A. PURPOSE

1. Domestic Priority System

(1) A written description of the invention, complying with 35 U.S.C. §112, first paragraph;

(2) Drawings, if needed to understand the invention;

(3) Names of the inventors and the residence of each named inventor;

(4) Filing fee ($150); and

(5) Cover sheet.

(1) A provisional application may be filed in a foreign language.

(2) The format is the same as for regular filings.

(3) Claims may be included in a provisional application (highly recommended).

(4) An inventor's oath is not required.

(5) A power of attorney is not required.

(6) The PTO will issue a filing receipt for a provisional application.

(7) A provisional application can only be filed on or after June 8, 1995.

(8) An Information Disclosure Statement may not be filed in a provisional application.

1. Filing Date Requirements

2. A provisional application will not be examined for patentability, or placed in an interference, or made the subject of a Statutory Invention Registration.

3. Substantive Examination

1. Obtaining the Benefit of the Provisional Filing Date

A provisional application becomes abandoned 12 months after its filing date. It cannot be revived under any circumstances after its 12-month anniversary date.

A non-provisional application in the United States that seeks to obtain the benefit of the filing date of a provisional application must be filed while the provisional application is pending.

If the provisional application is set to abandon on a Saturday, Sunday or holiday, then a non-provisional application claiming the benefit of the provisional application must be filed no later than the preceding working day.

Applicant can claim the benefit of more than one copending provisional application in a later filed application for patent under 35 U.S.C. §111(a) - a regular U.S. filing, or under 35 U.S.C. §363 - a PCT application designating the United States.

A non-provisional application claiming the benefit of a provisional application must name at least one inventor in common with the provisional application.

A non-provisional application claiming the benefit of a provisional application must specifically refer to the provisional application (e.g., This application claims the benefit of Provisional Application No. 60/________, filed ________).

A provisional application cannot claim the benefit of the filing date of any other patent application.

A provisional application is a regular national filing under the Paris Convention. This means that an applicant has 12 months from the filing date of a provisional application to file an application abroad or under the PCT to preserve the right to priority based on the filing date of the provisional application.

1. Conversion from Regularly Filed Application

A regularly filed application may be converted into a provisional application by filing a petition and fee prior to the earlier of the abandonment of the regularly filed application, payment of the issue fee, the expiration of 12 months after the filing date of the regularly filed application, or the filing of a request for a statutory invention registration.

2. Correcting Inventorship in a Provisional Application

If the name of an inventor was omitted in a provisional application through error without any deceptive intention on the part of the actual inventors, the provisional application may be amended to add the name of the omitted inventor. The amendment must be accompanied by a petition including a statement that the error occurred without deceptive intention and a fee. Diligence is not required.

If a person is named as an inventor in a provisional application through error without any deceptive intention, an amendment may be filed in the provisional application deleting the name of the person who was erroneously named. The amendment must be accompanied by a petition including a statement of facts verified by the person whose name is being deleted which establishes that the error occurred without deceptive intention, a fee, and the written consent of the assignee. Diligence is not required.

G. PRIOR ART 102(e) DATE - OFFENSIVE PRIOR ART

1. A foreign patent or publication is prior art under 35 U.S.C. §102(a) as of its publication date. On the other hand, a U.S. patent is prior art under 35 U.S.C. §102(e) as of its U.S. filing date.

2. The effective U.S. filing date of an application for patent filed under 35 U.S.C. §111(a), a regular U.S. filing and entitled to the benefit of a provisional application, is the filing date of the provisional application. Any patent granted on such an application is prior art under 35 U.S.C. §102(e) as of the filing date of the provisional application (to the extent that the subject matter disclosed in the patent is supported by the provisional application as required by 35 U.S.C. §112, first paragraph).

3. On the other hand, a U.S. patent entitled to the benefit of a foreign filed application is prior art under 35 U.S.C. §102(e) as of its U.S. filing date.

4. Entry into U.S. National Stage from a PCT Application Designating the U.S. and Claiming Priority from a Provisional Application

The resulting patent is effective as prior art under §102(e) as of the date that applicant completes the national stage requirements under §371(c)(1) - fee, §371(c)(2) - copy of the international application, and §371(c)(4) - inventor's oath (i.e., sometime between the PCT filing date and entry into the U.S. national stage).

5. It may be possible to avert the result in (4) above (i.e., moving back the §102(e) prior art date) by filing a continuation application of the international application under §365(c), in lieu of entering the national phase, and claiming the benefit of both the international application and the provisional application. The continuation application should be accorded a §102(e) date as of the filing date of the provisional application. Furthermore, the PCT application must designate the United States.

1. Typical Convention Priority Route

File basic application in Japan on 10/1/97. File a regular U.S. application on 10/1/98 (i.e., within one year of the Japanese filing date), claiming convention priority from the Japanese application.

a. A patent issuing from the U.S. case is effective as a prior art reference under 35 U.S.C. §102(e) as of its 10/1/98 U.S. filing date. The Japanese application does not become available as prior art under §102(a) until it is laid-open (i.e., about 18 months following the Japanese filing date or about 4/1/99).

b. Prior art references having an effective date from 10/1/97 and subsequent thereto can be removed by perfecting the claim to priority. Foreign patents and publications are effective as prior art as of their publication date. A U.S. patent is effective as prior art as of its U.S. filing date.

c. Prior art references having a publication date that is more than one year prior to the U.S. filing date (i.e., prior to 10/1/97) constitute a statutory bar to the U.S. case under §102(b) and cannot be removed.

2. Effect of Provisional Filing

File basic application in Japan on 10/1/97. File the Japanese application the following day on 10/2/97 as a provisional application in the United States. File a regular U.S. application within one year of the Japanese filing date, claiming priority from both the Japanese application (convention priority) and the provisional application.

a. A patent issuing from the U.S. case is effective as a prior art reference under 35 U.S.C. §102(e) as of its 10/2/97 provisional filing date.

b. Prior art references having an effective date from 10/1/97 and subsequent thereto can be removed by perfecting the claim to priority.

c. Prior art references published between 10/2/96 and 10/1/97 can be removed by showing completion of the invention in Japan before the effective date of the reference (Rule 131 Affidavit Practice).

d. Prior art references published more than one year prior to the provisional filing date (i.e., published prior to 10/2/96) constitute a statutory bar under §102(b) and cannot be removed.

Use the provisional application to accomplish the following:

a. Establish your U.S. patent as prior art against competitors (i.e., offensive use of patent) up to one year earlier than could be attained by the typical convention priority route.

b. Remove certain types of references as prior art against your U.S. case up to one year earlier than could be achieved by relying on the claimed priority date.

1. Assume situation 1 (i.e., typical convention priority route). Your competitor files an application in the U.S. on 9/1/98 claiming subject matter that is disclosed in your U.S. application filed 10/1/98. Neither a patent issuing from your U.S. application nor the laid open Japanese application are available as prior art against your competitor's case.

2. Assume situation 2 (i.e., provisional route). Your competitor files an application in the U.S. on 9/1/98 claiming subject matter that is disclosed in your provisional filed 10/2/97 and regular U.S. application filed 10/1/98. A patent issuing from your U.S. application is available as prior art under §102(e) against your competitor's case.

3. Assume situation 1 (i.e., typical convention priority route). The examiner cites a reference having a publication date of 8/1/97 against your U.S. case filed 10/1/98. The reference cannot be removed. You must amend the claims to distinguish over the reference.

4. Assume situation 2 (i.e., provisional route). The examiner cites a reference having a publication date of 8/1/97 against your U.S. case filed 10/1/98 based on a provisional application filed 10/2/97. The reference may be removed as prior art by showing completion of the invention in Japan prior to 8/1/97 under Rule 131.