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(Message started by: stillstudying on Mar 22nd, 2007, 5:32pm)

Title: provis app, adverse term, convers v claim pri'ity?
Post by stillstudying on Mar 22nd, 2007, 5:32pm
Apologies for the mangled thread title.  This 4um givs a vry ltd num of chrs 4 titl.  :-X

Something I've been wondering for a while now -- it bothers me, it keeps me awake at night, my hair is falling out, upset stomach. . . .

The MPEP repeatedly makes a big deal about the "adverse effect on patent term" of converting a provisional patent application into a nonprovisional, as compared to "claiming priority".

Ok, so it's a really good idea to claim priority instead, at least if the extra-up-to-364-days matters.  But what are the adverse effects of NOT converting the provisional application?  Are there any?  If not, then why even offer it as a choice?



Title: Re: provis app, adverse term, convers v claim pri'
Post by Wiscagent on Mar 22nd, 2007, 6:28pm
I don't recall the details, but the option to convert a provisional to a regular application relates to PCT commitments. It is important for treaty reasons that the provisional can mature into a regular application and in due course be granted. For this reason some practitioners recommend that any provisional application be filed with at least one claim; without a claim (arguably) the provisional application can never be granted as a patent, so the priority date would be in question.

Title: Re: provis app, adverse term, convers v claim pri'
Post by JimIvey on Mar 23rd, 2007, 8:07am
Of course, a provisional application is nothing more than a dummy priority document for someone who wants the benefit of relying on foreign priority without actually filing abroad first.  

That's the reason provisionals exist.  At first, the adequacy of US provisional applications as priority documents in other jurisdictions was dubious.  I was warned by a number of my foreign associates that US provisional applications were not effective as priority documents there.  The main hangup was that provisional applications had no chance of ever being a patent, so they weren't really a "patent application."

The fix was to allow conversion of a provisional to a non-provisional, giving a provisional application at least the possibility of becoming a patent some day.  That seemed to satisfy the other members of the Paris Convention.  Now, it's my understanding that US provisional applications are accepted as priority documents throughout the Paris Convention.

Okay, so what about term?

Remember the effect of a provisional application -- in theory, it doesn't alter the length your term at all, just shifts it into the future by up to one year.  In determining whether it is wise to use a provisional application for that purpose, you have to determine where the most value of your patent will be -- soon after issuance or just before it expires.

The way the term is shifted is that (i) the expiration is measured from the date of the non-provisional at the back end and (ii) examination isn't even considered until you file the non-provisional at the front end.  If you stick with your reliance on a provisional, both dates are postponed by the same amount, in theory.

What happens if you convert?  Let's say you've waited one full year and decide to convert rather than file a new non-provisional application.  Your start date for consideration for examination (the date your application enters the queue for examination) is the same as if you filed your non-provisional at the 1-year mark.  But the termination date is now based on filing a year prior.  So, your term is compromised by that 1-year difference.

As an aside and a generalized observation, it seems that it's costly in many respects to drastically change strategy in mid-execution.  That seems to go way beyond IP law, from what I observe.  But IP law is certainly no exception to that generalized observation.


Title: Re: provis app, adverse term, convers v claim pri'
Post by stillstudying on Apr 2nd, 2007, 7:53pm
Thanks!  I didn't have any idea that it was just a workaround for an international treaty issue.

Good to know about the claims issue as well.  The one provisional I filed didn't have any, since it was an academic paper that was about to be published for some telecom conference.

Thanks, folks.  Maybe I'll finally be able to get a decent night's sleep now.  :)

Title: Re: provis app, adverse term, convers v claim pri'
Post by DucThang on Apr 10th, 2007, 10:17pm
In Vietnam, no regulations mentions whether an US provisional application will be considered as a regular application when claiming priority.

However, in practice, the Vietnamese Examiners still consider them as regular applications in term of priority.

Nguyen Duc Thang
Patent Attorney

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