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   Is this a good reason to file a PPA?
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   Author  Topic: Is this a good reason to file a PPA?  (Read 2046 times)
Timothy Pamatmat
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Is this a good reason to file a PPA?
« on: Oct 21st, 2007, 2:07am »
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About two months ago I thought of a device which I believed would be of interest to a company in the hand tool industry. Two days later, after buying patent it in 24 hours, I filed a provisional patent application and later started pitching various companies. That was over a month ago and after reading Pressman, Landis, and lurking this forum I realize it was a complete waste of money. I could go on as to the inadequacy of my provisional but would rather not. I have recently filed another provisional in the format of a non provisional sans claims, with numerous embodiments and specifications that completely enable and disclosed the device.  
 
An earlier priority date was not my main reason for filing but the following. I am trying to license my device and hope to defer the cost of the non provisional to the licensee. Next, It was a defensive move since by filing with the USPTO it becomes dated prior art that only I can use. If any of the companies I am dealing with attempt to pirate my IP obviousness is going to be a major hurdle for them now. I am not really concerned with an early priority date if I can keep anyone from coming in underneath me.
 
Is this a good reason to file a provisional, to defend and defer cost?
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Isaac
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Re: Is this a good reason to file a PPA?
« Reply #1 on: Oct 21st, 2007, 11:12am »
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Provisional applications don't become prior art until/unless a nonprovisional application claiming priority to the provisional is published.
 
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Isaac
Timothy Pamatmat
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Re: Is this a good reason to file a PPA?
« Reply #2 on: Oct 21st, 2007, 3:36pm »
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I realize this but please let me know if my logic is off base here. I am sure the claim set I had in mind when I drafted the provisional will be different than the patent attorneys when he drafts the non provisional. This could result in the specs being altered to the point that I might lose my priority date. However, the provisional will become prior art with the date it was submitted or are you stating I lose this date along with my priority date? With our imaginary person skilled in the arts now having average creativity as well it seems I have put up an obviousness road block similar to an infringement suit without having to worry about festo or litigation costs.
 
The provisional was intended to fix a quirk in the system relating to foreign applicants but is this not a viable reason to use it as well?
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TataBoxInhibitor
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Re: Is this a good reason to file a PPA?
« Reply #3 on: Oct 21st, 2007, 8:07pm »
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Just becuase the claim set may be different does not mean you will lose your priority date.  It is really about subject matter.   As long as no additional subject matter is disclosed in the non-provisional, you should be able to receive the filing date of the provisional.  However, any new material would receive another date, the date of filing the NPA.
 
Can you clarify what you mean by Festo?  I am not sure I understand.   Are you speaking in terms of changing the claim set and if so, would that operate as a prosecution history estoppel?
 
Regards,
 
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Isaac
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Re: Is this a good reason to file a PPA?
« Reply #4 on: Oct 22nd, 2007, 7:56am »
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on Oct 21st, 2007, 3:36pm, Timothy Pamatmat wrote:
This could result in the specs being altered to the point that I might lose my priority date. However, the provisional will become prior art with the date it was submitted or are you stating I lose this date along with my priority date?

 
My understanding is that provisionals do not have 102(e) dates because they are not published as required in 102(e), while non-provisional applications do have 102(e) dates.    Accordingly, your provisional would become prior art on the date it was made available to the public (generally on or near the date a non-provisional claiming priority to that provisional  is published).
 
As long as your provisional is enabling of its described invention, and your non-provisional discloses everything that your provisional discloses, then the 102(e) date of the non-provisional will be  based on the filing date of the provisional and that date will be attached to included description from the provisional.   That is the prior art effect you are seeking, but the prior art effect comes from the non-provisional and its priority claim rather than coming directly from the provisional.
 
In many (probably most) cases, you can accomplish that effect even if you need to add new material at the filing of the non-provisional and even if the claims in the non-provisional are not enabled by the provisional.   You simply need to make sure all of the provisional material you want as prior art is included in the non-provisional as well.  
 
By way of illustration, if you describe a rhino in the provisional and describe an earthworm but no rhino in the non-provisional, your description of a rhino is not going to be prior art based on the provisional filing date, but rather on the date the provisional is made available to the public.
 
« Last Edit: Oct 22nd, 2007, 8:53am by Isaac » IP Logged

Isaac
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