April 24, 2003

Louis Zarfas, Esq.
Editor-in-chief
Journal of the Patent and Trademark Society

RE: The Hidden Advantages for Foreign Applicants When First Filing United States Provisional Applications

Dear Mr. Zarfas:

I enjoyed reading William B. Slate's article "In Defense of the Misunderstood Provisional Application" in the March issue of the JPTOS. I have long advocated use of provisional applications, particularly to foreign applicants to avoid the last clause of 35 USC 119(a). I have one followup point in that regard and one cautionary point respecting the Paris Convention.

As Mr. Slate rightfully points out, 102(b) applies vis-a-vis a date of filing of a United States patent application. Therefore, a patent applicant that relies upon 35 USC 119(a) priority (Paris Convention claim to a prior filed foreign application) instead of 35 USC 119(e) priority (claim to the benefit of an earlier filed provisional application) disadvantages himself. But Mr. Slate did not identify the scope of the disadvantage. To clarify the scope of the disadvantage, consider the following two fact patterns, in which all applications have the same disclosures.

First fact pattern: An invention is invented in a foreign country. The assignee of the invention first files a foreign national patent application for the invention in that foreign country. Just within the Paris Convention year, the assignee files a 35 USC 111(a) regular United States patent application (or a PCT application).

Second fact pattern: An invention is invented in a foreign country. The assignee of the invention first files a 35 USC 111(b) United States provisional application for the invention. Just within the 35 USC 119(e) one year period, the assignee files a 35 USC 111(a) regular United States patent application (or a PCT application).

In the first fact pattern, all printed publications printed more than one year prior to the date upon which the 35 USC 111(a) application was filed are 35 USC 102(b) statutory prior art. In the second fact pattern, all publication printed more than one year prior to the date upon which the 35 USC 111(a) application was filed are not 35 USC 102(b) statutory prior art; only those publications printed more than one year prior to the 35 USC 111(b) application are 35 USC 102(b) statutory prior art. In effect, by filing the provisional application in the first instance, the assignee has pushed back the 102(b) prior art date by one year.

So far, I have merely amplified on Mr. Slate's conclusion for the sake of clarity. However, Mr. Slate's article did not consider important ramifications of this difference.

One important ramification of the difference in filing procedures is the uncertainty imposed upon competitors as to invention date and concomitant potential business advantage obtained by the assignee. In the first fact pattern, the assignee's provable date of invention vis-a-vis printed publications is conclusively known by competitors to be the date of first filing. This conclusive knowledge follows as a matter of a law due to the effect of the last clause of 35 USC119(a) on the foreign application and 35 USC 102(b) on the subsequent United States application. In the second fact pattern, the assignee's provable date of invention vis-a-vis printed publications is only prima facie his first filing date, because a provisional application (1) is not limited by the last clause of 35 USC 119(a) and (2) satisfies the "application for patent in the United States" provision of 35 USC 102(b). As a result, the assignee in the second fact pattern has the right to prove a date of invention earlier than the provisional application's filing date in the USPTO and the courts of the United States due to acts of invention occurring outside of the United States, pursuant to 35 USC 104.

Consider the impact, now, of that information on a potential competitor to the assignee. Assume the competitor concludes that the patent resulting from the 35 USC 111(a) application noted above is a 'blocking patent" and then identifies a printed publication anticipating the first filing date by, for example, one month. Under the first fact pattern, the competitor knows to a legal certainty that the patent is invalid because the competitor knows that the printed publication is prior art. Accordingly, the competitor may proceed with impunity to infringe the patent.

In contrast, under the second fact pattern, the competitor does not know what date of invention the assignee may be able to prove. Therefore, the competitor now has to weigh the potential effect of the patent being valid into the cost analysis of infringing the patent. As a result, the assignee is substantially better. This is because the result of the competitor's cost analysis will influence the competitor's decision whether to compete with the assignee and, if so, the terms resulting from any licensing negotiation.

A very important point of this analysis is that the effect upon the competitor is independent of the actual date of invention provable by the assignee because the competitor does not have that date of invention information available to it. Therefore, even if provisional application is drafted concurrently with conception of the invention, there is a substantial business advantage to the assignee in filing the provisional application instead of or in addition to the foreign national application.