Monthly Minute | Provisional Patent Applications
When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more
Last week, the U.S. Patent and Trademark Office issued a Notice advising Applicants to review filing receipts issued between March 2022 and mid-October 2022 to confirm that the granted foreign filing license notification has...more
On December 29, 2022, to the relief of many practitioners and applicants, the U.S. Patent and Trademark Office delayed the effective date of its controversial incentivized transition to DOCX format for patent application...more
Dear Patenticity, My company has several new product concepts under development right now, and some are very early in the design process. We are in a very competitive space, so we want to protect our work with patents to...more
Since the U.S. patent law switched to the first-inventor-to-file system in 2013, provisional applications have become more popular as the initial step for emerging companies to protect their inventions. Provisional...more
Partner Hussein Akhavannik breaks down specific patent protection and clearance strategies for each stage of medical device development, from concept and design to the manufacturing and sale....more
PATENT CASE OF THE WEEK - GS CleanTech Corp. v. Adkins Energy LLC, Appeal No. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. Mar. 2, 2020) - In this week’s Case of the Week, the Federal Circuit affirmed a district court’s...more
Provisional applications tempt stakeholders with the possibility of securing a filing date on an expedited basis and limited budget, but the value of that filing date will depend on its ability to serve as a valid priority...more
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to...more
In preparing a patent application, one of the basic questions to be addressed is the type of application to file. Applicants are faced with the choice of filing a non-provisional application, a provisional application or a...more
In Droplets, Inc. v. E*Trade Bank, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that Droplet’s patent was not entitled to the priority date of a provisional application because...more
In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing...more
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional patent application. These applications are typically used as a faster and lower-cost first...more
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 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
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
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
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
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
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
Google recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’stears. I...more
So, as we discussed last week, ideas aren’t patentable. But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent? Full-blown patent protection is not...more
The final phase of the America Invents Act (AIA) takes effect on March 16, 2013. This means that any patent application filed in the U.S. on or after that date, which, at any time during its pendency, contains a claim that is...more