Today the Israel PTO held the second of two Zoom calls about its proposal to enable the filing of a provisional application in Israel. I participated in the first call and listened in on part of the second call, and will relate to the first call in a subsequent post. But one point that arose in both times was the assertion that the filing of a US provisional gives an applicant a grace period to file a follow-on application during the priority year, and that, if the provisional isn’t well drafted, that sense that there’s a grace period can be misleading.
Provisional applications were introduced in the US in 1995 in response to two concerns: university professors who felt that waiting for a patent application to be filed slowed the publication process; and US inventors in general who, because of rules requiring them to file first in the USA, were losing a year of patent protection versus foreign inventors, who could file first abroad, then one year later file in the US and obtain 20 years of protection from the US filing date.
These two concerns were addressed with the provisional: (a) there are no formal requirements, hence an academic paper that is about to be submitted may be submitted as a provisional and thus protect what is disclosed therein, and (b) applicants have a year to file a non-provisional that claims the benefit of the provisional filing date, thus giving inventors an extra year of protection compared to first filing a non-provisional.
It is that “extra year” that some Israeli practitioners apparently refer to as a “grace period”. The problem with that is that, in common parlance, a “grace period” is something you utilize after-the-fact, as in, “Whoops, I disclosed this yesterday, but I still have 364 days to file my patent application”. In the patent context, for US practitioners, “grace period” refers to the one-year period that, before the AIA, was granted under §102(b) against certain disclosures by others and by the inventor or applicant:
35 USC §102 (pre-AIA)
A person shall be entitled to a patent unless —
* * *
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, * * *
(Under the AIA, that grace period was severely curtailed in most respects.)
So while it’s true that, to the extent that a provisional application complies with the written description and enablement requirements, it allows the applicant to disclose to others what was disclosed in the provisional during the priority year, US practitioners, and English speakers in general, don’t refer to that period as a “grace period”. They simply refer to it as...the priority year. Just like Israeli practitioners refer to the year following the first filing, in Israel or anywhere else, as the priority year.
I don’t know who introduced this mis-use of the term “grace period” into discussions in Israel, but I wish they would cut it out. It’s both unnecessary and confusing.