SW Legal studies in Business

Provisional Patent Application Trumps Later Filed Patent Applications

A provisional patent application was filed before another inventor filed a regular patent application for the same process. The provisional application was finalized after the regular patent application was filed, but the provision application has priority as it recognized the art involved.

Topic Intellectual Property
Key Words

Patent; Application; Prior Art; Provisional Application

C A S E   S U M M A R Y

Giacomini filed a patent application on November 29 for a “Method and Apparatus for Economical Cache Population”—a technique for storing electronic data in a readily accessible memory (cache). The Board of Patent Appeals and Interferences rejected the patent request as anticipated by prior art. On December 29, Tran filed a patent request that included essentially the same process. However, Tran had filed a provision patent application on September 25. The Board held that the provisional patent application filing had priority and defeated the November 29 filing by Giacomini. He appealed.


Affirmed. The Tran provisional application has priority. A patentee must be the first inventor. The process was described in the Tran provisional application, so it anticipated the process described in the Giacomini application. The provisional filing has the effect of establishing prior art that defeats later submissions.

Citation In re Giacomini, ---F.3d--- (2010 WL 2674461, Fed. Cir., 2010)

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