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| Issue
18 | May 10, 2002 |
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| File Provisional Applications with Declarations |
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The U.S. Patent Statute does not explicitly define the date when a U.S. patent claiming priority to a U.S. provisional patent application becomes effective as prior art under 35 U.S.C. §102(e). However, in adopting Final Rules for implementing the domestic priority system, the U.S. Patent and Trademark Office ("PTO") has decided that a U.S. patent will be treated as "prior art under 35 U.S.C. §102(e) as of the date of filing the [parent] provisional application."
For PCT applications, Section 102(e) states that the international application "shall have the same effect [as] a national application" if published in the English language. However, according to the Final Rules, the PTO defines the filing date of the PCT application as the date when the requirements of 35 U.S.C. §§ 371(c)(1)(Fee), (2)(Copy in English), and (4)(Declaration) are fulfilled. Consequently, most US-PCT applicants will want to file the appropriate Declaration under PCT Rule 4.17 in order to obtain an effective prior art date as of the filing date of the international application. In fact, a suggestion in the Final Rules that Section 371(c) be amended to remove the requirement for a declaration, was merely "taken under advisement as part of a comprehensive effort by the PTO to re-engineer the entire patent process."
In contrast to PCT applications, a declaration is not required in a provisional application. Consequently, for PCT applications claiming priority to provisional applications, the PTO assigns the later PCT filing date as the effective prior art date under Section 102(e) (as long as the appropriate Declaration is also filed). But Declarations are not prohibited in provisional applications. Therefore, if a Declaration were filed with a parent provisional application, then there is no reason that the child PCT application should not become effective as prior art under Section 102(e) as of the provisional filing date.
The benefit of filing a Declaration with the provisional application is that the U.S. National Phase application does not have to be filed concurrently with the PCT application in order to obtain the earlier provisional application filing date as the effective prior art date under Section 102(e). Consequently, applicants should be able to postpone their U.S. National Phase application for the full 30 months from the provisional application date without losing any defensive rights under Section 102(e).
Of course, since this approach is still untested before the courts and PTO, the safest procedure is still to file any U.S. National Phase application concurrently with the PCT application. Nonetheless, the incremental cost of including a Declaration with the parent provisional application is negligible, and it may put your clients in a good position to take advantage of any future clarifications of the law.
To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.
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