News & Analysis as of

Provisional Applications

To File or Not File Provisional Patent Applications – Part 1: The Pros

Since 1995, the United States has allowed patent applicants to file provisional applications as an alternative to filing non-provisional utility patent applications (often referred to as “regular” or “conventional”...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

The Impending Launch of the Unified Patent Court

by Dechert LLP on

In a fundamental change to how European patents are going to be litigated in Europe, the United Patent Court (UPC) will soon have exclusive jurisdiction over European patent disputes and will be able to issue remedies that...more

Federal Circuit Case Highlights the Importance of a Well Designed Provisional Patent Application Strategy

by McNair Law Firm, P.A. on

Recently, the Court of Appeals for the Federal Circuit decided MPHJ Technology Investments, LLC v. Ricoh Americas Corporation, et al., No. 2016-1243 (Fed. Cir. Feb. 13, 2017). This case highlights the importance of a...more

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional...

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were invalid on the grounds of...more

European Unified Patent Court Roll-Out Planned For 2017

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May...more

PTO Initiates Post-Prosecution Pilot Program

by McDermott Will & Emery on

On July 11, 2016, the US Patent and Trademark Office (PTO) announced a new pilot program to enhance after final practice. The Post-Prosecution Pilot Program (P3) combines elements of the Pre-Appeal Request for Review and AFCP...more

DHS Expands the Provisional Unlawful Presence Waiver

by Cozen O'Connor on

Today, The U.S. Department of Homeland Security (DHS) finalized a rule that expands eligibility for provisional waivers of inadmissibility based on the accrual of unlawful presence. The provisional unlawful presence waiver...more

Provisional Patent Applications - The Right Way and the Wrong Way

by McNair Law Firm, P.A. on

In 1995, the United States Patent and Trademark Office first offered the provisional patent application. The goal was to provide patent pending status at lower costs and to assist with preserving foreign patent filing rights....more

PTAB Institutes Kyle Bass IPRs Against Juxtapid Patents

by Foley & Lardner LLP on

The USPTO Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) proceedings filed by Kyle Bass against two of the five Juxtapid patents listed in the Orange Book. Two of the cited references may...more

Provisional Applications Narrow Construction of Four Patents, Broaden Construction of Two

In the Trustee of Columbia University in the City of New York v, Symantec Corporation, [2015-1146] (February 2, 2016) the Federal Circuit affirmed the district court’s claim construction order and subsequent partial final...more

Denying Prior Art Status In PTAB Proceedings: Petitioner's Failure to Show Section 112 Support in Priority Applications May Be...

by Foley & Lardner LLP on

Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more

PTAB Declares Interference for Groundbreaking Gene-Editing Technology

Earlier this week, the Patent Trial and Appeal Board (PTAB) set the stage for what is expected to be an epic battle over who owns the intellectual property rights to “the biggest biotech discovery of the century.” On January...more

Use of Provisional Patent Applications

by Stoel Rives LLP on

Provisional patent applications became available on June 8, 1995 in response to the General Agreement on Tariff and Trade (the GATT treaty) whereby applicants in the United States are able to establish an early filing date by...more

Patent Strategies For Start-Up Companies

Patents can be vitally important for protecting the innovations of a start-up company, just as it is important for start-ups to be mindful of trademark, copyright, and domain name strategies (see our other guides for...more

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

If Considered Material, False Statements Made to Federal Regulatory Bodies Create Exposure to Criminal Liability - United States...

by McDermott Will & Emery on

The U.S. Court of Appeals for the Tenth Circuit reversed a conviction for making a false statement to the U.S. Patent and Trademark Office (USPTO), holding that a false statement is not material if it could not influence the...more

Wertheim, Dynamic Drinkware and the AIA

by Foley & Lardner LLP on

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the...more

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

by McDermott Will & Emery on

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

An Inventor Walks Into a Bar: Risks of Filing a “Bar Napkin” Provisional Patent Application

by Hodgson Russ LLP on

Inventors come up with ideas at the strangest moments. For example, an inventor in 1937 wrote down concepts for what is considered one of the first modern computers on the back of a cocktail napkin. After a bourbon, he came...more

Comparing U.S. and Australian Provisional Patent Applications

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application. The U.S. provisional patent system and the Australian...more

Early Assignment of your Invention as a Method to Maintain Priority Rights in a European Patent Application

by Winstead PC on

The European Patent Office (EPO) has been a desirable venue for seeking patent protection in Europe. For instance, a patent application granted by the EPO can provide patent protection in many European countries, such as the...more

IP: Subject Matter Conflicts of Interest in Patent Prosecution – Case Law

by Buchalter on

As discussed in the introductory article of this series, conflict of interest issues are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts...more

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