Federal Circuit Decision Highlights Traps In Provisional Application Practice

Milton Springut, New York Law Journal

March 27, 2017


Filing a provisional patent application is a popular and relatively inexpensive way to get something on file with the Patent Office and achieve an early priority date.  With the adoption in 2011 of the first-to-file rule, this procedure has become even more popular.  Some applicants file a “half-baked” provisional application to secure a priority date, with the intention of filing a later, more complete application in which they fix any errors or inconsistencies in the first-filed provisional.

Our article in the New York Law Journal, Federal Circuit Decision Highlights Traps in Provisional Application Practice, discusses the recent decision in MPHJ Technology Investment, LLC v. Ricoh Americas Corp. (2017), which points out some of the traps that can arise from employing such a strategy.  Also discussed, are best practices in preparing provisional patent applications. 

Click here to get this article.