Posts Tagged: "provisional"

The Uniloc patent invalidated by the PTAB in this case is U.S. Patent No. 5490216, titled System for Software Registration and issued in February 1996. It claims a registration system for licensing execution of digital data in a use mode, the system including both local and remote licensee unique ID generating means, and a mode switching means operable on a platform which permits the use of digital data only if the locally-generated licensee unique ID matches the remotely-generated licensee unique ID. The innovation solved issues in prior art systems for software registration for software transferable by physical media which used shell programs or did not utilize information unique to the intended licensee which is distinguishable from the identification of the platform. According to data collected from Lex Machina, Uniloc’s ‘216 patent has been asserted in 65 cases filed in U.S. district court going back to September 2003.

Although there is a popular misconception among inventors new to the field of inventing, the United States Patent and Trademark Office is never going to grant a provisional patent. A “provisional”, as it is sometimes called, is a type of patent application. A provisional application for a patent can be filed at the United States Patent and Trademark Office in order to establish priority of invention, which is critically important given that the United States is now a first to file country. Although the U.S. is not a pure first to file country it is safest for inventors to assume that first to file laws do set up a race to the Patent Office. Therefore, it is essentially in virtually all cases for an inventor to file a patent application first — before anyone else who may also be working on the same invention. This is where a provisional application for a patent can be extremely useful.

This page and website contain contain detailed information to help inventors on the road from invention to patent… Below are a sampling of inventor help links to specific patent and invention related information throughout our website. As you read these articles you will invariably come across links to other articles of interest, which you can and really should read. While I believe inventors should take the time to read all of the pages throughout IPWatchdog.com, I have gone through the IPWatchdog.com archives and created several “reading assignments,” which will hopefully make the task of figuring out where to start more manageable, and which will help get you started. I recommend you do them in this order (i.e., starting with Reading Assignment 1), but if you find something that you just need to know then by all means jump ahead. You can also visit our Inventor Education Archive as well.

To investigate whether applicants have been adopting a strategy of filing more provisional applications, we determined a ratio of the number of provisional filings (with a first-named inventor identified as being a resident of the U.S.) relative to the number of utility filings (with a first-named inventor identified as being a resident of the U.S.). As shown in Figure 2, this ratio also exhibited an uptick in fiscal year 2013, but the ratio has since returned to Fiscal-Year-2012 levels. Thus, this data suggests that applicants have generally not changed their filing strategies to file more provisional applications in view of the AIA’s change to define prior art based on applications’ filing dates.

It is important to understand what a provisional patent application is, what benefits are provided and perhaps most importantly what a provisional patent application is not. First and foremost, there is no such thing as a provisional patent. It is absolutely critical to understand that a provisional application will never mature into an issued patent! Ultimately, if you are going to want to obtain a patent you will need to file a non-provisional patent application. Thus, a provisional patent application is best viewed as an economical first step on the path to a patent.

Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.” Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.