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The AIA Three Years Later: How First-to-File Placed a Premium on Provisional Applications

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The Leahy-Smith America Invents Act (AIA) has been the biggest change to U.S. patent law in 60 years. Now that the dust has settled, we are starting to see the impact the AIA has had on the landscape of patent prosecution, and particularly on the status of provisional patent applications.

provisional-patentWhile obtaining the earliest possible filing date for a patent application has always been crucial, the switch from first-to-invent system to a first-to-file system under the AIA has had the effect of making an early filing date more important than ever before. Traditionally, provisional applications have been the vehicle for inventors to easily obtain the earliest possible filing date, but under the new law, the role of the provisional application is maturing into a significant piece of the prosecution puzzle.

Provisional Applications Pre-AIA
The USPTO began offering the option of filing a provisional patent application to inventors in 1995. The purpose of this option was to provide a low-cost alternative to filing a traditional application, allowing inventors to more easily obtain an early filing date. Relaxed requirements and no examination by the PTO meant that inventors could file a bare bones “cover sheet” application containing only a written description complying with §112(a) in order to secure a priority filing date. The 12-month pendency of a provisional application gave inventors a window in which to gather the necessary resources to draft and file a full nonprovisional application, complete with claims and drawings.

Provisional Applications Post-AIA
The implementation of the America Invents Act on March 16, 2013, has placed a new demand not only on the timeliness of filing provisional applications, but also on their quality. Because the earliest effective filing date is now the determiner of which party gets to claim rights to a particular invention, inventors stand the chance of being scooped by others if they file a poorly drafted provisional that leaves out key claimed matter.

Despite retaining its informal nature, patent practitioners are finding that drafting a comprehensive and truly complete provisional application is in the client’s best interest. This means that many practitioners will draft a provisional application just like they would a nonprovisional application, including all necessary drawings and a full set of claims. A robust provisional application ensures that matter claimed in a nonprovisional application is adequately supported by the disclosure in the provisional, and in turn ensuring the applicant can claim the benefit of the priority filing date. In the post-AIA race to the patent office, a well-drafted provisional application can now be the deciding factor in securing an applicant’s rights to their invention.

With speed and efficiency being paramount post-AIA, patent attorneys are increasingly turning to technology to assist them in their prosecution practice. Platforms like LexisNexis PatentAdvisor® offer analytics that can help patent prosecutors refine and streamline their prosecution strategy.

By analyzing statistics on elements like allowance rates, examiner averages and art unit performance, patent attorneys can make quick, data-driven decisions and adjust their strategic vision in real time to meet the ever-evolving needs of their clients in a post-AIA world.




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