by Dennis Crouch
Provisional patent applications continue to remain popular, and the number of annual filings continue to rise at a moderate pace. In FY2011, more than 150,000 provisional applications were filed. That number is roughly the same as the number of original non-provisional applications filed by US entities during the same period. (Here, “original” means that the filing was not based on a prior non-provisional application or a foreign patent application). Of recent US patents issued that do not claim international priority, more than 1/3 claim priority to a provisional application filing. (This excludes applications claiming foreign & PCT priority).
Despite the rise in provisionals they have many pitfalls.
The Benefits of Provisional Applications: Slip, Sliding Away
link to patentplanetblog.blogspot.com
Well maybe I wasn’t born in a barn, but I still know how to choke the chicken.
wazup with PP?
Has AIA been repealed yet? No? Guess I’ll see you guys in a couple of years…
Agreed.
However, I most often encounter the issue when a patent or application is asserted as prior art, but as of its provisional filing date. If that patent or application is not entitled to the benefit of that filing date, it is not prior art as of that date.
Whether provisionals fully support claims in regular applications is going to become a more common issue.
It’s already very common.
Whether provisionals fully support claims in regular applications is going to become a more common issue.
Paul, now, if one subtracts about 4-5 years minimum to account for the inevitable reexaminations, the effective life of a US patent is shorter.
We really need some sort of damages tolling statute to account for reexaminations. During a reexamination, the public is unwilling to license. Without a tolling agreement in place, the PO is forced to sue just to preserve damages.
Why force patent disputes into the courts this way? We should automatically toll damages while a patent is effectively unenforceable.
I think we have seen this line of thought before.
A next question may be, how do you determine which provisionals expire without any subsequent application claiming priority to them since by law these are kept confidential…
…and the answer was given by looking at the numbers of those provisional applications which are made public (although, this really does not tell you precisely how many provisionals were filed, but rather only the highest provisional number that was filed and that had a subsequent application claim priority, as long as that subsequent application itself did not have a “do not publish” request attached, in which case, oops, again, one cannot tell…
“I’m working on a report on the % of provisional applications that are abandoned…”
I assume you mean provisional applications that expire without any subsequent application claiming priority to them.
the sufficiency of provisional applications. These statistics are a little difficult to obtain
Good luck with that one. 😉
Thanks Paul. I’m working on a report on the % of provisional applications that are abandoned and a separate report; who tends to use provisional applications; and also the sufficiency of provisional applications. These statistics are a little difficult to obtain.
DC
“Some patent attorneys say that many individual inventors file provisionals but the fail to file formal applications, but that does not seem to be statistically significant from these statistics? ”
Does not seem?
I would say, rather, that your supposition is indeterminate from the statistics provided. As the statement of the quantity of the patent set reaching back to a provisional is not associated at all with the raw data of the provisionals being filed.
This also means that about 1/3 of U.S. patents will have a patent term of up to 21 [not 20] years from their [provisional] filing date plus term extensions for PTO delays. A longer patent term than the old 17 years from issue date in many cases I would think?
Some patent attorneys say that many individual inventors file provisionals but the fail to file formal applications, but that does not seem to be statistically significant from these statistics?
I stand corrected. I see it now. Thanks Dennis.
Max, 1/3 is roughly 1/3 of original applications filed by US applicants since only a few non-US applicants use provisional applications and most non-US applicants rely on a foreign priority filing.
Can that be true?
It can, but it isn’t necessarily.
Nothing prevents a foreign applicant from claiming back only to a US provisional. I’ve seen it done on more than one occasion.
Dennis, do you include a PCT national stage entry claiming back only to a US provisional as a “foreign priority” for your purposes?
In other news, not having 112 1st support in the provisional for all your claims in the non-provisional also remains popular.
I’m impressed. More than a third, you write. If around 50% of recently issued patents were going to US domestic applicants, then two out of three of such applns were founded on a pro. Can that be true?
Comments are closed.