[Patentpractice] Continuation from provisional?

Fri May 3 17:51:17 UTC 2024

Carl, you have it right – that was my question.   It was strange to see “continuation” of a provisional, so it made me wonder if somehow that relationship was possible.  Thank you for confirming that it’s not (and I don’t see that the provisional was converted to a non-provisional).

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

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From: Carl Oppedahl <carl at oppedahl.com>
Sent: Friday, May 3, 2024 1:17 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Continuation from provisional?

As a matter of terminology, what we are talking about is not priority.  What we are talking about is domestic benefit claims under your choice of 35 USC § 119(e) or 35 USC § 120.

Close reading of those sections of 35 USC reveal that it is legally impossible for a US non-provisional application to be a "continuation" of a US provisional.  If there is going to be any connection between your US provisional and your US non-provisional, that connection is limited to 35 USC § 119(e).

It would be possible to engineer something that would look like a US non-provisional being a continuation of a US provisional.  You would obtain a grant of a petition to convert the US provisional into a US non-provisional.  At that point you could tie the converted provisional to the later US non-provisional by means of 35 USC § 120.

It looks like you are maybe sort of asking "if I were to run down to the court house seeking a declaratory judgment that this US patent expires a year earlier than you would think, because of this word salad in the specification of the patent, and because of this word salad on the front page of the publication, and because of this word salad in the ADS, would you win?"

My prediction, assuming the patent owner were represented by competent counsel, is the court would decline to so judge.   My prediction is that the court would say something along these lines:

It is impossible for a US non-provisional application to claim domestic benefit from a US provisional under 35 USC § 120.   The patent term of a patent issuing therefrom runs from the earliest US non-provisional filing date, and that is not the same thing as the filing date of any US provisional application.
On 5/3/2024 10:56 AM, Katherine Koenig via Patentpractice wrote:
For priority/benefit claims, does the ADS or statement in the Specification control?

On a published application, the Related US Application Data (1st page) states the application is a “continuation of application No. [X], filed on [Date].”  That App. No. [X] is a provisional, 63-series.  The ADS also provided that the application is a “continuation” of App. No. [X] (provisional, 63-series).  The application was filed by a pro se inventor, so this was (I assume) an inadvertent error.

However, the body of the Specification sates “This application is a nonprovisional filing with priority to a provisional application, No. [X], filed on [Date].”

Can the application properly be considered to be a continuation of the earlier provisional for patent term calculation?  In other words, does patent term begin at the provisional filing date or the current application filing date?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

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