provisional to a CIP?

[pmarlow]

What is the name of your state? CA

While I have an NPA pending, I have been preparing a revision showing a lot of new material and improvements. I would like to start commercializing the invention soon, but I don't have the time or money to invest in pursuing the revision as a CIP right now. I'd also like to wait to file the CIP at least until after I receive a first office action back on the original NPA. Can I file the revision as PPA now and as a CIP later, gaining the benefits of the priority date of the PPA for the new material and improvements?

I intend to pursue international patents. I am also concerned that with publication of my original NPA soon by the PTO, others may be inspired invent the same improvements and submit patent applications for or commercialize them before the PTO gets my CIP.

 

[divgradcurl]

While I have an NPA pending, I have been preparing a revision showing a lot of new material and improvements. I would like to start commercializing the invention soon, but I don't have the time or money to invest in pursuing the revision as a CIP right now. I'd also like to wait to file the CIP at least until after I receive a first office action back on the original NPA. Can I file the revision as PPA now and as a CIP later, gaining the benefits of the priority date of the PPA for the new material and improvements?

Yes, but you may run into some problems if you do this. Normally, you would simply file the CIP claiming priority back to the filing date of the parent application, and so long as the parent hadn't issued, you wouldn't run into any problems. The trouble here is that any "new matter" is only entitled to the filing date of the CIP, although any "old matter" would be entitled to the parent's filing date.

If you file the "CIP" material as a provisional, this isn't really a CIP, this is a whole new application, because a provisional cannot claim priority to another application. See MPEP 201.04(b)(7). The problem here is that you would have two co-pending applications that contain some material that is the same, but are not related applications -- this could very well lead to a situation where the first application becomes "prior art" for the second application, which could result in the second application being rejected under 102 or 103, or the examiner could declare an interference.

You could let the original application go abandoned before it gets published, that would resolve the issue with the earlier application being prior art to the later application, but that seems extreme. If the priority date is an issue, you are best served probably by filing the CIP as an actual CIP, claiming priority back to the parent application's filing date. That's really the only way you can guarantee the right priority date for the new material without causing a potential interference or prior art issue.

I intend to pursue international patents. I am also concerned that with publication of my original NPA soon by the PTO, others may be inspired invent the same improvements and submit patent applications for or commercialize them before the PTO gets my CIP.

That is a concern -- but remember, the U.S. (at least for the time being) is still a "first-to-invent" system, so if you can prove that you invented your improvements first, and can show dilligence in reductin to practice between the time of invention and the time of filing of the application, you should be able to prevail over an earlier-filed applicatin for an improvement to your earlier invention in an interference.

But, like I said, the absolute best route would be to simply file a CIP to your original application -- maybe not the cheapest way, but the best way to preserve your rights, based on what you have written here.

 

[pmarlow]

Thank you for the helpful comments.

If you file the "CIP" material as a provisional, this isn't really a CIP, this is a whole new application, because a provisional cannot claim priority to another application. See MPEP 201.04(b)(7). The problem here is that you would have two co-pending applications that contain some material that is the same, but are not related applications -- this could very well lead to a situation where the first application becomes "prior art" for the second application, which could result in the second application being rejected under 102 or 103, or the examiner could declare an interference.

What is your opinion of the following strategies:
1) I file the revision first as a provisional and then as a new application while concurrently pursuing the prosecution of the original application. I file a terminal disclaimer to avoid a prior art rejection of the second application, giving up the full 20 year term of the new material.
2) I file the revision first as a provisional and then as a new application while concurrently pursuing the prosecution of the original application. The new application does not include any claims to the invention of the original application, only claims to the new material and improvements.

That is a concern -- but remember, the U.S. (at least for the time being) is still a "first-to-invent" system, so if you can prove that you invented your improvements first, and can show diligence in reduction to practice between the time of invention and the time of filing of the application, you should be able to prevail over an earlier-filed application for an improvement to your earlier invention in an interference.

I work alone at a computer. I don’t use bound notebooks with dated witness signatures. Would you recommend using the PTO's "Document Disclosure" system to protect my status as first-to-invent? All my time between the time of invention and the time of filing of the application is being occupied by my efforts to document the invention, including prepare the drawings, for patent preparation purposes. I am inventing improvements and new species faster than I can complete the documentation. I have a lot of material to file by Document Disclosure. Is that a problem? I can wait a little longer before commercializing the new material and improvements.

 

[divgradcurl]

1) I file the revision first as a provisional and then as a new application while concurrently pursuing the prosecution of the original application. I file a terminal disclaimer to avoid a prior art rejection of the second application, giving up the full 20 year term of the new material.

You could do this, assuming the examiner rejected the second application on the basis of double-patenting and not 102 -- however, if you go this route, remember that a terminal disclaimer can seriously limit the later use of your patents. If you file a terminal disclaimer to avoid a double-patenting rejection, both patents MUST be co-owned for the duration of the patent term, or BOTH patent become unenforceable. See MPEP 804.02(II). What this mean is that if you use a terminal disclaimer to overcome a rejection, you cannot sell one of the patents -- you either have to sell both, or none. As soon as the patents are not co-owned, both because unenforceable.

This may or may not be an issue for you, depending on how you intend to develop and market you invention. But if it something you might want to consider down the road, use of a terminal disclaimer will foreclose that option.

2) I file the revision first as a provisional and then as a new application while concurrently pursuing the prosecution of the original application. The new application does not include any claims to the invention of the original application, only claims to the new material and improvements.

That may work -- the problem is if the examiner believes that the original application fully discloses and enables the claims in the second patent, the first patent may be prior art to the second patent, like discussed earlier. If there is enough "new matter" added to the second application, this may be an acceptable risk.

I work alone at a computer. I don’t use bound notebooks with dated witness signatures. Would you recommend using the PTO's "Document Disclosure" system to protect my status as first-to-invent? All my time between the time of invention and the time of filing of the application is being occupied by my efforts to document the invention, including prepare the drawings, for patent preparation purposes. I am inventing improvements and new species faster than I can complete the documentation. I have a lot of material to file by Document Disclosure. Is that a problem? I can wait a little longer before commercializing the new material and improvements.

You best bet is to print stuff out, sign and date it. It's not a perfect solution -- a witness signature would be best, or you could use a notary to witness -- but signed and witnessed inventors notebooks, while probably the best sort of evidence, are not the only sort of evidence. If you can somehow prove up the date, that should be sufficient. You could maybe get a notary (especially if you ave a firend that is a notary) to witness your signature and date on batches of documents -- but even an unwitnessed date and signature will provide some level of evidence.

 

[pmarlow]

Thank you, divgradcurl.

You best bet is to print stuff out, sign and date it. It's not a perfect solution -- a witness signature would be best, or you could use a notary to witness -- but signed and witnessed inventors notebooks, while probably the best sort of evidence, are not the only sort of evidence. If you can somehow prove up the date, that should be sufficient. You could maybe get a notary (especially if you ave a firend that is a notary) to witness your signature and date on batches of documents -- but even an unwitnessed date and signature will provide some level of evidence.

You didn't address the subject of the PTO's Document Disclosure. Is that not an good alternative to using a notary/witness?

 

[divgradcurl]

Thank you, divgradcurl.



You didn't address the subject of the PTO's Document Disclosure. Is that not an good alternative to using a notary/witness?

That is another alternative that would likely serve to prove invention and perhaps dilligence.

 

[pmarlow]

I just discovered that the Disclosure Document program of the PTO has been discontinued as of 2/1/07. See:
http://www.uspto.gov/web/offices/pac/disdo.html

I guess I'll get all my documents bound and notarized ASAP and do the CIP as soon as possible. Thank you.