I believe the sufficiency of disclosure of a priority document is measured according to the legal standards of the country in which the priority document is filed. If I'm wrong, please clarify this issue for me. If the standard of sufficiency of disclosure for a priority document is less than for a regular application, what is the standard? In particular, is filing merely a title sufficient? I don't think it is.
Mr. Ivey, I think we are saying the same thing, but coming to different conclusions.
Under the obligations set forth by the Paris Convention, the EPO will accept whatever the USPTO accepts in terms of a priority document.
If the USPTO would accept your California driver's license as a priority document, then so must the EPO - if you properly claim priority when filing your application.
But, of course, this is a ridiculous example.
As you pointed out, 37 CFR 1.53 (c) sets forth the filing requirements for a US provisional application:
"Application filing requirements - Provisional application.
The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
(1) A provisional application must also include the cover sheet required by 1.51(c)(1) or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section."http://www.bitlaw.com/source/37cfr/1_125.html
The two important clauses are:
"The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by 1.81(a) are filed in the Patent and Trademark Office."
The first paragraph of 35 USC 112 says:
"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." http://assembler.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000112----000-.html
So if the application must meet the exact same standards regarding sufficiency of disclosure as a regular application - this what Rule 53 suggests - then your opposition to the provisional application based on an insufficiency of disclosure seems to be completely without foundation.
I think we both agree, however, that your basic opposition to provisional patents is well-founded because there is, in practice, a different standard. In most cases a provisional application does not include the lengthy recitations, stilted language, and annoying repititious paragraphs that US attorneys cram into nearly every US application for patent.
The lack of legal "refinement" does not necessarily mean that the original disclosure does not meet the "bare bones" requirement of 35 USC 112, but it may very well limit what can be done during prosecution and may also overly restrict the scope of the claims that are available to the inventor - as you suggest in your previous reply to jkudla.
Fortunately, the second clause seems to anticipate this:
"No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application."
This tells me that I have wide lattitude in what I can do once the provisional is filed. And it also tells me that there is a deep black hole waiting to be filled with judicial interpretations of what all this means.
Ignoring the example of the driver's license and imagining a more realistic situation of a complex technical contribution where the disclosure satisfies "bare bones" sufficiency although it is clearly not in the form of a regular application for patent - what do you do?
Well, priority is both a sword and a shield. Absolute novelty requires a shield in the form of a filing date. Nothing else will do.
What I am suggesting is that if you have a document that meets the absolute minimum standards to be accepted by the USPTO as a priority document - and you have essentially no time before the document is to be made public - and you wish to preserve your rights abroad - then filing a US provisional application may make sense for you.
For the most part, I think we agree that provisional applications are to be avoided, but in these unique - but not at all unusual - circumstances they may have some substantial value.
Mr. Warcok - I did not know that Argentina also allowed a one-year grace period. This is why I participate here - to llearn new things and to be corrected about misconceptions like this. Thank you for your correction.