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Monday, March 24, 2008 8:00am — STRATEGIC MANAGEMENT OF IP Provisional strategyProvisional patent applications are there to secure a priority date. If you're a large entity, it may buy you an extra year of patent life - making it up to 21 years instead of 20. If you're a smaller, private equity backed company you may also use a provisional to get a priority date prior to some important disclosure, and to buy time to further enable certain aspects of the invention before you have to file your 'full' application (such as a PCT application) 12 months later (the 'Convention period' - ie under the Paris Convention). Unfortunately, its not uncommon for a small entity to withdraw and re-file a provisional in order to buy some more time, either to complete development work, or to obtain further funding. So far so good. So how can you use provisionals strategically? Well, there's lots of ways - here's one. Try filing a provisional periodically (say once a month) throughout the 12 month Convention period. That way, at worst you lose 1 month's priority, instead of up to 12 months if you have to fall back because of a slower development or lack of funding. How much does this cost? Not much at all - ask your attorney what the filing fees are. Eg. - my suggestion would be to file in the US - which is $120 per filing - $1200 for the ten extra filings. If you're not so keen on this, then at least file a provisional just before each major disclosure event that occurs (such as discussions with potential suppliers of capital, or potential licensees). Post a Comment | Permalink | + del.icio.us 4 CommentsDuncan saidMaria - this is a great point and extremely important to watch - depending on the jurisdictions involved - thank you. posted on Tuesday, March 25, 2008 8:47am Michelle Jones saidHi Duncan. I think that Maria’s comment is broadly applicable and applies to all jurisdictions that are part of the Paris Convention. posted on Tuesday, March 25, 2008 12:44pm Duncan saidThanks Miichelle (and thanks again Maria) for correcting my inelegant post - this is really valuable. So I should have said in the strategy above that you need to first withdraw your current provisional, and then refile the following day in Paris Convention countries (which are almost all countries of commercial interest). Delighted to be corrected - thanks very much. Any other comments on strategic use of provisionals, anyone? For everyone's sake, here's the text of Article 4C(4) of the Paris Convention which Maria and Michelle are referring to: "(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority." posted on Tuesday, March 25, 2008 3:44pm 0 Trackbackstrackback url: http://duncanbucknell.com/trackback.php?id=304 |
 
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Maria Nichol said
http://www.glpg.com/
I just wanted to add a word of warning from a UK/EP perspective. In these territories at least you have to unconditionally abandon the earlier application in order to be able to take the benefit of a later priority date before you file the subsequent application from which you want to claim priority. If this is not the case then you lose your ability to claim priority and you are only entitled to your filing date. You can use a rolling priority filing strategy, but you have to abandon first (I think this can be a letter sent in the day before you file). It is pretty straightforward in the UK and (unlike the US) theUK-IPO charges no filing fees, so the only cost is your attorney charges.
posted on Tuesday, March 25, 2008 8:43am