PROVISIONAL APPLICATIONS ------------------------ In 1995, the PTO instituted a new application called a "Provisional Application" which is intended to be a quasi patent application to provide date of patent application without having to file a complete regular patent application. The U.S. Government is determined and proceeding to dump 200 years of U.S. patent practice and its associated body of U.S. court tested law for doing things the way it is done in Europe and Japan without regard to the damage it may do to the U.S. economy. The Provisional Application is part of this program and appears to be in preparation for converting the United States from a "First to Invent" system to a "First to File" system. A system arguably disastrous to the small inventor and small business. At this time, November, 1996, the U.S. is still a First to Invent country, but the Provisional application has some inherent advantages. The Disclosure Document program (fee $10) and the Provisional Application (fee $75) can be equivalent in establishing constructive reduction to practice. Disclosure Documents are held by the PTO for 2 years, and Provisional Applications expire in one year. For best results, a Disclosure Document be a specification in 35USC112 form, but a Provisional Application MUST conform to 112 requirements to be effective. The primary advantages of filing a provisional application at this time are: A. A foreign filing license is issued. B. The provisional application permits marketing the invention without triggering the "must file before marketing" barriers common in Europe. C. The product may be marked "Patent Pending", even though the formal application is not filed. D. Buys time to perfect the invention and/or the formal application. ========================== from the PTO ============================= Communications between the US PTO and the WIPO ON THE ADEQUACY OF PROVISIONAL PATENT APPLICATIONS FOR PRESERVING RIGHTS TO MAKE A FOREIGN FILING. Provisional Applications for Patent Meet Paris Convention Requirements as Foreign Priority Documents ---------------------------------------------------------------------- Provisional Applications for Patent Meet Paris Convention Requirements as Foreign Priority Documents In view of the recent question raised in the patent community regarding the adequacy of provisional patent applications filed under 35 USC 111(b) to serve as the basis for the right of priority provided by Article 4 of the Paris Convention for the Protection of Industrial Property, Commissioner Lehman decided to seek the advice of the World Intellectual Property Organization on that issue. Below is the resulting exchange of correspondence that should lay to rest any doubt that provisional patent applications are indeed sufficient for this purpose. The Letter from Bruce A. Lehman, Assistant Secretary of Commerce and Commissioner of Patents and Trademarks The Letter from Arpad Bogsch, Director General, World Intellectual Property Organization www@uspto.gov Last Modified: 21 November 1995 --------------------------------------------------------------------- Letter from Bruce A. Lehman to Dr. Arpad Bogsch November 17, 1995 Dr. Arpad Bogsch Director General World Intellectual Property Organization 1211 Geneva 20 Switzerland Dear Arpad, Recently, a question arose regarding the adequacy of a provisional patent application, filed in accordance with section 111(b) of title 35, United States Code, to serve as the basis for the right of priority provided by Article 4 of the Paris Convention for the Protection of Industrial Property. Although we are convinced that such an application is indeed sufficient for this purpose, we would be very interested in your opinion on this subject and request a reply at your earliest convenience. Sincerely, Bruce A. Lehman Assistant Secretary of Commerce and Commissioner of Patents and Trademarks ----------------------- reply ---------------------------- Letter from Dr. Arpad Bogsch to Bruce Lehman Mr. Bruce A. Lehman Assistant Secretary of Commerce and Commissioner of Patents and Trademarks Patent and Trademark Office Box 4 U.S. Department of Commerce Washington, D.C. 20231 United States of America Dear Bruce, I thank you for your letter of November 17, 1995, asking for our views concerning the claiming of priority under Article 4 of the Paris Convention for the Protection of Industrial Property, in respect of provisional patent applications filed with the USPTO. As you know, the International Bureau is not in a position to give an official interpretation of the provisions of the Paris Convention. However, we offer the following considerations which may be helpful in order to reply to the question raised by you. According to Article 4A(1) of the Paris Convention, the basis for priority under that Convention is a duly filed application for a patent. Article 4A(2) of the Paris Convention states, in particular, that "Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union ... shall be recognized as giving rise to the right of priority." In the case under consideration, the "domestic legislation" is the legislation of the United States of America. Therefore, it is that legislation which determines whether a "regular national filing" exists, subject to compliance with Article 4A(3) of the Paris Convention. Article 4A(3) of the Paris Convention states that "By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, ...." As section 111(b) of title 35, United States Code, establishes such a filing date with respect to provisional patent applications, this requirement of the Paris Convention appears to be satisfied. To conclude otherwise would put into question the ability of domestic legislation to prescribe the requirements which must be fulfilled for a filing to be adequate to establish a filing date. Article 4A(3) of the Paris Convention also states that "any filing that is adequate to establish the date on which the application was filed" is a regular national filing "whatever may be the subsequent fate of the application." Thus the question of whether a filing is to be considered as a "regular national filing" does not appear to depend on whether or not that filing may itself lead to the grant of a patent. Moreover, it is to be noted that applications for patents are recognized as giving rise to a right of priority under the Paris Convention even if it is clear from the outset that no patent can be granted upon such an application, for example, where the invention concerned is excluded from patenting. Sincerely yours, Arpad Bogsch Director General ----------------------------- DONE ---------------------------------- source = www@uspto.gov Last Modified: 21 November 1995 --------------------------------------------------------------------- -end- provisio.txt