The general rule is that provisional patent applications are not published by the U.S. Patent Office. However, there are situations where a provisional patent application may become publicly available for the public to inspect. See http://www.patent-ideas.com/Provisional-Patent-Applications/Are-Provisional-Patent-Applications-Published.aspx for more information about the publication of provisional patent applications and the possible public availability of a provisional patent application.
Provisional patent applications (PPA) can be an extremely valuable tool for inventors and small businesses. PPAs provide inventors with one-year of “patent pending” and then automatically expire. It is therefore important to have a formal patent application (a.k.a. “non-provisional patent application”) filed during this one-year pendency period so your formal patent application is able to claim priority to the PPA’s earlier filing date.
A well-drafted PPA can potentially be licensed or sold to a third-party during the one-year period of patent pending. It is important to note that a poorly drafted PPA can have the opposite effect by deterring a potential purchaser or licensor. Also, if you are manufacturing displaying your product or displaying it at a product show, you can put the “Patent Pending” notice on the product during the one-year period.
Finally, a PPA is significantly easier to draft than a formal patent application which requires the complex claims section and is examined by the U.S. Patent & Trademark Office. Using commercial tools such as PatentWizard software (owned by Neustel Software, Inc.), you will be able to easily prepare your own quality PPA at a fraction of what a patent attorney would charge – and you just might write a better PPA!
The Board of Patent Appeals and Interferences (BPAI) has reported a large increase in BPAI appeals and in its backlog. The backlog of appeals has almost doubled to over 10,000 pending appeals. This is the result of the USPTO implementing strict review procedures which have result in an allowance rate of only about 42% (historically the allowance rate has been around 70%). Changes are occuring at the USPTO as I write this post, so we should see the BPAI appeals level off before the end of the year (and hopefully see the allowance rate get to a healthier level).
The Federal Circuit relied upon the “obvious to try” doctrine to uphold a USPTO ruling that a patent applicant’s DNA molecules encoding a protein known as ‘NAIL’ were obvious over the combined prior art references. The Federal Circuite stated that “obvious to try” is erroneously equated to obviousness if (1) the inventor is faced with “numerous possible choices … where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful” or (2) “the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” The Federal Circuit ruled in the Kubin case that a skilled artisan would have had a “reasonable expectation of success” in obtaining the claimed invention in light of the prior art. The Federal Circuit further declined to adopt any “formalistic rules” with respect to whether prior art is predictable or unpredictable. In re Kubin 08-11843
