Provisionally shooting yourself in the foot
Posted by: Bruce in Patent Prosecution, provisional filing, tags: expired provisional, provisional application, provisional effect on interferenceLast month on LinkedIn an individual asked (and I’m paraphrasing here) whether an expired provisional application could affect (presumably for the better) the priority date of a regular patent application filed after the expiration of the provisional. That’s kind of like asking if you can make ice cream from soured milk. The answer, of course, is no; even worse, including a expired provisional application by reference in an application seems like a good way to ensure you lose the priority battle in an interference procedure.
First, let’s remember why you might file a provisional application in the first place. A provisional application is a temporary filing used to hold your priority for getting a patent - your place in line, so to speak - for getting a patent, while you consider the pros and cons of moving ahead with the process of prosecuting the patent application for that particular invention. For example, you might want to see if you can find some capital to build your business or you might be working on an even better approach to your product so putting a one year hold on the process can save you from prosecuting a patent you don’t ultimately want. By filing a provisional application you get that extra year without worrying about losing your patent rights because of public disclosures or because someone else has independently come up with the same invention during that year.
Getting back to the question posed on LinkedIn. Expired means expired (see 4/29/10 post), so your expired provisional application has lost its “place holding” value. You could always include a copy of your provisional filing as a reference in your regular application, but only bad things can accrue from that. If the provisional app has material that you are not claiming in the regular application then you are making public some material that was otherwise still confidential. Additionally, by including it and not claiming it you run the risk of dedicating it to the public.
If, on the other hand, your regular application covers all the material in your provisional application and you find yourself in an interference procedure, the admission that your invention was ready for patenting more than a year before the priority (filing) date of your regular application gives ammunition to the other party. Here in the US, the patent (if it is granted) goes to the first person to conceive of the invention AND diligently reduce it to practice, where the filing of the patent application is really the indicator that you have finished the reduction to practice. Thus, without the priority date of the provisional application on your side, you are in the difficult position of arguing away a year or more of delay in filing.
About the only argument I could imaging is poverty: “I couldn’t afford the filing fees”. But you’d probably have to produce evidence to that effect. You certainly would have a better chance of winning the interference if your regular application included new material (viz., beyond the provisional app) and did not reference the expired (NON-PUBLIC) application explicitly.

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