Patents 101: The Basics of Priority Claims

Welcome back! This month we are discussing the basics of a very important, but often misunderstood, aspect of United States patent law: Priority Claims.

Priority claims are integral to the patent process. A priority claim on a patent application provides an applicant with an earlier date from which an invention is protected. This is important because subsequent patent applications will come with their own individual filing dates, and those applications, without priority claims, are protected only from those individual filing dates. Earlier effective filing dates reduce the number of prior art disclosures, increasing the likelihood of obtaining a patent.

 

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Priority claims and the America Invents Act

Effective March 2013, the Leahy–Smith America Invents Act (AIA) fundamentally changed the way in which innovation may be protected in the U.S. In short, the AIA changed the U.S. from a “first to invent” jurisdiction to a “first to file” jurisdiction. Prior to the AIA, an inventor could rely on his or her notes or other evidence showing the conception of an invention to help protect his or her patent rights. Today, the United States Patent & Trademark Office (USPTO) will deem the first inventor to file a patent application as having priority over any later-filed application for the same invention.

What this essentially means is that two inventors with the same idea must race to file for patent protection. If one inventor conceived the idea for the invention slightly before the other, this fact is essentially irrelevant in the eyes of the USPTO. While this was a huge change from our prior patent system, most of the developed world had been operating under this system for many years with great success.

 

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For example, many inventors file a provisional patent application (PPA) prior to filing a utility (or other applicable non-provisional) patent application. The PPA expires 1 year from filing, so an inventor must file said utility patent application prior to that expiration date. If the inventor wishes to pursue a patent application, he or she will file a patent application “claiming priority” to the PPA. What this does is give the inventor protection all the way back to the filing date of the PPA. This also becomes important when dealing with foreign patent applications. In the event a PPA is filed, any foreign patent applications claiming priority to the PPA must be filed prior to the 1 year expiration. While the filing of a patent application, foreign or domestic, is not dependent on having a claim of priority or PPA, these are the ways in which priority claims first arise for most inventors.

Now, let’s imagine that the inventor did not file a non-provisional patent application claiming priority to the PPA prior to the 1 year deadline. This means that an inventor who filed a PPA or non-provisional application for the same invention, during that same 1 year period, can now be considered the first to file inventor for the invention. PPAs are not examined by the PTO, so they do not offer any rights aside from the 1 year period to file a non-provisional application which dates back to that original PPA filing date. Even if the original inventor files a new PPA, the original filing date is gone, and the new PPA restarts a new 1 year clock.

So, why are priority claims important?

In summary, inventors must always be aware of priority claims, as they have the power to greatly strengthen IP protection for a given invention. However, failing to utilize them properly can have disastrous results.  If you would like to read more about priority claims, the statutes are available on the USPTO’s website under Section 211 of the Manual for Patent Examination and Procedure, also known as the MPEP.

As always, it is best to consult a licensed patent attorney to ensure your rights are protected, as they have the knowledge and expertise necessary to guide you through the complex patent application process.  This post is offered solely as some background for a discussion with your patent counsel.

I hope you have found this helpful and informative, and I look forward to seeing you back again next month for the latest installment. Happy Inventing!

PLEASE NOTE: This post is for informational purposes only. This post is not intended to  provide legal services of any kind to individual inventors.  If you seek or require legal services of any kind, please contact a licensed attorney as soon as possible.

 

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1 Comment Patents 101: The Basics of Priority Claims

  1. Jacob Downey

    I DO find these informative. I’ll admit, while I was think-reading this, it took TWO cups of creamy dreams ice cream to cool my brain. I find these IP blogs to be more than a great thinking exercise, but also a “display of possible pathways”. Thank you for helping me to separate fact from fiction.

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