For those who follow the United States Patent Reform Act, you may be asking yourself: what’s the big deal? Simply file a ‘quick’ provisional patent application before anyone else. Unfortunately this is one of those many instances where if something seems too good to be true, it probably is.
As addressed by my previous article, many provisional applications do not contain all the information required by U.S. patent law. In fact, the difference between the legal sufficiency of a provisional application and a utility patent application is just one claim sentence. Therefore, if you file an insufficient provisional application, then a third party can now challenge your utility application for insufficient technical information immediately after it becomes a patent. Previously the competitor was required to file a lawsuit in federal court to challenge validity for insufficient technical information and which was much more expensive and complex proceeding.
Under the Patent Reform Act, up until nine months after the issue date of a patent, a third party may challenge the patent based upon the ineffectiveness of a provisional application’s filing date. In contrast, previously existing patent office administrative proceedings to challenge patent validity are known as a reissues or re-examinations. A reissue is generally commenced by the patent owner to broaden or narrow the patent’s scope. Re-examination, commenced by either a third party or the patent owner, can modify claim sentences to avoid previously existing references that affect patentability.
Suppose there is a non-extendable deadline running for filing a patent application for a particular invention. To beat the deadline and be first to file the applicant drafts his own provisional application and files it in the United States patent office. Unbeknownst to him, the provisional application does not qualify as a valid provisional application because it does not contain necessary technical information.
After the non-extendable deadline passes the applicant files his related utility patent application which is thereafter issued as a utility patent. A competitor now challenges that utility patent on two bases: (1) the provisional patent application was legally insufficient and therefore the applicant missed the filing deadline for the utility patent; and (2) the provisional patent application did not contain sufficient technical information to support the claims sentences in the issued utility patent.
What can the business owner do? First, my previous unequivocal advice is now even more strongly recommended: Do NOT file a provisional application and be lulled into a false sense of security. Because it will be much easier and less expensive to challenge a patent based upon a defective provisional predecessor, the defective provisional application is now more easily exposed for what it is: an insidious manner in which to miss all the deadlines and lack the critical technical information required for validity. Secondly do not publish your utility patent application on-line. This gives your competitors much more time to find your invention and arrive at a timeline at which to file the new patent office proceeding. Finally, if your business does not have the resources to battle infringement internationally, publication of your U.S. application is necessary for overseas filings.
© 2011 Adrienne B. Naumann
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