Point of View May 6, 2010
The Provisional Patent Application: Myths, Realities… and new deadlines!
Inventors often wonder what path they should follow when it comes to filing a patent application. Most small companies with limited cash and unproven technologies are naturally attracted by the apparent cost deferral (but not necessarily cost savings) of filing a “provisional” application, as opposed to filing for the permanent application on day one. They also like the one year period the provisional application allows them before having to file their final application while deciding whether to commercialize their invention and invest further (or preferably find others do so). Although opinions diverge among professionals as to its pros and cons, it remains true that a provisional patent application can usually be prepared quickly and for less money. Hence, it can be most useful where the applicant is so cash strapped that it cannot afford paying for the full application immediately, or when it is on the verge of a tradeshow, a conference or meeting with potential investors (who rarely will sign a NDA), all scenarios that can trigger a “public disclosure”. Note that this is mostly relevant if the inventor intends to seek protection outside of the US (since the disclosure would negate international rights), as the US still allows for a one year grace period to file domestically after such disclosure. Finally, it may impress those same early investors who tend to look for unique and –eventually- enforceable IP as an indicator of future commercial success. But taking this route is not risk free; the final application will be limited to the patentable subject matter disclosed initially in the provisional, no more. So features or improvements not clearly described initially will not be covered. Hence, anything done too hastily or to save some money upfront may later feel penny wise pound foolish. Also, because the patent attorney will have to get reacquainted with the case a year later, the total cost of taking a two step process is likely to be higher at the end than filing just once in the beginning. Regardless, provisional applications have become increasingly popular in this economy. And a recent announcement by the USPTO may skew the balance even further in this direction. Indeed, a few weeks ago, the US agency published a proposal by which it would offer an additional 12 month “extension” to the current 12 month patent provisional application period. Under the current rule, the applicant must convert their provisional filing to a full utility patent within 12 months thereof in order to retain their priority filing date and avoid their application being deemed abandoned. Under the proposed rule, the one year delay would still be in force (only Congress can change it), but the USPTO would “look the other way” for an additional year before sending a notice of “missing parts”, in fact giving the applicant up to 24 months to make a final decision regarding their application. It should be noted however that this change would not affect foreign filings, which must still be filed within 12 months after the filing date of a provisional application in accordance with the Paris Convention. This means that the new proposed rule would not at all benefit applicants who wish to secure patent protection beyond the US territory, a common strategy nowadays as a result of globalization. Also, by exploiting the delayed payment, an applicant would forego their right to opt not to have the patent application published at 18 months from the provisional patent application filing date. Many have argued that the USPTO’s proposal is primarily self-serving in a feeble attempt to mask its terrible backlog by leaving provisional applications “off the books” for a few more months and hoping more people will abandon their application. Furthermore, by encouraging delayed filings, the cash starved agency is poised to reap more of those extra fees required for late filing. Nevertheless, this proposed change wouldn’t really impact those who don’t want to take advantage of it and it is likely to provide added flexibility to the small entities for whom buying time and deferring patent related costs by a few months are paramount to their business strategy or very survival. FTC may open antitrust probe targeting Apple. Apple's iPhone application-developer agreement, which prohibits the use of nonapproved platforms such as Adobe Flash on the device, has reportedly caught the attention of federal investigators. Reports indicate that the Federal Trade Commission and Department of Justice are considering looking into potential anti-competitive behavior on the part of Apple.
Game programmers suspected of stealing code worth billion USD Police are investigating a suspected theft of software code for online game "Lineage III" which is being developed by Korea's largest game maker NCsoft.
The Risk Of Geographic Trademarks An unprecedented immigration law signed recently by Arizona Gov. Jan Brewer has had unintended consequences on some product manufacturers who used the desert State as part of their brand. Indeed, the law has led to vocal threats of boycotts of consumer products believed to come from Arizona, including AriZona Iced Tea. The problem is AriZona Iced Tea is from New York!
China, Russia Still Among Worst IP Offenders: USTR The Office of the U.S. Trade Representative's Special 301 Committee has removed Poland, Hungary and the CzechRepublic from its watch list, but is keeping an eye on China and Russia with respect to intellectual property protection issues, according to the panel's annual report.
Record Labels Can Seek Downloader Identities: 2nd Circ. A federal appeals court has decided that record labels have the right to demand that Internet service providers hand over the identities of individuals illegally downloading copyrighted music, ruling that the First Amendment does not protect such individuals.
USPTO Panel Rejects Human Stem Cell Patent The U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences has rejected a patent on embryonic human stem cells held by the Wisconsin Alumni Research Foundation and challenged by two consumer groups.
ITC To Probe Microsoft's Xbox Controller Patent Claims In response to a complaint filed by Microsoft Corp., the U.S. International Trade Commission has voted to investigate whether Datel Design & Development Ltd.’s gaming accessories infringe patents covering controllers for the technology giant's Xbox 360 video game system.
US Bill On Radio Music Royalties Gets Key Backing The US Performance Rights Act got support from House Speaker Nancy Pelosi (Democrat, California) and Senate Assistant Majority Leader Dick Durbin (D, Illinois) last week. The Performance Rights Act seeks to equalise the rights to compensation between performers of sound recordings and terrestrial broadcasters, according to the Act summary. Musicians, artists and right holders would be paid when their music is played on radio stations. Boulder, Boca, Bend on list of top startup cities: What, no Seattle? Maybe the Seattle startup community really is second or third class. At least that's the feeling one could get after reading BusinessWeek's latest ranking of the top 10 cities for startups. While Boulder, Colorado, Boca Raton, Florida and Bend, Oregon led the list, Seattle was no place to be found.
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Louis Carbonneau
Founder & Principal
The Point Law Group
THE POINT LAW is a boutique law firm specializing in business and technology law catering primarily to technology and e-commerce companies. We offer a full range of legal and business solutions to start-ups, small and medium-sized businesses and large multinational corporations. You can contact Louis directly at: louicar@thepointlaw.com(425) 868-9280 (o)
425) 213-7252 (m)
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