Pilot Program to Extend Provisional Patent Applications One Year

There is a new pilot program by the U.S. Patent and Trademark Office that is being described as a way to extend provisional patent applications for a year, to allow extra time for marketing and commercialization.

This pilot missing parts program described in the Federal Register on December 8, 2010:

http://edocket.access.gpo.gov/2010/pdf/2010-30822.pdf

I strongly recommend that any applicant considering this method use caution. The applicant will have to file a non-provisional application in condition for publication and including at least one claim, a declaration, and basic filing fee. The applicant will still have to make foreign filing decisions within a year of filing of the first provisional application.

To avoid a risk of invalidity and unenforceability, this non-provisional, "missing parts," application should be written by an attorney.

If an applicant files a do-it-yourself application as part of this program, and later decide to pay the rest of the fees (search and publication fees), there is a strong risk of having problems with the application. The problems will be part of the file history and may result in invalidity of any resulting patent (i.e., may be impossible to fix).

Of course I always recommend that any provisional application be drafted as if it were a regular application to reduce risks of invalidity and unenforceability.

Bilski Supreme Court Decision

The Bilski Supreme Court Decision is out. The invalidity of claims to a method of hedging were affirmed. The Supreme Court declined to generally invalidate software patents and instead held that the Federal Circuit's Machine-or-Transformation test is not the exclusive test to determining if a method is statutory.