Abstract
In a cae of first impression, the Federal Circuit in New Railhead puts an end to the patent myth that an American provisional patent application permits American small businesses, universities and individual inventors to take a break from patent reality for one year. The myth would let anyone simply "stamp in" a raw disclosure without claims; then, the applicant would have one year to spend the money to draft a proper disclosure and claims as a regular patent application. The myth runs that priority will then be granted back to the provisional date if the claims of the new application cover the invention found in the raw disclosure.
One may ask why the myth has endured for the more than seven full years that the provisional system has been up and running. The answer lies in the hidden nature of the problem, one that is often unknowingly fatal to foreign patent rights. See § II, A Hidden Myth. It is only generally in litigation that domestic defects are uncovered; hence, it has taken fully seven years for a case of first impression to be decided by the Federal Circuit to confront the issue.
Once and for all, the Federal Circuit has spoken and explained in detail precisely why priority standards under 35 USC § 112, ¶ 1 are no different than for any other parent case.
See
§ III,
The New Railhead Reality
.
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