Posts Tagged “Priority”

It may seem obvious in hindsight, but a regular utility application is a continuation or CIP of any earlier filed provisional application. If you add material to the provisional, as most often is the case, then any claims directed to that new material do not get the priority date of the provisional. See Finnegan’s blog post: Getting Priorities Straight: Patents Have No Presumptive Entitlement to Priority Date of Provisional Applications

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The second half of the perennial TV news story about people lining up for hours to buy some limited resource is the next day followup story about how the tickets can only be found on StubHub. How do those resellers get their supply of tickets. One way is to hire people to wait in line on their behalf. On an individual basis, you too could get front-of-the-line access to a show without spending two nights in the rain and cold. How? By buying someone’s place in line. Everybody has their price, at least for something like seeing a concert. Maybe not for a dollar, maybe not for $20, but surely for some price you could buy one of the first 20 spots in any line.

As it turns out, a small change of prior art definition of the new patent law may, repeat may, allow you to buy yourself an earlier priority date with respect to someone’s prior patent application than you would normally be entitled to! Or, from the other perspective, you may be able to monetize your invention even before your patent application is examined by selling your priority date.

How does this work? Apparently, as part of the new definition of what constitutes prior art for obviousness, there is an exclusion for prior work performed by other inventors to whom you are joined by a joint research agreement. Thus, if university professor A files an application on day 1 and company B signs a joint research agreement with professor A on day 100, company B can then “invent” a small improvement to professor A’s invention – one that would probably be obvious given professor A’s work – but have professor A’s work treated as their own for obviousness prior art purposes.

To be clear, this is an observation that I was told about, not an accepted interpretation of the America Invents Act. No one knows if this will really work, since no one has tried it yet. And of course, just like buying a place in the ticket line, finding the right price (i.e., the value of the joint research agreement) for eliminating one or two pieces of prior art will be an interesting negotiation.

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