Does Provisional Trump Regular Patent Application?

Dear Rich: Can you answer a question about provisional patent applications? We've invented an automobile accessory and we filed a provisional patent application. Then we filed a regular patent application. We recently learned that someone else has filed a regular patent application before ours (but after we filed our provisional). Do we lose the race because they filed a regular application before us? Under current patent law (first-to-invent) there is no race to the patent office. The issue is who invented the device first. That said, filing dates are important because they often reflect the date of invention (or constructive reduction to practice). Your filing of a provisional patent application, assuming it accurately reflects the invention in your regular application, can be used as prior art to stop a later inventor (or filer in this case) from obtaining a patent. In summary, if you wrote a good provisional patent application, you're probably the winner. This rule was demonstrated in a court case about a year ago. An inventor, Giacomini, filed a patent application claiming a method of selectively storing sets of electronic data. Another inventor, Tran, filed a patent application after Giacomini for a similar invention. However, Tran’s application was based on a provisional patent application that accurately described the invention and was filed before Giacomini’s application. In that case, the Federal Circuit held that Tran as “first inventor,” could claim patent rights and use his patent application as prior art against Giacomini. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.

When Will the 1-Year Grace Period for Patents End?

Dear Rich: I filed a provisional patent application this week. I've been selling my product that I hope to patent for the past three months. The new patent law ends the one-year grace period. So where does that leave me and my application? You should be fine, provided that you file your regular patent application within a year of the provisional filing. The aspect of the law that you're referring to doesn't go into effect until March 16, 2013, and only applies to patents filed on or after that date.
What about the one-year grace period? The one-year grace period -- which allowed applicants to obtain patents even if if they had been selling or had published their patent less than a year before filing -- will terminate (with some exceptions) on March 15, 2013. As David Pressman, author of Patent It Yourself, recently explained in his excellent analysis of the America Invents Act:

"The one-year grace period has been decimated so that any publication, public use, or offer of sale of an invention before an application’s actual filing date will bar the application. An exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However it is still unwise for an inventor to publish before filing since they will lose their foreign filing rights and another person may see the publication and file their own application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding."

Check out the article for more details, and for more on the AIA, you can read about the USPTO's implementation plans, and you can review a timeline for AIA implementation.

Patent "Reform": A Done Deal

Modifications to the patent law were finally passed by Congress this week -- the Leahy-Smith America Invents Act. Although referred to as “patent reform,” commentators have noted that the Act does little to “reform” the problems associated with the patent system—notably, an underfunded PTO, inadequate examination procedures, and burdensome litigation. In the end, the Act contained quite a bit of special interest policy-making that favors large companies over independent inventors. The major change of the Act is that the U.S. switches to a first-to-file system in March 2013, 18 months after enactment. You'll find a summary of the Act's provisions here and here is a timeline detailing when the changes in the Act go into effect.

When Does New Patent Law Go Into Effect?

A.G. Bell takes a call
(c) Sasha Stim-Fogel

Dear Rich: I read that Congress passed a new patent law. Will this affect a provisional patent application that I filed last month? [Note: the law discussed in this question was finally enacted on September 16, 2011] No, the new law (The America Invents Act aka Patent Reform) has not been enacted, yet. ] Both the Senate and House of Representatives have passed versions but the two versions haven't been 'harmonized.' The Dear Rich staff believes that the Act will be enacted next month. In fact, we're so sure that we've prepared a timeline explaining when the 37 provisions of the bill go into effect.