Patent It Yourself - PDF Archive

58 | Patent it YOURSELF
invention after you file your PPA would have a later filing
date than yours, so you would almost certainly be able to
win any interference with the thief. To win, the thief would
have to prove conception of the invention before you did,
and have been diligently attempting to reduce it to practice
(by filing a PPA, RPA, or building and testing it) at the very
time that you filed your PPA. This would be very hard to
prove unless it were true.
Assuming you prepare it properly, there are other
advantages to using a PPA in place of actually building and
testing the invention. These are:
• You need not incur the expense and time usually
involved in building and testing an invention in order
to reduce it to practice.
• You need not keep meticulous records of whatever
building and testing you do accomplish.
• You need not obtain witnesses.
• You can be certain that your PPA will provide
excellent proof of inventorship.
• You will be certain that your PPA’s early filing date
can be relied upon, provided your description of the
invention in the PPA is legally sufficient as described
below. (To rely on an actual reduction to practice by
building and testing your invention, you have to keep
adequate records of your building and testing activities
and be prepared to prove the validity of these records
in a court or in an interference.)
• You can file a technical article (which you might have
written anyway) as a PPA. (But remember, the article,
to be adequate for a PPA, must fully disclose how to
make and use the invention claimed in the RPA. As
stated, the RPA must be filed within one year.)
• You can file a PPA, then within one year, file an RPA,
which has the practical effect of delaying examination
of the RPA and extending—up to one year—your
patent’s expiration date. In other words a PPA gives
you a filing date that does not start your 20-year patent
term. Pushing your patent monopoly term ahead a
year can be profitable if your invention is ahead of
its time and is likely to have its best sales 20 years
from now—for example, as often happens with drugs.
However, if you have built and tested your invention
and made a proper record of this (see Section F3), you
can also safely push your monopoly ahead by filing
your RPA later. (A PPA can be converted to an RPA
(Rule 53(c)(3)) but I advise against doing so since
the patent will expire 20 years from the filing date
of the PPA rather than 20 years from the filing date of
the RPA.)
• If you’ve filed an RPA and wish to restart your 20-year
term, you can do so by converting the RPA to a PPA
and then filing a second RPA. To make the conversion,
file a petition (a simple request letter will do) with
the prescribed conversion fee (see Fee Schedule in
Appendix 4) within one year of the RPA’s filing date.
The PPA will take the first RPA’s filing date. Then file
the second RPA, also within one year of the first RPA’s
filing date. The second RPA should claim the benefit
of the PPA’s filing date. The second RPA will expire 20
years from its own filing date, so you’ve restarted your
20-year term about a year later, albeit at a price.
• You can refer to your invention as patent pending once
you’ve filed a PPA. This can be a marketing advantage,
especially with companies that will not discuss any
invention that is not patent pending.
• Suppose you file a PPA and then, within a year, you
file an RPA which claims the benefit of the PPA’s filing
date. If your RPA issues as a patent it will be effective
as a prior-art reference as of its PPA’s filing date.
• If you are able to license or sell your invention before
it is time to file a PPA, your licensee or buyer will have
the opportunity to prepare and file the RPA using
their own lawyers.
• Preparing an RPA after you’ve prepared a PPA
will give you a second opportunity to perfect your
application.
• If you file a PPA and thereafter make any changes in
the invention, you can file additional PPAs to cover
the changes. You can claim the benefit of as many
PPAs as you want in any RPA(s) you file, so long as all
PPAs you claim priority from were filed within a year
preceding the RPA’s filing date.
• You can put multiple inventions in a single PPA and
claim the benefit of these in separate RPAs, provided
the RPAs are filed within a year after the PPA was
filed.
5. Disadvantages of the PPA
Alas, every silver box seems to contain a cloud. The disadvantages
of filing a PPA are as follows:
1. You may tend to forgo building and testing and lose
the concomitant advantages, such as determining
whether the invention is operable, practical,
or useful, and having a working prototype to
demonstrate to prospective manufacturers. (See
Section E above.)
2. Your PPA may fail to contain a full a description
of how to make and use the invention or any
embodiment of it. In this case, you won’t be able to
rely on the PPA’s filing date for the invention or any
embodiment.