Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 139

The U.S. Patent Laws were amended several years ago to allow the filing of provisional, or partially complete, patent applications to secure to the inventor a filing date prior to the time a complete patent application could be prepared, and requiring that the complete application be filed within one year from filing the provisional patent application. The purpose of the change in the law was to allow an inventor to establish a priority date as to his or her invention, without depending upon the workload, or the speed of preparation, of a patent attorney.

A provisional patent application can be filed without any claims, without any declaration of inventorship by the inventor or inventors, and without a disclosure of prior art know by the inventor. The provisional application is basically a “shorthand” way of filing your novel technical information with the USPTO, indicating that within one year you expect to file a regular, non‐provisional patent application covering the same technology. The purpose of the provisional application is to “save the date.” However, the provisional patent application cannot be too threadbare, since 35 U.S.C. §112 requires that the completeness of the invention described in a provisional application must also meet the standard of completeness of a regular, non‐provisional application.

To place a provisional patent application on file with the USPTO, the inventor and/or his or her attorney file, among other things, a cover sheet that identifies the application as a provisional application, the identity of all the inventors usually in the form of an unsigned declaration setting forth the names and addresses of the inventors, and materials, usually furnished by the inventor, consisting of a description and drawings of the invention, which need not necessarily be in the form of a normal patent application. The description and the drawings must be sufficient to allow the Patent Examiner and the public to fully understand the invention, since within one year a regular patent application will be filed, and the provisional application will become part of the prosecution history available to the public upon issuance of the patent from the regular patent application. The provisional application material must include all of the technology you include in the claims of your regular, non‐provisional patent application when the latter is filed.

I challenge the definition of a provisional patent application as being an “application,” because the rules clearly state that no provisional application will be examined for patentability, nor will it ever be issued as a U.S. patent. It is more of a “statement” that provides an early priority date if a regular, non‐provisional patent application is subsequently filed within one year. Also, the priority period provided by the provisional application is not included in the 20 year term of enforceability of the patent counting from the date of filing the regular application. Note further that provisional patent applications cannot be filed for design inventions.

The term “Patent Pending” may be used in connection with inventions that are the subject of provisional patent applications. Since 12 months after the filing of the provisional application the application and your priority date automatically lapse if a non‐provisional application is not filed, it is important to file the regular non‐provisional patent application within that 12‐month period or you will lose your priority filing date. It is possible to file a second provisional patent application describing the same invention as the first one, but the second provisional application cannot claim the priority date of the first provisional patent application.