Supporting Priority from Provisional Patent Applications

While the provisional patent application (PPA) itself does not lead to the grant of a patent, it does give rise to a priority date for a subsequent, non-provisional application. To claim priority, a non-provisional application must be filed within twelve months of the date of the PPA filing and must include a reference to the PPA. 35 U.S.C § 119(e). No new matter may be introduced into a non-provisional application after its effective filing date. 37 C.F.R. 1.53 (b).

Because the USPTO does not make PPAs publicly available, it is difficult to determine whether, on average, most non-provisional applications add new matter after the effective filing date. Professor Dennis Crouch recently explored this question, examining 2,000 published patent applications filed on or after March 16, 2013, each claiming priority to a provisional application filed before that date. Dennis Crouch. “Claiming Priority to Provisional Applications.”, 8 April. 2014.

Professor Crouch found that 80% of non-provisional applications “assert that all claims in the non-provisional are fully supported by [the] provisional application.” Id. The fact that such a large percentage of non-provisional applicants assert full disclosure by a PPA raises the question of whether these applications will be vulnerable to attack under the new first-to-file system.

That a PPA enables a potential extra year of patent eligibility at the end of its term is of well-known importance to products with lengthy development pipelines. In some cases, inventive advances achieved during this extra year are unanticipated and unsupported in a prior filed PPA. A future challenge to priority of such an application may very well focus on the new matter introduced during product development. That so many provisional patents expire without ever being relied on as a priority document (48% in 2011) may suggest that a large number PPAs are not crafted to anticipate the full range of possible product developments . Id.

Those successful at challenging applications which are filed on or after March 16, 2013 and which claim priority to a PPA filed before that date will be dually rewarded; both the effective filing date of the underlying application will change and the application will be subjected to new, somewhat uncertain AIA standards. Uncertainty regarding the obviousness standard in particular has been amplified by issuance of the USPTO’s post-KSR guidelines, the Supreme Court’s KSR v. Teleflex decision, and several recent Federal Circuit rulings.