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WALKING THROUGH THE PATENT PROCESS

INTRODUCTION

The United States Constitution and laws passed by Congress provide for the protection of intellectual property through patents, trademarks and copyrights. They also recognize that trade secrets are worthy of protection and preservation. The protection of intellectual property is provided to foster the development of technology, commerce, and the useful arts in the United States.

The four types of intellectual property referred to above are:

1. Patents - Patents are classified in three categories as follows:

A. Letters or Utility Patent

For a new and useful process or method, machine, manufactured article, composition of matter, or any new and useful improvements thereof.

B. Design Patent

For a new, original and ornamental design (appearance) for an article of manufacture.

C. Plant Patent

For distinctive and new varieties of non-tuber propagated, cultivated, asexually reproduced plants.

2. Trademarks - A Trademark is any word, name, symbol or device which is commercially used on the goods to indicate the source or origin of the goods and to distinguish them from the goods of others. Trademark rights may be used to prevent others from using a confusingly similar mark but not to prevent others from making the same goods or from selling them under a non-confusing mark. Similar rights may be acquired in marks used in the sale or advertising of services (Service Marks)

3. Copyrights - Protects literary, dramatic, musical and artistic works of an author, including computer programs, from being copied.

4. Trade secrets - A method, machine, manufactured article or composition of matter that is maintained as a secret.

This booklet is an overview of PATENTS and highlights of the process by which a patent is obtained.

THE PATENT PROCESS

INTRODUCTION

To provide the reader with a general understanding of the patenting process, this outline breaks down the patent process into four phases:

PHASE I

REVIEW OF CONCEPT, KNOWN ART AND

ANY STATUTORY BARS

The first phase of the patenting process is a detailed review of the design including a description of the features of the design and any information concerning similar products of which the inventor and those involved are aware. The Appendix includes a "Checklist for Invention Disclosure" which describes some of the background information that should be reviewed. Drawings and prototypes are helpful. Any facts relating to the items described in 35 USC 102 and 35 USC 103 (See copy in Appendix) should be reviewed and a decision made as to whether any bars to patent protection exist. For example: Has the invention been in public use or on sale in the U. S. more that one (1) year before filing the patent application? (See "Invention Status Checklist" in Appendix).

PHASE II

PATENTABILITY SEARCH AND EVALUATION

The second phase includes conducting a preliminary patentability search. While a search is not necessary to file for patent protection, it is helpful in determining whether a patent application should be filed and the drafting of claims in the application. To conduct such a search, the following steps should be taken:

A. Compile and document the known prior art;

B. Determine the points of novelty of the invention and their advantages over the prior art;

C. Determine the U.S.P.T.O classification of the invention; and

D. Conduct a preliminary patentability search to determine the novelty of the invention;

No assurance can be given that the concept is patentable or that all of the pertinent references will be uncovered by a preliminary patentability search.

Upon completion of the patentability search, the inventor will be forwarded copies of the references for his review. A meeting will then be arranged to discuss the patentability of the concept. A decision may be made as to whether or not to proceed with the filing of a patent application. Some of the factors that enter into this decision are:

A. The known devices already on the market.

B. The results of the patentability search.

C. The commercial importance of the invention.

The patentability of the concept will be dependent on:

1. a review by the United States Patent and Trademark Office (USPTO) of the patent application filed,

2. the prior art cited to the USPTO as a result of the preliminary patentability search or otherwise known, and

3. the prior art uncovered by the United States Patent and Trademark Office as a result of their own independent search.

The U. S. Patent and Trademark Office may find other prior art that is more pertinent than that discovered in the preliminary novelty search. It should be clearly understood that the preliminary search is not conclusive as to the patentability of the subject matter and is not directed to the question of infringement of other patents. Moreover, the ultimate patentability of the concept may be decided by a court of law.

PHASE III

PREPARATION OF PATENT APPLICATION

After a decision is made to seek a patent, the patent attorney will prepare a patent application. From time to time during the preparation of the patent application, particular aspects of the invention may be discussed by the patent attorney and the inventor.

The patent application includes a written description of the invention (specification), defining the best mode of the invention. Drawings of the invention are included and are described in the specification. The drawings must meet certain rules of the USPTO and are generally prepared by a patent draftsman. The patent application includes claims that define the metes and bounds of what the invention covers. The language of the claims is important in defining the breath of the patent. Other documents that may be filed with the application are an Information Disclosure Statement, Assignment of the Patent Application, and Small Entity Status Documentation to minimize government fees.

The U. S. Patent and Trademark Office requires that applicants for a U. S. Patent application make a full and complete disclosure in good faith and with all candor to the Patent Office of any known art including patents, publications or other information considered pertinent by the person filing the statement. This disclosure requirement is more fully described in the "Duty of Disclosure, Candor, and Good Faith". (See copy in Appendix).

It must be understood that changes in the concept, after the drafting of the patent application is commenced, may require modification of the claims and specification. After execution of the patent application by the inventor, the patent application will be filed with the U. S. Patent and Trademark Office.

PHASE IV

THE PATENT NEGOTIATION PROCESS

OR PATENT PROSECUTION

Once the patent application is filed, the application is "prosecuted" before the U. S. Patent and Trademark Office. This process occurs between the applicants attorney and the U. S. Patent and Trademark Office.

The United States Patent Office will inform the applicants attorney of its position with respect to the patentability of the concept in the form of an Office Action, after filing the patent application [approximately nine to eighteen (9 - 18) months depending on their case load]. This Office Action may and probably will cite patents or other prior art in addition to that uncovered in the preliminary patentability search.

Some reasons for rejections by the USPTO are as follows:

A. Non Art Rejections,

1. Non -statutory Subject Matter,

2. Insufficient Structure,

3. Vague and Indefinite,

4. New Matter,

B. Prior Art Rejections, and

C. Informalities in the Application.

In response to the Office Action by the USPTO, an Amendment to the patent application by the Applicant may be filed. In that Amendment, the Applicant may make remarks directed to the arguments for patentability and may revise the specification and claims if necessary. No new matter may be added by the Amendment. Additional Office Actions by the United States Patent and Trademark Office and Amendments by Applicant may occur.

As a result of the "prosecution" before the U. S. Patent and Trademark Office, the Patent Office may or may not allow a patent application to pass to issue and become a patent. If the Patent Office does not allow the patent application, other steps may be taken to obtain a patent.

ANCILLARY MATTERS TO CONSIDER

PATENT MARKING

While the patent application is pending, the marking "Patent Pending" or "Pat. Pend." may be used. These phrases have no legal effect, but only give information that an application for patent has been filed in the U. S. Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

After the Patent is granted, the following notice should be used on the product:

"Patent No. ________".

To recover damages from an infringer, a patentee must give notice of the patent to the infringer. Notice may be given by marking the patentee's products or by letter to the infringer. Damages begin only when notice is given. There are two exceptions to the general rule. Notice need not be given under method claims, or if neither the patentee nor any licensee is manufacturing under the patent.

FOREIGN FILING

Since the rights granted by a United States patent extend throughout the territory of the United States and have no effect in a foreign country, an inventor who wants foreign patent protection must apply for a patent in each of the foreign countries he wants protection in or in a regional patent office. Almost every country has its own patent law.

The laws of foreign countries differ in various respects from the patent law in the United States. In most industrialized foreign countries, publication or disclosure of the invention before the date of the U. S. application will bar the right to a patent.

ASSIGNMENTS OR LICENSING

A patent is personal property and may be sold to others or licensed or mortgaged; it may be bequeathed by a will, and it may pass to the heirs of a deceased patentee. The patent law provides for the transfer or sale of a patent, or of an application for patent, by a written instrument. Such an instrument is referred to as an assignment and may transfer the entire interest in the patent.

The statute also provides for the assignment of a part interest, for example, a half interest, or a fourth interest, etc., in a patent. There may also be a grant which conveys the same character of interest as an assignment but only for a particular specified part of the United States.

ENFORCEMENT OF PATENTS

Infringement of a patent consists in the unauthorized making, using, or selling of the patented invention within the territory of the United States, during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate Federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court to award for damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may allege that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent. There is infringement only if any claim fully describes the whole or any part of the infringing product or method.

Suits for infringement of patents follow the rules of procedure of the Federal Courts. From the decision of a district court, there is an appeal to the Court of Appeals for the Federal Circuit. The Supreme Court may thereafter take the case by writ of certiorari. If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Claims Court. The Government may use any patented invention without the permission of the patentee, but the patentee is entitled to obtain compensation for the use by the Government.

DOCUMENTING THE DEVELOPMENT

A new idea and its development should be fully documented. While not required to obtain a patent, documentation is sometimes needed to obtain or enforce the patent. For example, if there is a question of inventorship, records are needed to establish the true and lawful inventor. The following comments are intended to assist the inventor in making a record of the development of his idea.

Beginning with the conception of an idea, a daily record of all events relative to the development and refining of the idea should be made at the time each event occurs. Each entry in the record should be made concurrently with the event, signed by the inventor, and by at least one witness who understands the event. The following are specific suggestions as to how those records might be kept:

DEVELOPMENT RECORDS

The system of making and keeping development records may be as simple as describing the work done and establishing the entry date. Generally, it is sufficient to make the record on consecutively dated pages of a permanently bound notebook, and have the experimenter date and sign at the end of each experiment.

When a meaningful development is made, the record and also occasional physical embodiments or a sample of the invention should be witnessed by someone who understands what was done and recorded and who will not be an inventor. When an invention record is written, it is difficult to know whether it will later become important in a patent controversy. Frequent confidential progress reports on the work to other qualified personnel should also be made, summarizing the progress made in each project.

PROCEDURES

The following points summarize established procedures in maximizing the value of notebooks in interparty patent disputes.

COMPLETENESS OF DISCLOSURE

Notebook entries must be sufficiently clear, concise, and complete to enable anyone skilled in the art to understand and repeat the experiment performed or work accomplished. The entries should include the observations, calculations, diagrams, plans, sketches, concentrations and proportions of reagents, reaction conditions, apparatus employed. They should briefly summarize the advancements made each particular day. They should also record the structure or chemical used, describe the work in detail, and conclude with a statement of the significance of the work recorded. Most important, they should clearly describe any unusual or unexpected results. For the purpose of clarity, each daily entry should state specifically the subject matter under investigation, e.g. Plastic Composition for a Bicycle Pedal, project number (if any), date, and reference to the last previous entry on the subject.

EXECUTION BY INVENTOR AND CORROBORATION BY WITNESSES

Each person who maintains a record book should sign and date his entries at the end of each work day. If the invention was conceived at a date prior to the first notebook entry, the inventor should state the date of conception and give a complete description of the idea in the first entry. Under no circumstances should he back-date the record to create the impression that the entry was made at an earlier time. In case of important entries, the notebook signatures should be notarized.

When a meaningful development is made, the entry should be initialed or countersigned by at least one and preferably two corroborating witness, i.e., someone who observed the recorded experiment or test and who is not a inventor. If no meaningful developments are made during any particular week, the notebook entries for that week should be witnessed by at least two persons not directly involved in the work performed. The signing of notebook entries by corroborating witnesses is particularly important in the case of a successful test of the invention. The corroborating witnesses' signatures and observations are important since the inventor's records and signature are more credible if corroborated.

The witnesses should satisfy themselves that there are no blank spaces on the pages witnessed, that all tables and data are complete, and that the entry witnessed is a full and faithful record of the work observed.

Corrections and interlineations on the witnessed page should be initialled and dated by the inventor and witnesses. If corrections or interlineations are made after the notebook has been witnessed, they should be signed and dated both by the entrant and the witnesses to the original entry. A witness must fully understand the subject matter observed before he signs and dates the entry. To ensure that the corroborating witness' testimony will be adequate to prove reduction to practice, important experiments should be repeated by a non inventor. This procedure provides corroboration of the inventor's reduction to practice.

A form which may be used for signature of the inventor and the corroborating witnesses follows below: 

It is also helpful to apply the following stamp to any drawing(s) made in connection with the invention with the appropriate spaces filled in:

STATEMENTS CONCERNING WORTHLESS EXPERIMENTS

Categoric statements concerning the worthlessness or lack of utility of the product or process described should be avoided. Such comments as "n.g." can prove embarrassing at a latter date as evidence of failure or of the inventor's lack of appreciation of the work performed. The notebook entry should be a precise factual statement of what was done, the results observed, and details of the structure involved. Reference to detailed drawings may be used for this purpose.

USE OF INK

Ink entries are preferable to pencil entries because they are more permanent and less suspect from the standpoint of tampering.

ERASURES

Under no circumstances should an entry be erased or a page removed. Corrections should be made by crossing out the entry with a single line, and all crossed out entries should remain legible. Any changes in an entry should be initialed and dated by the entrant and witnesses.

ADDED MATERIAL

Charts, standardized data sheets and the like may be made part of the notebook by permanent attachment. Alternatively, this data may be completely copied into the notebook. Copied data, however, should be accompanied by a specific reference to the original record and the original record should be filed for future reference. For greatest safety, the original record should also be dated, signed and witnessed.

It is often impractical to attach analytical sheets, special charts, and the like permanently to the record book or to copy them completely. In these cases, the written material should be signed, dated, and witnessed and the essential information transcribed into the notebook with a cross reference in the notebook to the original material. The loose reference material should then be collected, indexed, and filed in a readily accessible location.

EMPTY PAGES

Pages which are not used or not completely filled in, for one reason or another, should have a line drawn through the unused page or portion thereof. This procedure avoids embarrassment at a later date when, in litigation, it might be argued that a researcher could have made an entry on an earlier blank page.

SECURITY PRECAUTIONS

When not in use, notebooks should be stored in locked files. When notebooks are completed or a particular notebook has been terminated for any reason, an entry should be made indicating the date of termination.

NEW IDEAS

Distinct from recording work actually performed is the entry into the notebook of new ideas, i.e., inventive concepts. When recorded in the record book, the basic inventive concept should be stated broadly. The entrant should then elaborate on specific details, preferred conditions, and equivalents, stating specific examples then contemplated. If new ideas are also described in a memorandum, the record book should refer to the memorandum. If a concept appears useful, it should be duly recorded, even if the entrant does not consider it patentable.

The foregoing points cover the procedure for protecting patentable inventions through proper maintenance of a record book. The overriding requirements are completeness, accuracy, and permanency of the notebook, and adequate corroboration, all to be expected in any well-ordered research.

APPENDIX

35 U.S.C. 102 CONDITIONS FOR PATENTABILITY; NOVELTY AND

LOSS OF RIGHTS TO PATENT.

A person shall be entitled to a patent unless

35 U.S.C. 103 CONDITIONS FOR PATENTABILITY; NONOBVIOUS

SUBJECT MATTER.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the matter in which the invention was made.

Subject matter developed by another person which qualifies as prior art only under subsection (f) or (g) of Section 102 of this title shall not preclude patentability under this Section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

37 CFR 1.56 DUTY OF DISCLOSURE, CANDOR, AND GOOD FAITH

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the office, which includes a duty to disclose to the office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is canceled or withdrawn from consideration, or the application becomes abandoned. Information material to the patentability of a claim that is canceled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application. There is no duty to submit information which is not material to the patentability of any existing claim. The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by SS 1.97 (b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. The Office encourages applicants to carefully examine:

(1) Prior art cited in search reports of a foreign patent office in a counterpart application, and

(2) The closest information over which individuals associated with the filing or prosecution of a patent application believe any pending claim patentability defines, to make sure that any material information contained therein is disclosed to the Office.

(b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

(1) It establishes, by itself or in combination with other information a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes in:

(i) Opposing an argument of unpatentability relied on by the Office, or

(ii) Asserting an argument of patentability. A prima facie case of unpatentability is established when information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:

(1) Each inventor named in the application;

(2) Each attorney or agent who prepares or prosecutes the application; and

(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney, agent, or inventor.

CHECKLIST FOR INVENTION DISCLOSURE

The following are some of the facts relating to an invention that should be noted.

1. Date of the invention.

2. The inventor(s) and who worked on the invention.

3. Is the invention described in writing or shown in any drawing. If so, identify.

4. If so, has the description and/or drawing been dated and witnessed.

5. Who else knows about the invention, when was it explained to them, and did they understand it.

6. Describe the best mode of the invention.

7. Describe alternate modes of the invention.

8. Describe the features of the invention and how it is constructed.

9. Describe how the invention works.

10. Describe the intended uses and/or purpose of the invention.

11. Describe the advantages of the invention over the prior art.

INVENTION STATUS CHECKLIST

The following is a list of some of the facts that should be examined to determine the status of the invention, particularly with respect to statutory bars. Each person substantively involved with the preparation or prosecution of the application for a patent and any assignee of the invention must provide responses (See 37 CFR 1.56).

1. List any publications, such as advertisements, articles and publications (including your own) that you know of that could be considered relevant to the invention.

2. List any other products or processes that are relevant.

3. List any possible infringement problems that you are aware of.

4. What use has been made of the invention both by the inventor(s) and others.

5. Has there been any sale or offer for sale or attempt to sell or public use of the invention. For example, offers, orders solicited or taken or prototypes exhibited at shows. If so, note when, where, and under what circumstances.

6. Has there been any suppression, abandonment or concealment of the invention.

7. Have any copyrights been filed on the same subject matter.

8. Has there been a reduction to practice of the invention and, if so, who was involved in that reduction to practice.

9. If a patent search has been conducted, list the results of the search.

10. Is the inventor required to assign the invention.

11. Review 35 USC 102 for any other material facts.

Supplement

GATT URUGUAY ROUND PATENT LAW CHANGES

Significant changes in our patent laws have been enacted. These changes arise from the GATT Uruguay Round implementing legislation (P.L. 103- 465), signed by the President on December 8, 1994. Most of the provisions of the legislation will take effect one year after the date on which the World Trade Organization (WTO) Agreement enters into force with respect to the United States. The WTO Agreement entered into force for the United States on January 1, 1995. As a result, most of the provisions of the GATT implementing legislation will take effect on January 1, 1996. There is, however, a very significant part of the legislation -- the provisions relating to patent term and provisional applications -- that took effect after the signing of the bill, i.e., on June 8, 1995. Users of the patent and trademark system should be fully aware of these changes and their effective dates. The changes and their effective dates are discussed below.

Treatment of Inventive Activity - In accordance with the requirements of the GATT Uruguay Round agreement that patents be available without discrimination as to the place of invention, section 104 of the patent law has been amended to provide that evidence of inventive activity in the territory of a WTO member country be treated the same as inventive activity in the United States. Our obligation does not go beyond non-discrimination - foreign inventive activity will not have an advantage relative to domestic activity. Section 104 has also been amended to guard against the possibility that a party may be unable to probe and challenge adequately such evidence because the party cannot obtain other information from a person in a WTO member country relevant to an alleged date of invention, to the extent that the information could be obtained in the United States. If information cannot be obtained, the Commissioner, court, or other authority is to draw appropriate inferences in favor of the party that requested the information. These changes parallel those made to implement the NAFTA Agreement (North American Free Trade Agreement). Since the WTO Agreement entered into force for the United States on January 1, 1995, these changes apply to all applications filed on or after January 1, 1996. However, a date of invention may not be established in a WTO member country, other than the United States, Canada or Mexico, that is earlier than January 1, 1996, except as provided in sections 119 and 365 of the patent law.

Patent Term - The former term for protection of a Unites States patent is 17 years measured from the grant of the patent, provided that the required fees for maintaining the patent in force are paid. The implementing legislation changes section 154 of the patent law to provide that the term of protection begins on the date of grant and ends 20 years from the filing date of the application for the patent. If priority of an earlier application or applications is claimed under sections 120, 121, or 376(c) of the patent law, the 20 year period is measured from the date of the earliest of such earlier applications.

The twenty year patent term may be extended for a maximum of five years for delays in the issuance of the patent due to interferences, secrecy orders and/or successful appeals to the Board of Patent Appeals and Interferences or the federal courts. Extensions for successful appellate review are limited in that the patent must not be subject to terminal disclaimer. Further, the period of extension will be reduced by any time attributable to appellate review within 3 years of the filing date of the application and the period of extension for appellate review will be reduced by any time during which the applicant did not act with due diligence. The patent term extension that may be available per section 156 of the patent law for pre-market regulatory review is cumulative to the extension that may be available via the new provision.

All patents that are in force on or that will issue on an application filed before June 8, 1995 will automatically have a term that is the greater of the 20-year term provided above or 17 years from the grant. This provision affects all patents that are in force on June 8, 1995 and all patents issued thereafter on applications filed prior to June 8, 1995. The terms of these patents are, of course, subject to any applicable terminal disclaimers. The remedies for infringement are limited in any term extended as a result of the automatic 17 or 20 year term provision.

The implementing legislation includes certain transition measures that are designed to minimize the need to file continuing applications after the effective date of the 20 year provisions. These transition measures will alter after-final and restriction practices for certain applications. The transition after-final practice affects only those applications filed on or before June 8, 1995, with an effective U. S. filing date prior to June 9, 1995. Applicants will be entitled to have two after-final submissions, that would have otherwise been refused entry, entered and considered by the examiner if each submission is received prior to or with a notice of appeal and the necessary fees are timely paid. The transition restriction practice affects only those applications filed on or before June 8, 1995, with an effective U.S. filing date prior to June 9, 1992. For those applications, no restriction will be made or maintained except in those instances where the requirement was made prior to April 8, 1995, there was no Office action in the application due to applicant's action or the appropriate additional invention fee was not paid.

Provisional Applications - Sections 111 and 119 of the patent law have been amended to establish a domestic priority system. The Paris Convention for the Protection of Industrial Property requires that the terms of protection of patents for the same invention granted by different countries should generally be independent of one another. This precludes the United States from measuring, in a foreign origin application, the term of protection from the filing date of a foreign filed application, even though the benefit of that foreign filing is subsequently claimed in the United States. To give U. S. inventors a similar opportunity, in the United States, of having an initial application filing which does not serve as the basis from which the term of protection is measured, a domestic priority system has been established that provides for provisional application filing in the United States.

A provisional application requires filing only of a specification in compliance with the first paragraph of section 112 of the patent law and drawings where necessary for the understanding of the invention. The application must be made in the name of the inventors, include the appropriate filing fee and include a cover sheet to identify it as a provisional application. A provisional application does not require a claim or an oath or declaration. A provisional application cannot mature into a patent, it is not examined and it cannot claim priority of an earlier application. A provisional application is kept in confidence by the U. S. Patent Office. A provisional application is however, a regular national filing that starts the Paris Convention priority year. A provisional application will automatically go abandoned by law one year after filing. It may go abandoned prior to the one year for failure to respond to an Office requirement or for a failure to pay the filing fee. A provisional application may be revived, but in no case may its pendency extended beyond one year from its filing date.

The provisional application has several important benefits. As noted above, it places domestic applicants on an even footing with foreign applicants because the filing of a provisional application does not trigger the start of the 20 year patent term. It has minimal legal and formal requirements. The provisional application provides a mechanism whereby applicants can quickly establish an early effective filing date in a patent application which establishes a constructive reduction to practice for any invention described in the provisional application. The filing of a provisional application also provides up to twelve months to further develop the invention, determine marketability, acquire funding or capital, seek licensing or seek manufacturing.

The effective date for all of the patent term and provisional application provisions is June 8, 1995. The provisions do not apply to applications for design patents.

Analysis provided by the Unites States Patent and Trademark Office.  6/9/95

NOTICE

This brochure is presented with the understanding that the author, although a qualified Attorney at Law, is not engaged in rendering legal services in this brochure. Each case has a different fact pattern and must be considered on its own merits. The information contained herein is not intended to answer specific questions or to suggest the suitability of action in a particular field. If legal advice or other expert assistance is required, the individualized services of a competent professional person should be sought.

SECOND EDITION

COPYRIGHT © 1993 Robert R. Hussey II All rights reserved. No part of this publication may be reproduced, transmitted, transcribed, stored in a retrieval system or translated into any human or computer language in any form or by any means, electronic, mechanical, magnetic, optical, chemical, manual, or otherwise, without the express written permission of the author, Robert R. Hussey II, 201 Leader Building, Cleveland, Ohio 44114.

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ROBERT R. HUSSEY Co. L.P.A.

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