There is a procedure for converting a US provisional patent application into a non-provisional patent application. The practitioner who follows this procedure (instead of simply filing a non-provisional with a domestic benefit claim) will put the client in the position of incurring an extra government fee and losing some patent term.
So why would anyone ever carry out this procedure? There is a real-life situation where this might be the clever thing to do, as I learned the other day from a smart member of the EFS-Web listserv.
It’s a sort of sad discussion topic, but it comes up in the Internet discussion groups every few months. Here’s an example:
Do any of you know of countries outside the US that have a “grace period” after a public disclosure of an invention for filing a patent application in the country directed to the invention?
Sad because one wishes that the would-be inventor had consulted competent counsel before permitting the public disclosure to occur.
Imagine you are counsel representing a patent owner in an infringement case. Suppose you can say to the judge and jury:
Ladies and gentlemen, you have heard my learned opponent invite you to consider whether perhaps this patent should never have been granted because of prior art that was overlooked. But you might be interested to know that during the time that this patent application was pending, prior art searching was carried out by not one, not two, not three, not four, but five patent offices. The Examiners in these five patent offices were fluent in the Chinese, English, French, German, Japanese and Korean languages. Before the claims were found to be patentable, these Examiners shared with each other the prior art that they found. The Examiners from these five patent offices shared their thoughts as to whether the claims were patentable in view of the prior art that was found. Only after all of these things took place did the patent office decide to grant a patent. And this is the patent before you now.
I’d call such a patent a Super Patent. Yes under US law any patent is to be presumed valid, but I suggest such a patent would enjoy a much greater presumption of validity. Would you like to learn how to get such a Super Patent? Continue reading “Getting a Super Patent”
I am delighted to be able to invite people to attend a pharma/biotech continuing legal education program. This remarkable program lets you hear from an important person in the biotechnology part of the European Patent Office, Dr. Klaus-Peter Döpfer, and a very experienced patent practitioner in the pharma/biotech field, Ms. Sandra Pohlman. They will talk about smart ways to draft patent applications with EPO subject matter eligibility in mind. Continue reading “Pharma/biotech European patent claiming CLE free of charge!”
Attend a webinar this coming Tuesday, June 19th. The subject is PDX and DAS. Or maybe you do not need to attend, because you already have mastery of PDX and DAS! Those who have mastery of PDX and DAS should have no problem passing this DAS quiz. Continue reading “PDX and DAS on Tuesday”
In a recent blog post I listed the remarkable number of opportunities in the next few months for public PCT and DAS training programs. What readers might not know about is that in addition to the many PCT and DAS training programs that are provided to the general public, many PCT and DAS training programs take place privately at law firms and corporations, as I will describe. Continue reading “Private in-house PCT and DAS Training”
