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(Message started by: inventorX on Apr 19th, 2007, 6:46pm)

Title: A preliminary provisional filing?
Post by inventorX on Apr 19th, 2007, 6:46pm
Hi, All,

I want to get your opinion on this.  I want to get a provisional filing, just to get a prior date for the record before I invalidate the regular filing. I spoke with an attorney and he indicated that if I am really in a hurry, he can file a preliminary provisional filing with little attorney input. Basically he will take my manuscript and file it as is, if I understood correctly. My question is how good such a filing is and is there any negative impact on my regular filing down the road. I would imagine that we will have to abandon such a filing in a formal filing, is not? Because it is so different from what a regular filing should be. Can I still get the date for it?  Thanks for your help.

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Title: Re: A preliminary provisional filing?
Post by JimIvey on Apr 19th, 2007, 9:28pm
Unless your manuscript is adequate as a non-provisional patent application as it is, the strategy suggested by the attorney would not likely provide an effective priority date.  To provide an effective priority date, your provisional application must meet exactly the same legal requirements that a non-provisional application must meet -- absolutely no less.

Regards.

Title: Re: A preliminary provisional filing?
Post by inventorX on Apr 19th, 2007, 9:43pm
Thanks! You are really helpful.

Title: Re: A preliminary provisional filing?
Post by inventorX on Apr 20th, 2007, 12:16am
Does the term "nothing more or less" that you referred to mean that the provisional filing has to be exactly as the non-provisional filing in wording or there are some room for maneuver, but the meaning has to be kept same? ???

Title: Re: A preliminary provisional filing?
Post by inventorX on Apr 20th, 2007, 12:24am
Could you explain in more detail what are the "legal requirements" for a none-provisional filing?  just follow the style used for every regular patent?  

Someone mentioned that no claim should be writtern at this point as I myself may not know every aspect of the potential application for my invention at this point. But would that constitute a "less" for provisional filing in comparison to the non-provisional filing?

Thank you very much!

Title: Re: A preliminary provisional filing?
Post by Vlad_Loyola on Apr 20th, 2007, 2:34am
Provisional must have specification and drawings that later will create basis for your claims and whatever you will donate to public (if not claimed); therefore, you have to be very carefully on what you say in your specification / drawings - it should on one hand be sufficient enought to enable all of your future claims, but at the same time not too disclose too much

Title: Re: A preliminary provisional filing?
Post by Bill Richards on Apr 20th, 2007, 5:49am
To expand upon Vlad's post and to address some of X's specific questions, I offer the following:
The PPA does not have to be in the same format and word-for-word what an NPA would be. It just must, as Jim points out, meet all the requirements of an NPA; enablement, best mode, that the inventor has actually invented what he claims to have invented, etc. A PPA need not have drawings, formal or informal. But, if drawings are "necessary for the understanding of the subject matter", then something must be included. Photographs will work, but they need to be clear and meet all the requirements. For example, I was once handed a PPA that had been filed with photographs. A bar date had already passed and the PPA filing date was needed. Unfortunately, the photographs did not show the point of novelty and no patent was obtained.
On another point, not everyone agrees that one should not disclose as much as possible. Particularly if one plans to file on-going applications (the proposed rules on continuations notwithstanding), a broad disclosure may be very helpful. In addition, a broad disclosure (and I've seen this happen many times) can act as a defensive publication to keep competitors from getting patents in the same area.
Bottom line, there are many factors to consider.

Title: Re: A preliminary provisional filing?
Post by JimIvey on Apr 20th, 2007, 10:25am
The "legal requirements" are set forth in the first paragraph of this section (http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_112.htm#usc35s112) of volume 35 of the U.S. Code.


Quote:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Sounds easy enough, doesn't it?  But wait, what exactly is "the invention" that the section refers to?  Is it some amorphous, vague idea of what the inventor thinks the invention is?  Nope.  It's the invention you'll claim in your non-provisional application.  Well, what will those claims be?  You should have some idea so you can decide whether your provisional application meets the requirements quoted above.

There are temptations to take shortcuts in the provisional since its sufficiency is unlikely to be determined by the examiner (much more likely to be fully tested when the patent is later enforced).  However, if you wouldn't take such shortcuts in a non-provisional, you ought to ask yourself what is the legal rationale for accepting such shortcuts.  I can't find any.

Regards.

P.S. Some mistakenly believe that provisional applications are not required to set forth the best mode contemplated by the inventor(s) for practicing the invention.  As you can see above, that belief is wrong.

Title: Re: A preliminary provisional filing?
Post by MrSnuggles on Jun 22nd, 2007, 11:30pm

on 04/20/07 at 02:34:40, Vlad_Loyola wrote:
Provisional must have specification and drawings that later will create basis for your claims and whatever you will donate to public (if not claimed); therefore, you have to be very carefully on what you say in your specification / drawings - it should on one hand be sufficient enought to enable all of your future claims, but at the same time not too disclose too much


Be careful following this advice.  Failure to disclose best mode is grounds to invalidate a patent.  Patents are based, in part, on complete disclosure.  If you want to keep it secret, just rely on trade secret law and misappropriation.  You can't have your cake and eat it too.

Yes, you should be careful about unclaimed subject matter.  However, that is something that you can consider during prosecution or in a continuation or divisional filing once you observe unclaimed subject matter for which you may want protection.

As far as filing the manuscript as a "preliminary provisional filing," I've done very similar filings in my practice.  The attorney will review the submission (e.g., a research paper, manuscript, editorial, user manual, design document, code listing, or whatever) to ensure that sufficient description exists in the document to (1) enable at least one embodiment (2) provide a "best" mode (3) and provide support for expected claims.  Most design docs, research papers, etc., actually do a pretty decent job at explaining at least one "preferred" embodiment.

If the attorney is good, then s/he will also review the document to redact any admissions, remove dates that may indicate RTP or conception, and take out "patent profanity" (words that should be toned down in a patent application, such as "must", "always", "never", etc).

Although it's not required, I will usually draft at least one claim -- even on a "quickie provisional."  Because you can use the claims as self-supporting evidence of enablement, written description support, etc, I like to include them to focus on the expected protectable invention.

Typically, in my experience, a second provisional filing is drafted and submitted ASAP.  The 2nd provisional then is a conventional provisional application with all the bells and whistles.  When you file your non-provisional, do it by the first provisional's date, and claim priority to both provisionals.

Title: Re: A preliminary provisional filing?
Post by biopico on Jun 23rd, 2007, 7:43am

on 04/20/07 at 05:49:09, Bill Richards wrote:
Particularly if one plans to file on-going applications (the proposed rules on continuations notwithstanding), a broad disclosure may be very helpful.  


agreed. but how broad though?  To put this into plain English:  

"Invention is like a woman's skirt: long enough to cover the subject matter is short enough to be interesting."

Title: Re: A preliminary provisional filing?
Post by TataBoxInhibitor on Jun 23rd, 2007, 9:14am
I may be going off on a tangent here, but there has been talk of the provisional application as not being an adequate document in which to claim priority from a later filed PCT application.   Has anyone experienced this situation?

Title: Re: A preliminary provisional filing?
Post by Bill Richards on Jun 24th, 2007, 10:25am
When I was in-house, we did it all the time.  At the end of the PPA year, we filed US and PCT and claimed priority.

Title: Re: A preliminary provisional filing?
Post by JimIvey on Jun 25th, 2007, 3:21pm

on 06/23/07 at 09:14:57, TataBoxInhibitor wrote:
I may be going off on a tangent here, but there has been talk of the provisional application as not being an adequate document in which to claim priority from a later filed PCT application.   Has anyone experienced this situation?

If you mean that the adequacy of the provisional application is insufficient to provide a meaningful priority date, I'm sure it happens all the time, but I have yet to see that adjudicated and I haven't experienced it.

If you mean that countries other than the US won't recognize a provision application as a "prior application" under the Paris Convention and therefore disqualified as a priority document, my understanding is that such was the case originally.  The fix was that the USPTO now allows one to convert a provisional application to a real application.  Accordingly, a provisional application now has some slim chance of becoming a patent and therefore suffices as a "prior application" on which you can claim priority.  Currently, I'm not aware of any jurisdiction that doesn't accept a provisional application as a legitimate priority document.

Regards.

Title: Re: A preliminary provisional filing?
Post by Isaac on Jun 25th, 2007, 4:10pm

on 06/23/07 at 09:14:57, TataBoxInhibitor wrote:
I may be going off on a tangent here, but there has been talk of the provisional application as not being an adequate document in which to claim priority from a later filed PCT application. Has anyone experienced this situation?


I've been told that a provisional without claims might not be adequate, but I don't have any first hand experience of such.

Title: Re: A preliminary provisional filing?
Post by biopico on Jun 25th, 2007, 7:01pm
Please check the following:

http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1828.htm#sect1828

Title: Re: A preliminary provisional filing?
Post by TataBoxInhibitor on Jun 25th, 2007, 10:10pm

on 06/25/07 at 15:21:01, JimIvey wrote:
If you mean that the adequacy of the provisional application is insufficient to provide a meaningful priority date, I'm sure it happens all the time, but I have yet to see that adjudicated and I haven't experienced it.


Yes.  I was referring to this.  Regarding Isaac's post...I assume that is why some include a general broad claim in the provisional?

Title: Re: A preliminary provisional filing?
Post by Jp on Dec 10th, 2007, 8:51am
I am offering a question here not to show how much I don't know but to clarify my puzzled curiousity, and to create a review of the subject, that may be beneficial, not only to myself but, to future readers.

My question regarding applying for a patent for a manuscript is;

Does this have an advantage over a copyright or is it advisable to have both licenses applied for ?

Can you give an example of a manuscript subject that would be purposeful in the patent protection advantage context ?


Title: Re: A preliminary provisional filing?
Post by CriterionD on Dec 10th, 2007, 12:52pm

on 12/10/07 at 08:51:06, Jp wrote:
My question regarding applying for a patent for a manuscript is;

Does this have an advantage over a copyright or is it advisable to have both licenses applied for ?


Depends...clarification is needed to give a definite answer.

Copyright and Patent law protect different things. Patents protect new and useful (and "non obvious") product/service innovations. In this context, copyright law protects original literary works (and possibly original artwork on the manuscript's cover, but that can be ignored for now).

If your manuscript described a patentable invention, only a patent could protect against others making, using, or selling the invention (but a patent would not protect against someone copying your manuscript). Copyright law - for which protection is generally automatic though registration has useful benefits - would simply protect against others copying your manuscript.




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