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Extra Provisionals

Postby pending » Sat Oct 30, 2010 2:49 pm

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Hi,

First question for the board...

I'm trying to understand what "extra" provisionals are. Is there a faq or thread on this?

Thanks

Re: Extra Provisionals

Postby pending » Mon Nov 01, 2010 5:21 pm

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Maybe this is a better question:

If you file PPA #1 on an invention, and then start selling it as "patent pending", but then can't file a RPA for some reason, can you then file a PPA #2 on the same invention, and continue using "patent pending" for another year?

Thanks

Re: Extra Provisionals

Postby Gizmo » Mon Nov 01, 2010 6:41 pm

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Re: Extra Provisionals

Postby pending » Mon Nov 01, 2010 7:36 pm

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Yep read that twice.

Re: Extra Provisionals

Postby Scrupulous » Mon Nov 01, 2010 11:17 pm

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I think I know what you're getting at...

Technically, you could file the same provisional on the same project every year, indefinitely, and you would have legal "patent pending" status on it for the entire time.

The only restriction relating to this that I'm aware of is the rule against double-patenting. But that restriction only comes up during the examination of a regular application.

This kinda kills the spirit of the patent process, and maybe it defeats the purpose at least. But, if this is what you're considering, it is indeed a legitimate and legal strategy.

Incidentally, it is not that same thing as maintaining the chain of pendency, which is an entirely different route that not only "stretches" the period prior to bigger fees, but also preserves the original priority date. Maintaining the chain of pendency tends to deal more with PCT filings (i.e. the Paris Convention) in conjunction with provisional applications and such.

Good question, and probably a good topic for other aspects of the Provisional (e.g. one provisional can contain an unlimited number of inventions).
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Re: Extra Provisionals

Postby PatentAgent » Wed Nov 10, 2010 6:14 pm

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If I were your opponent in litigation, I might attempt an argument along these lines:

The second and later filed provisionals were not bona fide provisionals, but rather a mere device to provide you unfair use of 'patent pending'. As such, the second provisional isn't really a provisional at all. It is a trick.

Judges see through such tricks and 'undo' what might otherwise seem technically 'legal'. So, I don't consider the strategy legal at all.

However, if there were a legitimate reason to quit the first provisional, and another legitimate reason to initiate another provisional - say if there were important developments in the interim period - then one might have an argument for 'patent pending' for an extended perior prior to any non-provisional being filed.

You could find additional information here: Patent Agents

Re: Extra Provisionals

Postby apapage » Wed Nov 10, 2010 9:42 pm

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Extra provisional or the filing of another provisional application instead of a utility is common in some industries but not without risk. For example, lets assume that you produced a drug that required 12 years to get government approval. Since you have to file the provisional as early as possible, likely years before filing for govt approval, at best there will be 5 years of exclusivity. Now assume that one additional year of exclusivity is worth billions. In this instance it is worth to file a provisional and in one year do a prior art search to see if there is new art that would be problematic. If not, then file the provisional again and the utility a year later. This effectively gives you an additional year of patent term, but there may be new art filed between the first and the second provisional application that may be problematic to the later filed application but not the first provisional. Personally I wouldn't take the risk. In the example above, one would be risking 5 years of exclusivity for just one additional year. In other technology areas it just doesn't make sense to risk effectively 17 years for just one additional year. Also, if you sell the patent pending article you will be subject to the on sale bar under 102b which will invalidate the subsequently filed utility application. Finally, there won't be an equitable issue in litigation issue since the 102b issue provides adequate protection against gaming the system to maintain the patent pending status.

Re: Extra Provisionals

Postby DaveO » Thu Nov 11, 2010 1:03 pm

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I have hesitated to chime in on the topic because what has been suggested is an intentional abuse of the system and that doesn't sit well with me personally.

That being said, I am not aware of any legal issues that can arise from simply refiling provisionals. If a non-provisional is filed claiming priority to one of the subsequently-filed provisionals, and that patent is then litigated, I would assume that the other party would attack the validity of the patent on some equitable grounds, but I don't know of any caselaw where that kind of argument has gained traction.

@ apapage, that's an interesting scenario you raise in doing the prior art search at the end of life of the provisional to bump out the filing of the nonprovisional by one year. Not one I would ever employ due to the risk of possibly missing a pertinent art reference which later leaves you dead in the water - but it is an interesting idea.
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Re: Extra Provisionals

Postby pending » Thu Nov 11, 2010 1:15 pm

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Thanks for those two replies. Is all much clearer now.

The premise to the situation is:

1. Short shelf life of product: about 3 years before replacement is launched.
2. Low potential total sales: at best, a few hundred thousand dollars over 3 years.
3. Most demand is foreign to the U.S.
4. Retail sales will begin this coming January.
5. I will be handling marketing and sales, since this is what I do.
6. If there were an infringer, I would not be able to pursue it, due to cost.
7. If there were an infringer, I would not have a patent anwyay, due to #1.


Therefore, it looks like the main patent "protection" that I can achieve is "patent pending" markings on the product for the 12 months with the provisional, and then do a PCT app to get extended "pending" status in the PCT countries (including U.S.) which allow "pending" markings without filing national with them.

If I'm correct, and if the PCT is accepted, I believe that this would give me a total of 30 months of "pending" status, in the PCT countries which allow "pending" markings without filing national with them. The app can then be abandoned, and we can move on to the replacement product.

One last option seems to be to do a series of provisionals, each with a new embodiment in the app and the product, every 12 months. Since no actual utility app would ever be filed in this case, there would be no concern of the priority date getting later and later. And this technique would give the same "pending" status that I'd get with the PCT, but much cheaper. Question is, would these U.S. provisional give the ability to mark "patent pending" on the product in foreign countries too?

Thanks again

Re: Extra Provisionals

Postby Scrupulous » Fri Nov 12, 2010 1:41 am

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You're welcome.

I wouldn't count on that "PCT pending" strategy, though. I don't believe participating countries offer reciprocity in that way. I think you would have to at least enter the national stage for any country, in order to legally mark pending status in that country or region. I believe the same holds true for the US.

IOW, it may not be enough to explicitly designate individual countries with your PCT ap, regardless of where it is filed.
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I'm Ken Campbell, a registered US patent practitioner at the Affordable Patent Service.

As a forum moderator, though, any input I provide should be considered general information, and not legal advice. The ideas I express are not necessarily the opinions of InventorSpot.com or its affiliates. In general, any action taken as a result of information, analysis, or advice from any forum members on this site is ultimately the user's responsibility.
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