big Corp’s latent advantage on all of the other power tools at its disposal (included in this category is the new submarine of Prior User Rights – not even visible until a granted patent is sought to be enforced).

              The ‘tender trap’ of the “maintained” shield of publication that does not provide any actual shield for obvious variants that will destroy the applicant if he dallies at all between publication and filing. The Office has (correctly, mind you given the soliloquy in Congress) taken the stand that an obvious variant filed on a published but not yet filed invention will destroy the ability for both parties to obtain patent coverage for either item. Guess who wins in that showdown (hint, just like the “Troll” boogeyman, the main winner is not the public).

      2. generally interested understanding the extent that provisional applications are well drafted legal documents as opposed to being a sloppy disclosure quickly thrown together.

        I cannot applaud loudly enough that being well drafted is the ‘proper’ goal.

        That being said, I fully understand that valid business reasons exist for doing otherwise.

        I would further posit that these valid reasons are actually amplified with the passage of the AIA.

        (unintended consequences – even if the likes of Ron Katznelson loudly warned of these consequences)

    2. Furthermore, there is no need for codependency to claim priority to provisional.

      ?

      one might formally abandon a provisional and still claim priority to it later provided the priority claim is made within one year.

      ?? – do you have a cite for this?

        1. Arguably not Reed, as the Paris Convention is not law in the US (treaties are not self-enacting, but require law passed by Congress in this area.

          Many thanks though for the attachment.

          1. The rest of the argument goes through 35 USC 119(e), 35 USC 363, PCT Article 11, and PCT Article 8, which invokes Paris Convention Article 4.

            The provisional application was established to “look like” a foreign priority document, to give US inventors the extra priority year that inventors abroad had enjoyed, in exchange for changing the patent term provisions from 17-years from issue to 20-years from filing.

            1. Reed,

              The particular point to address (at least in my mind) is the lack of “live” link that Ned references.

              A straight out abandonment with no live intermediate link simply cannot serve to establish a priority date for a later filed application.

              What you may be looking at is a PCT application filed while a provisional is still alive, and then abandoning the provisional.

              But this is just a sleight of hand (the PCT filing will open the provisional to inspection, and in a sense maintains the provisional even though that provisional is expressly abandoned).

              In contrast, I am looking for some straight up (no PCT bridge) support for the plain statement of abandoning a provisional and later claiming priority to it if your later claim is within a year of when that (affirmatively and actually abandoned) provisional would have gone abandoned on its own accord.

              That’s why I asked Ned for a citation.

            2. Noted. For the domestic case, look at Ned’s response below. Co-pendency is a creature of 35 USC 120; the term does not appear in 35 USC 119.

            3. (sigh) and see my reply to Ned.

              There seems to be a little trouble understanding the basic concept of “abandoned.”

              We are not talking about the abandonment at the statutory term of time, but an affirmative action taken by the patent applicant.

              You need more than to just say “it’s not discussed at this section.”

            4. It is notable that there used to be a co-pendency requirement in 35 USC 119(e)(2), but that requirement was removed by amendment in Public Law 106-113. Under customary canons of statutory interpretation, this would signal Congress’ clear intent that co-pendency is not required.

              Also, while not having the force of law, MPEP 201.11 recognizes only failure to pay the provisional filing fee as barring a claim of benefit of a non-co-pending provisional.

            5. The issue appears to be conflation of the meaning and effect of “abandonment” of a provisional application. Abandoning an application certainly affects statutory provisions requiring co-pendency, but it is not clear that there are any other effects under the law.

              Because provisional applications are simply priority documents (akin to other Sec. 119 foreign priority documents, which still have effect after abandonment) and not actual prosecutable applications, there appears to be little statutory effect to their abandonment after the amendment of Sec. 119(e)(2) to require co-pendency. There are no other rights that they provide besides providing a filing date, which is governed by the terms of 119(e), which does not require co-pendency.

              If you are aware of any other statutory effects that abandonment of a provisional might have, please cite the statute.

            6. That should have been “amendment of Sec. 119(e)(2) to eliminate the requirement for co-pendency.” Please excuse my error.

            7. Reed,

              You have used the word conflation, but it appears that you do not understand what that word means.

              There is no conflation when the pure definition of the word forestalls any return or claim to that which was abandoned. One does not need a rule of law to make water wet or the sky blue.

              A quick check on the internet for definitions (with emphasis added):

              – give up completely (a course of action, a practice, or a way of thinking).

              – to leave and never return to (something, someone who needs protection or help).

              – to leave completely and finally; forsake utterly.

              If you have a different definition of the word, please feel free to share it.

            8. Abandoning the right to convert a provisional to a utility application (with loss of one year of patent term) does not appear to affect the ability to use the provisional as a priority document for a subsequent patent application. These are two separate and distinct statutory issues. Why is that so hard for you to comprehend?

              1. Reed. I also don’t understand your comment.

                Lets take a situation where a provisional application was filed April 1 2013 and the applicant took no other action with any patent office until today, April 9, 2014. Are you arguing that the provisional could still be used as a priority filing document for an application filed today?

            9. does not appear

              If you close your eyes you can pretend nothing is out there.

              Words like “appear” and (in the powerpoint) “think” as in “I think so” betray an attempt to close eyes to the plain meaning of a particular and key word.

              You ask me why I cannot comprehend something while you refuse to comprehend the plain meaning of the word.

              I wonder if you see the irony in that.

              Apparently, it is you that is somehow stuck on conflating things, while ignoring a basic concept.

              As I asked, please supply a definition of the word “abandon” that somehow preserves the ability to come back to, to return to, that somehow is not a complete and final revocation of, the thing being, well, abandoned.

            10. Reed,

              Not to pick nits (OK, this is picking a nit)…

              convert a provisional to a utility application” betrays a subtle misstatement.

              There are two ways to gain the priority date of a provisional. Conversion is one of those ways. But conversion is a separate act from straight-up claiming priority.

              This is a nit because both ways are forestalled by abandonment, so the distinction, while real, is not material to our discussion.

            11. Dennis: Lets take a situation where a provisional application was filed April 1 2013 and the applicant took no other action with any patent office until today, April 9, 2014. Are you arguing that the provisional could still be used as a priority filing document for an application filed today?

              I think Reed is trying to make a distinction between express abandonment of a provisional, and expiry of the provisional. He’s saying that abandonment doesn’t affect your right to claim priority in a regular within a year. He’s not saying that you can claim priority after a year has passed.

              I don’t like calling year-old provisionals “abandoned” either, whether or not priority is claimed to them. It tends to confuse the issues. They have a one-year term, and after that they’re expired.

            12. Exactly right. I wasn’t talking about a priority claim after one year, but merely whether expressly abandoning the provisional could prevent such a claim within the year. Sorry for not being explicit.

            13. Reed,

              I got your point but still wonder whether you got mine.

              To show me that you understand the plain meaning of the term (and all that such meaning entails), please provide your definition that allows you to do what you claim you can do.

            14. Reed,

              Formal abandonment prior to filing a second, perhaps broader provisional, is required if the first provisional is going to be outside the convention year when you file your non provisional.

              Paris Convention 101.

            1. As I pointed out Ned, the Paris Convention is not a law, but a treaty, and one that does not self-enact at that.

              You might want to check out the extra link provided by Prof. Crouch at 2.2.1.1.1.

            2. You might be right about US law. But it is followed by everyone else. Thus if there is an application with rights outstanding more than a year prior to your application claiming Paris Convention priority rights, your Paris Convention priority right claim is improper. You better bet that outside the US this is enforced.

              Now, just how do you avoid this if you have two priority applications disclosing the invention, one outside the year?

              Now think. Anon. Think.

            3. You might be right about US law. But it is followed by everyone else

              Ned – are you (once again) trying to import foreign law into US law?

              I busted you doing this with Canadian law.
              I busted you doing this with EP law.

              Please stop trying such nonsense.

              Keep your focus on what I am actually addressing.

            4. anon, assume you want to comply with the Paris Convention which, as Armitage noted, is actually statutory law in Europe and elsewhere. Let us assume that you have two provisionals, one outside the convention year and one inside. Both disclose invention A. The Paris convention would not permit you to claim priority to the second unless the first were abandoned prior to the filing of the second and leaving no rights outstanding.

              Now what I suggest to you is that if we interpret US law to prevent the formal abandonment of a provisional application prior to filing of a second without leaving any outstanding rights, we would jeopardize US inventors rights the file in Europe and elsewhere to recognize the Paris convention to the extent that the first provisional application was outside the convention year.

              Correspondingly, therefore, we need to allow the formal abandonment of provisional applications, but we want to do so in a way that does not prejudice our right to file priority claims that such provisional applications if the claim for priority is made within one year. That is all Armitage is saying.

              Now there is no case law on this supporting Armitage’s view. However, since the purpose of allowing a priority claim without codependency is to allow one to comply with the Paris convention in filing outside United States, I would suggest to you that the law should not be read to include an obligation of codependency because that would frustrate the congressional purpose.

            5. which, as Armitage noted, is actually statutory law in Europe and elsewhere

              Great Ned – you are still not paying attention to what I am saying.

              Further, what you are trying to make Armitage say is NOT what he actually said. See my analysis of the link provided by Reed at post 2.3.1.1.1.7.

              Face it Ned – you are simply wrong here.

              Again.

            6. anon, 2.3.1.1.1.7 again suggests that an abandoned provision cannot be claimed for priority purposes despite there being no basis in 119 for copedency.

              The shoe is on the other foot, anon. If you are going to contend that if one literally complies with ALL REQUIREMENTS OF THE STATUTE that still there is a non statutory basis for denying the priority claim to an abandon provisional, I would politely suggest to you that you had better have some Supreme Court case law of long vintage to back you up.

              Note, there never has been any requirement in 119, ever, for “copendency” for foreign priority as that is literally impossible. Placing provisional applications in 119 was for a purpose: to make them an internal priority like foreign priority. To be really equivalent, therefor, there cannot be a requirement for copendency.

              But, circling back, you ask us for proof of something that does not exist. We should ask you, anon, to instead prove a requirement that you say exists. Where in the statutes or law is there a requirement for copendency for a 119 priority claim? Where?

            7. The shoe is not on the other foot Ned – I have given a text book definition of a term and it is you that is attempting to create a different meaning for that term.

              The onus remains on you.

            8. No Ned, standard dictionary.

              You are not paying attention.

              I have already invited you to provide a definition that can encompass your meaning.

              You, so far, have not chosen that route.

            9. At 2.2.2.1.1.4 Ned insists on telling us what Armitage said, and not surprisingly insists that it supports his otherwise unsupported (and quite frankly unbelievable) view of what the word “abandoned” means.

              Let’s take a closer look at the actual words used by Armitage in the source provided by Reed.

              Specifically, let’s look at the box diagrams on pages 5 and 6.

              Armitage – Example 1: If P1 is abandoned before filing P2, then the right to claim priority for all the disclosure in P2 and P3 is preserved.

              Armitage – Example 2: If P1 is abandoned before filing P2, then the right to claim priority of P2 is preserved – OUS/PCT filing can be delayed to the end of the [live] P2 Convention year.

              Armitage – Example 3: If P1 is abandoned before filing P2, then the right to claim priority of P2 and P3 is preserved – OUS/PCT filing can be delayed to include P4 during the [live] P2-defined Convention year.

              Nowhere – anywhere is there any notion that the abandoned P1 is salvageable.

              I have already included in my analysis the only possible use of the abandoned P1, serving as a type of reference that no longer matters under the new First Inventor to File AIA system.

              This is simply typical of the dialogue I have with Ned – proving him wrong, but him claiming otherwise, throwing out false and unsustainable insults, and then slinking away without nary a ‘oops’ or ‘sorry.’

              Quite simply, Ned now wants not just a any old court to declare that water is wet and the sky is blue, not only does he want the Supreme Court to declare that water is wet and the sky is blue, but he wants a long line of Supreme Court cases to declare that water is wet and the sky is blue.

              Compared to that, Ned’s task of providing a simple definition for a simple word that allows him to do what he thinks he can do is a walk in the park. Ned should have no trouble at all providing what is asked of him.

              Simple.

              Honest.

              Direct.

              Nevertheless, watch Ned run away.

            10. anon, Armitage was talking about complying with the Paris Convention when P1 was outside the convention year.

              Context, anon, context.

              No where did Armitage ever even raise the question of whether one could claim to an abandoned P1 that was filed within the convention year. That is and way a no brainer. Pun intended.

            11. Ned, I gave you three different examples with three different contexts, none of which portray what you want.

              I have asked you for one single example – or one simple definition, for which you have provide absolutely nothing.

              Context? How shall I look at what you provided – that is, nothing – in context?

              I eagerly await your instructive answer.

            12. Ned,

              I cited several definitions. They came from standard dictionaries (as I told you).

              The names of the dictionaries include Merriam’s and Webster’s.

              As to your noxious comment of “That is quite persuasive” – again bite me as what I have provided is far more than the nothing that you have provided.

              My invitation to you still stands.

              Instead of a smarmy (and unsupportable) comment, I suggest that you try to simply follow my invitation.

    3. Re: “one might formally abandon a provisional and still claim priority to it later provided the priority claim is made within one year”

      I don’t think that is correct. I certainly would not do that if the priority date is important. Actually I can’t think of any reason why one might want to do that.

      1. Actually I can’t think of any reason why one might want to do that.

        Good point.

        The comment by Ned was a bit inane. Although the powerpoint presentation provided by Reed shows some not unsubstantial level of effort in its creation and includes views on abandoned provisionals.

        So now two questions are in front of Ned:
        1) provide some citation to (affirmatively) support his view (absence is not an affirmative support).
        2) provide some credible reason why an express pre-termination date abandonment would even be considered.

        I do hope that Ned does not run away.

        1. As for why to expressly abandon a provisional, this would allow the applicant to file a new application and get a new priority date (and a new 12 months priority period) without waiting for the provisional to expire. If the original provisional isn’t abandoned the applicant is stuck with the original priority date.

          1. Another good point – Almost.

            While there is a risk of sacrificing the delta in time between the first provisional and the second provisional, you do eliminate missing the year-bar date with a new filing.

            With the AIA, I can easily see (for those who can afford the relatively minor filing fees) a continual parade of provisional filings, each filing like a Russian Doll, nesting within itself all prior provisional filings.

            But the only (small) problem with that, is that even doing this does not require any such abandonment. You do not actually have to abandon anything to file a new provisional that carries with it all of the proceeding provisionals.

            All you have to do is keep track of this and simply claim priority to the particular Russian Doll that meets your maximum time coverage. All other Russion Dolls simply can be left to expire of their own accord – no further action necessary.

            1. Anon is right that express abandonment is not necessary for the sake of the US application, but it would be necessary if you were to try to rely on one of the “Russian Dolls” as a priority document for a filing in another country. (See the link provided earlier.) It is necessary for earlier provisionals to be expressly abandoned prior to the filing of the provisional application that you will later choose to use as your “first filed” application.

              This requirement led several companies in the past to routinely abandon their provisionals, so they could file rolling provisionals and have the ability to select which one they would use as their priority document for foreign filings. Think about chemical or pharma companies that are undertaking several batteries of experiments over several years.

              The change to the US law to eliminate the co-pendency requirement for claiming priority to provisionals allowed these companies to use these abandoned provisionals as priority documents for their US applications, as well. Before the law change, they would have to use a series of abandoned foreign filings to accomplish the same thing through 35 USC 119.

            2. Thanks Reed – apparently there is some confusion being generated in the discussion with some people moving the goalposts to non-US patent law.

              It should be noted that I have been discussing US patent law.

            3. The change to the US law to eliminate the co-pendency requirement for claiming priority to provisionals allowed these companies to use these abandoned provisionals as priority documents for their US applications, as well

              Still wrong.

              Reed, still waiting for the very basic first step of your view – supplying a definition of ‘abandon’ that allows you to act as if ‘abandon’ had some other meaning that it does.

            4. Reed,

              Do you have a particular point in that 51 page document that you wish to draw particular attention too?

              I do see the naked assertion on page two, and typically Armitage does a decent job of making sure that he is on point. But I think that you might be misunderstanding what Armitage is saying.

              In particular, you might be reading the headline and missing what Armitage is actually saying. See pages 3-4 which clarifies that it is the second provisional and not the first that serves as an ongoing basis for priority. The abandoned item is stricken COMPLETELY and the second provisional becomes the first – not the second provisional obtains the date of the first.

              In fact on page 4 Armitage notes the LACK of the treaty to be in US law.

              You also seem to accept as gospel Armitage’s mere advice to avoid jeopardizing any second provisional. His mere advice is not compelling – and in no way indicates that the abandoned (true) first provisional survives in any meaningful way.

              Note closely what the graphs on pages 5-6 indicate – note in particular that in none of these is claiming the right of priority to the abandoned (true) provisional 1 is being stated as possible.

              Note further on page 7 the use of ‘constructive reduction to practice’ – an artifact of first to invent that no longer has any meaning. Under the pre-AIA regime, this may have been of limited value (but note the extensive comments on how delicate the ‘abandonment’ would have needed to have been made).

              Notwithstanding these criticisms, I thank you for providing an excellent link.

            5. Abstraction at 2.3.1.1.1.1 – my comment at 2.3.1.1.1.3 needs to be kept in mind with my comment at 2.3.1.1.1.4.

              To the extent that your comment is geared to foreign patent protection, I agree with you that the inner most Russian Doll should be expressly abandoned in order to preserve foreign law protection.

              This still does not change the contention from Ned that an abandoned provisional application can be somehow salvaged and used as a priority date.

              Ned’s ignorance is aggravated by his arrogance. The only thing he manages to do by attempting to place himself higher is to increase the distance of his fall.

          2. anon, why do you have to prove to us time and again that you have not legal education, let alone an education in patent law. What I and others have been talking about here is known to any real practitioner — otherwise they are going to commit legal malpractice in representing clients.

            BTW, Armitage was heavily involved in drafting the 1999 AIPA, as he was in earlier acts and with the most recent AIA. He is more of an authority on the intent an purpose of these acts that Rich ever was with respect to the ’52 Act that was largely the work of Frederico of the USPTO.

            1. Ned,

              With all due respect: bite me.

              Once again it is you that is shown not to understand the law, while you seek to wrongly negate my correct view.

              Try to actually read what Armitage wrote. See my post at 2.3.1.1.1.7.

        2. The posts below have it essentially correct.

          Paris Convention 101.

          One must file and claim priority to the FIRST application filed disclosing the invention. In order that a provisional that will be outside the convention year not be FIRST, the Convention requires that this application be abandoned and leave no outstanding rights prior to the filing of a second application disclosing the invention.

          Thus, it is good practice if filing a second provisional to formally abandon the first before filing the second. One can still claim priority to both provided both are within the convention year. If the first filed falls outside the convention year, it can, however, be ignored.

          This does not work if the second provisional is filed and the first is not first formally abandoned.

          It would make our lives a lot simpler if the PTO would cause provisionals to be formally abandoned on filing unless a fee is paid to keep them alive for some unexplained reason.

          1. One can still claim priority to both provided both are within the convention year

            You keep on saying that – you need to actually do more than merely say it.

  11. The AIA first-to-file transition offers an opportunity to shed some light on industry practice in this area.

    More than that as any post-AIA transition date filing requires the applicant to swear under penalty that the priority right they are requesting is in fact a valid request.

    Making this statement without ascertaining the validity is fraud on the Office.

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