Patent It Yourself - PDF Archive

60 | Patent it YOURSELF
3. You may unintentionally forgo foreign protection.
This is because you cannot wait one year after filing
the RPA, as is usually done, to foreign file. Instead
you must make your foreign filing decision, as well
as your regular U.S. filing decision, within one year
after your PPA is filed. As I will discuss in Chapter
12, foreign filing is extremely expensive and few
foreign filers ever earn their outlay back.
4. You may try to license or interest a manufacturer
in your invention in the approximately ten-month
period between the time you file the PPA and the
time you must begin preparation of your RPA. Since
ten months is usually too short a period to license
an invention, you may get discouraged and fail to
file an RPA and thus give up a potentially valuable
invention.
5. If you file an RPA which claims the date of your PPA,
and you do not file a Nonpublication Request (see
Chapter 10), at the time you file the RPA, your RPA
will be published 18 months after you file the PPA, or
about six months after you file the RPA. You may not
want your application published so early.
6. A PPA’s date can be relied upon only if an RPA is
filed within one year, while a properly witnessed
record of building and testing generally can be relied
upon even if the RPA is filed several years later.
7. If you file a PPA and then file an RPA claiming
benefit of the PPA, but don’t file a Nonpublication
Request (see Chapter 10), your RPA will be published
about six months after your RPA’s filing date. Such a
publication will destroy the trade secret status, if any,
of your invention at an early date.
Note that the PTO has published the following cautions
regarding PPAs:
• PPAs are not examined on their merits.
• The date of a PPA cannot be claimed if an RPA has not
been filed within one year.
• A PPA cannot claim the benefit of an earlier
application (foreign or domestic).
• The disclosure of a PPA must be clear and complete
enough so that an ordinary person skilled in the field
of the invention can make and use the invention.
• All contributors to the inventive subject matter of the
PPA must be named in the PPA.
• The RPA must name at least one inventor that was
named in the PPA.
• In order for an RPA to claim the date of the PPA, the
PPA must be filed with the proper fee and must be
complete.
• If the basic fee is not paid with the PPA, the fee can be
paid later, but the PTO charges a penalty fee.
• PPAs are not available for designs.
• No subject matter can be added once the PPA is filed.
• No patent will result from the PPA unless an RPA is
filed within a year or the PPA itself is converted to
an RPA.
6. PPA Misconceptions
There are many common misconceptions circulating about
what a PPA can accomplish. Here are some.
Common Misconception: The PTO will read and examine
and reject or approve your PPA.
Fact: The PTO will never examine or read your PPA unless
you need to rely on its date and ask the PTO to do so in
order to obtain the benefit of the PPA’s filing date.
Common Misconception: After filing your PPA, the PTO will
grant you a provisional patent.
Fact: The PTO will never “accept,” “grant,” or “reject” your
PPA on any substantive ground. There is no such thing as a
“provisional patent” and your PPA will be discarded if you
don’t file an RPA within one year that claims the benefits of
the PPA’s date.
Common Misconception: You can modify your invention
after filing a PPA and still claim its benefits.
Fact: If you have an invention in your RPA that isn’t in your
PPA, you will simply not be able to obtain the benefit of
your PPA’s filing date for that invention, if you ever need it.
If you have an invention in your PPA that isn’t in your RPA,
the PTO won’t care. You can put any and all inventions you
want into a PPA and you can do the same with your RPA.
(However if your RPA claims multiple inventions the PTO
will require you to restrict the claims to one invention.)
Common Misconception: Filing a PPA provides the right to
stop others.
Fact: A PPA is a simple placeholder that confers no rights,
except the right to rely on its date if it’s prepared properly
and you file an RPA within a year.
Common Misconception: Filing a PPA is the only way to
document your invention short of filing a regular patent
application.