Academic journal article Santa Clara High Technology Law Journal

Why International Inventors Might Want to Consider Filing Their First Patent Application at the United States Patent Office & the Convergence of Patent Harmonization and E-Commerce

Academic journal article Santa Clara High Technology Law Journal

Why International Inventors Might Want to Consider Filing Their First Patent Application at the United States Patent Office & the Convergence of Patent Harmonization and E-Commerce

Article excerpt

Table of Contents  INTRODUCTION I. PRELIMINARY CONSIDERATIONS    A. Countries with Defense Technology Requirements    B. Countries that Require a License for All Inventions    C. Countries with National-First Filing Requirements    D. Countries with No security Provisions       1. First-Filing Requirement Summary II. TRADITIONAL BENEFITS OF U.S. PROVISIONAL PATENTS       EXTEND FROM DOMESTIC TO FOREIGN FILERS    A. Mitigating the Risk of "Thin" Provisional Filings    B. "Thin" U.S. Provisional Applications Will Secure       Priority    C. Establishing Right to Priority via Provisional Patent       May Extends Exclusivity Term from 20 to 21 Years....    D. Foreign Applicants Obtain Earlier 102(e) Prior Art       Dates for their U.S. Patents if they are Based on       Provisional Applications    E. Favorable Costs       1. Initial Filing Fees in the U.S       2. Renewal Fees in U.S. vs. EU       3. Contingency System    F. Language Allowances    G. Multiple Provisional Filings Enable Iterative       Improvements to Inventions    H. U.S. Provisional Patents are Time-Efficient III. THE AMERICA INVENTS ACT BROADENS PATENT       PROTECTIONS FOR FOREIGN APPLICANTS SEEKING       PROVISIONAL PATENT PROTECTION    A. First-to-file Transition Accentuates Streamlined       Features PPAs       1. Expanding Web Resources Expedite Assignment       of Priority Date    B. Elimination of Section 102 Geographical Limitations       & "Grace Period" Provisions Embrace the Global       Economy       1. Geographical Limitations Eliminated       2. AIA Institutes a Unique "Grace Period" Provision ..    C. Alternate Considerations for Foreign Provisional       Filers in Post-AIA World       1. Maintenance of Record Keeping and Notebooks       for Derivation Proceedings       2. AIA and the "Mixed Bag"  CONCLUSION 

INTRODUCTION

The U.S. provisional patent provided for in 35 U.S.C Section 111(b) was created in 1995 as component of the Uruguay Round implementation for the General Agreement on Tariffs and Trade (GATT). (1) Nearly two decades later, with the growth of eCommerce technologies (2) and the convergence of several international treaties, (3) these lower-cost filings have taken hold. Since 1995, over 1.7 million provisional applications have been filed, (4) with 160,000 provisional patent applications (PPAs) filed in 2012 alone. (5) According to United States Patent and Trademark Office (USPTO) annual reports, the provisional application filing-rate expanded from 27% of the nonprovisional rate in 2002 to over 30% in 2007. (6) This growing rate is due, in part, to an increase in foreign applications, which accounted for 49% of total worldwide utility patents granted in 2007 (51% of U.S. origin). (7) By 2012, the percentage of total foreign utility patents granted grew to 52%. (8)

One important driver of this growth in U.S. patent filings is technology. In particular, modern web-based filing tools decrease the time and costs required to file patents internationally. Because satisfaction of disclosure and written description criteria (9) most often require the guidance of a patent attorney, several proprietary providers such as patenfiler.com, (10) nolo.com, (11) and patentexpress.com, (12) have appeared, each offering interactive sites where applicants can search for prior art, consult with an attorney, and file electronic applications using a single resource.

Notwithstanding these technological advantages, the PPA has sustained popularity around the world due to its limited formal requirements. (13) To establish an effective filing date for a PPA, an applicant need only provide a brief description of the invention and drawings (if necessary for an understanding of the invention). (14) While the provisional application itself does not lead to the grant of a patent, it does give rise to a priority date for a subsequent, non-provisional application. (15) The non-provisional application must be filed within twelve months of the date of the PPA filing and must include a reference to the provisional application. …

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