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[patentdog]

I have an invention that I am getting ready to file a US patent application.  I have offered the invention for sale since September 2010, so I understand that I need to get an application filed before September 2011.  My question follows:  Does filing a provisional application in July 2011 preserve my rights, so that I can take my time, and file a utility application by June 2012?

I also understand that I have sacrificed most of my international filing rights by offering for sale before having any filing, except in the countries (Canada, Mexico, Australia, Argetina, and Japan, I believe) that have a 12 month grace period like the US.  Does filing a US provisional filing in July 2011 give me until June 2012 to pursue those if I choose, or do I still need to get applications filed in the countries of interest before September 2011 (the 1 year anniversary of offer for sale).

[JimIvey]

Does filing a provisional application in July 2011 preserve my rights, so that I can take my time, and file a utility application by June 2012?

Only if the provisional is written as well as the real application that you would file later.  The law that determines whether an application preserves your rights is exactly the same for provisional and real applications.

I don't see what that gets you.  I'd strongly recommend getting a solid, real application on file before September 2011.

I also understand that I have sacrificed most of my international filing rights by offering for sale before having any filing, except in the countries (Canada, Mexico, Australia, Argetina, and Japan, I believe) that have a 12 month grace period like the US.  Does filing a US provisional filing in July 2011 give me until June 2012 to pursue those if I choose, or do I still need to get applications filed in the countries of interest before September 2011 (the 1 year anniversary of offer for sale).

First, offers for sale don't count in many jurisdictions.  Actual sales do.  I don't know if that matters in your case.

Second, the answer above applies -- provisional applications are measured by the same legal standard as real applications.

Regards.

[patentdog]

Thanks Jim, for helping me understand this. 

I was under the impression that provisional filings can be much easier (and as a result faster  and less expensive to prepare), with the critical feature being that the provisional had to completely teach your invention, but other aspects did not need to be as complete, like prior art searches, examples, and professionally drafted drawings.

With regard to the offer for sale versus actual sales, only a few weeks separate those events in my case, which helps me understand that protection could be valuable.

[JimIvey]

I was under the impression that provisional filings can be much easier (and as a result faster  and less expensive to prepare), with the critical feature being that the provisional had to completely teach your invention, but other aspects did not need to be as complete, like prior art searches, examples, and professionally drafted drawings.

You and a lot of other people.  It's wrong though.

The law setting forth sufficiency of a real application is 35 USC 112, first paragraph.

The law setting forth sufficiency of a provisional application is 35 USC 112, first paragraph.

Exactly the same. 

Note that the thing that the application must support is "the invention", i.e., as claimed.  And, as claimed after any amendments made during prosecution.  So, to know whether an application (provisional or real) is sufficient, you have to have a good idea of what sort of claims you think you'll end up with after examination. 

Provisional applications are dummy foreign priority documents to patch an odd quirk in US patent law that puts foreign applicants at an advantage in certain situations.  That's really the only proper use for them.

Regards.

[patentdog]

Thanks again for the clarification.

So then, if you have a real application that claims an earlier priority date by means of a provisional patent application, is the provisional application is also examined as part of the real application examination?

[JimIvey]

So then, if you have a real application that claims an earlier priority date by means of a provisional patent application, is the provisional application is also examined as part of the real application examination?

When there is prior art for the real application that is not also prior art for the provisional, the provisional application is examined to determine whether any claims in the real application are entitled to the filing date of the provisional application.  Generally, the provisional application is not examined unless and until that situation arises.  And, sometimes it first arises during litigation when the claims can't be fixed.

In other words, the provisional is only examined when it's need, and unfortunately when it's too late to fix any problems.

A lot of people file provisional applications when they can't decide whether to file a legally sufficient application or file nothing at all.  So, they file a legally insufficient application, which is sort of in the middle but has the same legal effect as filing nothing at all.  IMHO, the only valid choices are file a legally sufficient application or nothing at all.

Regards.

[George White]

There is plenty of time between now and Sept. to draft and file a solid non-provisional application. If you came to me with this scenario and a late June or mid July date I might start working on an application with the plan to file a (legally sufficient) provisional by your date and then, after a few weeks went by, look at it with fresh eyes, probably edit for improved readability and clarity, go through two or three rounds of proof-reading, probably have the drawings cleaned up and possibly draft some new claim language before revisiting those in the provisional.

For me, that process both gets you a meaningful filing by your date and an un-rushed application to be actually examined and published.

--George

[patentdog]

OK, I am working on my utility application for this invention.  Of course, during this time we have made improvements on the invention, which have not yet been disclosed or offered for sale.  So here is my new question:

Invention A has been offered for sale (and actually sold) in for the prior 9 months.  Invention B is an improvement on Invention A, and has not yet been offered for sale or disclosed.  Can I include inventions A and B in a US utility application, and so preserve my international filing rights for invention B, knowing that most of my international filing rights for invention A have been sacrificed by the offer for sale?

[JimIvey]

Can I include inventions A and B in a US utility application, and so preserve my international filing rights for invention B, knowing that most of my international filing rights for invention A have been sacrificed by the offer for sale?

The answer depends on the patent law for each of the jurisdictions in which you'd want patent coverage.

For clarity and to make the preservation of foreign rights for invention B less dubious, I'd just keep the inventions separate in separate applications.

Regards.