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[oddtimeflux]

Would it be wise to file a provisional, and then a PCT, so that I postpone the national phase by 18 months and therefore benefit from the first-to-file amendment, or am I not understanding it correctly? Also, what will be the fate of provisional applications in light of the changes in grace period?

[NJ Patent1]

Oddtimeflux:  Q1:  112(d)(2) in sec. 3 of the Act, as I read it, leaves references to 35 USC 119, 120, and 365 intact.  Your effective filing date in the United States for 102 would be the filing date of the PCT.  You’d beat the 18 month effective date of the Act.  The date of the provisional would still be available for a regular US utility claiming the benefit of the provisional date and filed w/in a year of the provisional.  Subsection (n) of sec. 3 of the Act (“Effective Date”), as I read it, says that the provisions apply to apps and patents issuing thereon having EFD on or after the 18 month effective date.  This is consistent with (n)(2) preserving interferences for apps having effective filing date before the effective date if the Act. 
Q2:  What’s the big deal with provisionals?  ‘Cuz the client thinks they are cheap and really effective?  What do they protect?  What would be in your PCT?  New matter?  I file 'em, only after resisting with the client.

[oddtimeflux]

Thanks NJ.

Just to be clear - does this mean that I can now file a provisional, and then within 12 months file a PCT, and then within 18 months file a utility in the US claiming priority for the provisional date? Would that be the case also in a year or two from now?

[NJ Patent1]

oddtime:  However you do it, you need to have an “effective filing date” before 18 months of the date of enactment (“the effective date of this section”).  This is my understanding.  But to convince yourself, check the sections of the act I mentioned, especially “(n) Effective Date.”
Any application (PCT or US regular utility) claiming the benefit of the filing date of the provisional would of course have to be filed w/in one year of the provisional. 

[oddtimeflux]

I think I might be failing in understanding the first-to-file section of the act. Does it limit the scope of prior art that can be used against claims to only what has already been filed for a patent, or is it only the recognition that if someone secretly invented an identical or similar thing then that someone is not entitled to the patent unless he/she filed for that invention?

[JimIvey]

Here's an important thing to consider.

Delay in filing under the current patent system hurts your application.

Delay in filing under the upcoming patent system hurts your application.

Whichever system you think favors your situation, delay in filing your application will hurt your application.

So, I doubt very much that a clever procedural twist designed to delay filing your application will benefit you.

Regards.

[oddtimeflux]

Got it. Thanks.

[NJ Patent1]

I might amend JimIveys post. Delay in filing in obtaining an EFD ... Subtle difference.  But potentially different effects under "old" and "new" bcs. EFD has different meaning and effect.  But I concur in the spirit of the post.  Get a date.  Although I do stand by my previous posts in this thread.