Will the number of Provisional Patent Applications Filed Increase?

by Lawrence Higgins

The US patent system will soon become a first to file jurisdiction, switching over from the first to invent. With the switch, it would seem that the number of Provisional applications will increase significantly. Companies, universities, and inventors will be fearful that they are not the first to file, and will want some kind of assurance that they are able to secure patent protection. The provisional application could offer assurance that applicants are looking for. Provisional applications serve several important functions, the most important being that the applicant can secure an effective filing date. The Provisional Application will give an applicant 12 months to further experiment, get finances in order, and decide whether or not to convert to a non-provisional application. Under the first to invent jurisdiction, an inventor could experiment and wait to file a patent application as long as he/she was the first to invent. It should be noted that, provisional applications that are abandoned or not converted are not publically disclosed and will not be considered as prior art. As a result of the change in the patent system, there will probably be a noticeable increase in the number of provisional applications filed. •Applicants should take caution because a Provisional application must disclose enough info that a person having ordinary skill in the art would recognize that the invention claimed in a later-filed non-provisional application is described in the provisional upon which it relies. If the provisional does not adequately the invention as claimed in the later-filed non-provisional application, then the material added in the non-provisional application may not rely on the provisional application filing date.
Maybe the End of Times, for False Marking Suits

•Under the America Invents Act, "Only the United States may sue for statutory damages. However, a person who has suffered a competitive injury as a result of a violation… may file a civil action in a district court of the US for recovery of damages adequate to compensate for the injury. This law applies to all cases, without exception that are pending… the date of the enactment of the America invents Act. Justin Gray, of the blog Gray on Claims, has a chart of pending false marking cases, from the looks of the chart, there are over 200 pending false marking cases.

Good bye BPAI and hello Patent Trial and Appeal Board (PTAB)

•Elimination of References to Interferences. --- (1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking "Board of Patent Appeals and Interferences" each place it appears and inserting "Patent Trial and Appeal Board". Interference proceedings are out the window with the first-to-file patent system, being replaced by derivation proceedings. Derivation proceedings are essentially proceeding to determine whether the inventor named in an earlier filed application derived the claimed invention from the inventor of an application filed later. Under the new law, derivation proceeding petitions may be filed only within the 1-year period beginning on the date of the 1st publication of a claim to an invention that is the same or substantially the same…

http://www.patentlyo.com/patent/