Ruttler Law PLLC

Provisional applications as prior art

Posted Thursday, November 05, 2009 by Jim Ruttler.

The federal circuit is considering whether a non-provisional application claiming the benefit of a provisional application is prior art as of the filing date of the non-provisional application or the provisional application. This is a new question, because the relevant statute, 35 USC 102(e) is silent in this regard. It is the case that parent international and other non-provisional applications are prior art as of the filing date of these applications. It is also the case that parent foreign applications are not prior art as of their filing dates.

Quick Links

1. Patent Applications
2. Basic Intellectual Property Law Principles

Blog Archive

Go

• 2012 (5)
  • February (1)
    • Provisional Damages
  • January (4)
    • Kodak
    • Two Contexts for Interpretation of Claim Terms
    • Best Mode Changes with America Invents Act
    • "Patent Eligible" vs. "Patentable"
• 2011 (16)
  • December (3)
    • USPTO due dates and extensions in time
    • New-Look USPTO Website
    • Streamlined Patent Appeals
  • November (1)
    • Disclosing An Algorithm in a Patent Application
  • October (3)
    • Patent Jurisdiction of Federal Circuit Enhanced by America Invents Act of 2011
    • Reconciling the CyberSource and Ultramercial Business Method Cases at the Federal Circuit
    • Federal Circuit Comments on Patent Eligibility of Abstract Ideas Within Business Methods For Internet Commerce
  • September (1)
    • Patent Reform Legislation Becomes Law
  • August (3)
    • Federal Circuit Guidance on Process Claims Recited In Conjunction With a “Computer Readable Medium”
    • Patent Reform
    • Fee Diversion
  • January (5)
    • Ex Parte Bozionek, Appeal 2010-000479 (BPAI 2011). Judge Jordan.
    • Ex Parte O'Keefe, Appeal 2010-000479 (BPAI 2011). Judge Staicovici.
    • Aktiengesellschaft, Appeal 2009-014,596 (BPAI 2111). Judge Delmendo.
    • Ex Parte Arnoldy,Appeal 2009-01008 (BPAI 2011). Judge Fetting.
    • Ex parte Isoyama, Appeal 2009-006066 (BPAI 2011). Judge Courtenay III.
• 2010 (32)
  • September (1)
    • New Patent Office Dashboard
  • August (2)
    • Patent Office Guidance Post Bilski
    • President Signs PTO Funding Bill
  • July (3)
    • Patent Office Director Kappos Speech
    • Secret Prior Art
    • Supreme Court Decision on Patentable Subject Matter
  • June (5)
    • Terminal Disclaimers
    • Update on Fast Track Patent Examination Option
    • Common Mistakes Made with Patents
    • Trademark Usage
    • New Patent Examination System Considered
  • May (5)
    • Patent Grants
    • Drafting Software Claims
    • Patent Office Director Testifies at Congress
    • Patent Issued in 4 Months
    • Secretary of Commerce urges Immediate Patent Reform
  • April (6)
    • Patent Reform 2010
    • False Marking
    • Terms of Degree
    • Initial Appeal Brief Review at BPAI
    • USPTO Proposes Option for Delaying Non-Provisional Fee
    • Means Plus Function Claims
  • March (2)
    • Patent Reform Action 2010
    • New USPTO Newsletter for Independent Inventors
  • February (2)
    • Responding to Restriction Requirements
    • Compact Examination
  • January (6)
    • Green Technology Pilot Program
    • USPTO Pilots Program to Accelerate the Patent Process for Small Entity Inventors
    • USPTO Launches Interactive Model Predicting Average Patent Pendency
    • Basic Intellectual Property Law Principles
    • Permanent Injunction
    • SPE Performance Appraisal Plan-Award Taskforce
• 2009 (44)
  • December (6)
    • Broad Patents: Balancing protection and the diffusion of knowledge.
    • 2009 Performance and Accountability Report
    • Patent Reform
    • Unified EU Patent System
    • Pilot Program for Green Innovations
    • Defense of Software patents
  • November (5)
    • Design Patents
    • PTO Withdraws Claim and Continuation Rules
    • New Patent Office Director Blog
    • Provisional applications as prior art
    • Proposed changes to RCE processing
  • October (2)
    • Patent Ownership
    • New Patent Examiner Reward System
  • September (5)
    • Nominative Fair Use
    • President's Strategy for American Innovation
    • New Patent Office Director on Objectives
    • Patent Prosecution Highway
    • Temporary Patent Office Guidelines on Patentable Subject Matter
  • August (4)
    • Trademark Requests for Reconsideration and Appeals
    • Business Legal Issues
    • Prior Art from Related Application
    • Delicious Little Candies
  • July (6)
    • Response After Final
    • Unconventional Trademarks
    • Obvious Inventions
    • More on Design Patents
    • Informal Interviews
    • When to Contact a Trademark Attorney
  • June (2)
    • Multiple Inventors
    • Supreme Court to Consider Business Method Patents
  • May (2)
    • Examiner Incentives
    • Improvements to Prior Filed Application
  • April (3)
    • Trademark Monitoring
    • Prior Art Submission
    • Design Patents
  • March (5)
    • Patent Trolls
    • Starting a New Business
    • Next Generation Law Practice
    • The Disappearance of Big Firms
    • Issued Patent in 76 Days
  • February (4)
    • Material Trademark Alterations
    • Options After Final Rejection
    • Deferred Examination
    • New Limitations on Business Method Patents
• 2008 (19)
  • October (2)
    • Provisional Patent Rights
    • Signals Alone Not Patentable
  • August (2)
    • Provisional Application Guidelines
    • Restriction Practice During Examination
  • July (1)
    • International Applications
  • June (3)
    • Improvements: New Application or CIP
    • Basic IP Checklist
    • Trademark Priority
  • May (2)
    • Proper Trademark Care
    • Trademark Abandonment
  • April (2)
    • Online Patent Auction and Listing Service
    • Records Broken at Live Patent Auction
  • March (1)
    • Patent and Trademark Notices
  • February (3)
    • Entrepreneurs and Copyright Ownership
    • Unique Product Designs
    • Trademark Oppositions
  • January (3)
    • Foreign Patent Applications
    • Pending Senate Patent Reform Bill
    • Registered vs. Unregistered Marks
• 2007 (10)
  • December (1)
    • New Prior Art Disclosure Rules
  • November (2)
    • Presidential Candidates on Patents
    • New Patent Rules Delayed
  • October (3)
    • Prior Art Searching
    • Employee Rights to Inventions
    • Improved Marketability for Patents
  • September (4)
    • New Limitations on ‘Business Method’ Patents
    • Differences Between Business Names and Trademarks
    • Proposed Patent Act
    • New Patent Rules