Intellectual Property Attorneys


The New Patent Law in New Zealand

Foreign Applicant Filing of Provisional Patent Applications - Post-AIA Considerations

10 years ago

Prior to the America Invents Act (AIA), foreign patent applicants would frequently file provisional applications in the US, contemporaneously with patent applications in their home country, to take advantage of the then-obtaining benefits under 35 USC 102 (e), affording prior art effect to such US provisional application as of its filing date when followed by a non-provisional US application based thereon and subsequently published under 35 USC 122 (b).   This “US origin” benefit of the provisional application under such circumstances having prior art effect as of its filing date was an incentive for such provisional filing, since corresponding prior art effect was not accorded to foreign patent applications as of their filing date, under the so-called “Hillmer Doctrine.”

The Hillmer Doctrine has been abolished by the AIA, and the effective filing date of a foreign patent application is accorded the same prior art benefit as a provisional US patent application filing that subsequently in non-provisional proceedings is published.

The advantages that remain in favor of US provisional applications include (1) the flexibility to revise and restructure the disclosure of a US provisional patent application in a subsequent US non-provisional application, and to maintain the provisional filing date for the subject matter that is common to the provisional patent application, (2) minimal cost of provisional filing, with current (January, 2014) provisional filing fees being $260 for large entity applicants, and $130 for small entity applicants, and (3) lack of format or formal requirements for provisional application filing, thereby enhancing its character as a “run to the Patent Office” submission option.

Steven Hultquist

January 25, 2014

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