Athelia travels to Walnut Canyon National Monument and discovers the physical barrier between jurisdictions. She finds three paths carved into the cliff face, each representing a different type of patent application: Provisional (12-month placeholder), Non-Provisional (full examination), and Continuation (building on prior filing).
She chooses Path Two (Non-Provisional Application) and touches the barrier symbol, initiating her filing. The barrier shatters as her genetic match is confirmed, and the download of examination protocols begins. She bonds with the wolf king applicant who has been waiting seven years for his Guardian Queen examiner. The chapter ends with Athelia waking with amnesia but physical evidence of the barrier crossing.
This chapter teaches the foundational filing requirements under 35 U.S.C. § 111, the strategic differences between provisional and non-provisional applications, continuation practice under § 120, and the critical importance of the filing date as the priority date for examination.
The three paths carved into Walnut Canyon's cliff face represent the three primary ways to file with the USPTO:
When Athelia touches the barrier, her filing date is established:
To "touch the barrier" (file a non-provisional), you must provide:
Why Athelia chose Path Two (Non-Provisional) directly:
Path Three represents advanced prosecution strategy:
The barrier represents the legal boundary between public domain and patent protection:
When the barrier accepts Athelia, she receives complete examination protocols:
Seven years of prosecution without a Guardian Queen examiner:
Question: Athelia chose Path Two (Non-Provisional) directly rather than filing a provisional first. Under what circumstances would Path One (Provisional) be the better strategic choice?
Analysis Points:
Question: The text mentions Athelia is filing a "continuation-in-part" because she has new matter (Bio-AI hybrid examination methods) to add to the ancient parent application. Why couldn't she file a standard continuation under § 120?
Analysis Points:
Question: Why does the filing date matter so much for prior art analysis under § 102? What happens to references published after the filing date?
Analysis Points:
Question: Twenty-three others tried to continue the First Woman's application and failed because they lacked the genetic match. What real patent law concept does this encode?
Analysis Points:
Question: Athelia wakes with amnesia but physical evidence (pine needles, dirt, exhaustion). How does this parallel real patent application status immediately after filing?
Analysis Points:
Giacomini filed a provisional application on July 18, 2000. He then filed a non-provisional application on July 17, 2001 (within the 12-month window) claiming priority to the provisional under § 119(e). The non-provisional was eventually granted as U.S. Patent No. 6,905,814.
During an interference proceeding, the question arose: Could Giacomini's granted patent serve as prior art against another party's application? Specifically, was the patent "effectively filed" as of its July 18, 2000 provisional date or its July 17, 2001 non-provisional date?
This mattered because § 102(e) (pre-AIA) treated a patent as prior art as of its "effective filing date." If effective as of the provisional date, it would be prior art. If only effective as of the non-provisional date, it might not be.
Does a non-provisional application that claims priority to a provisional application under § 119(e) get the benefit of the provisional's filing date for purposes of serving as prior art under § 102(e)?
NO. The Federal Circuit held that provisional applications do NOT count for § 102(e) prior art purposes. Only the non-provisional filing date matters.
The court examined the statutory language:
This case demonstrates the strategic limitation of Path One (Provisional Applications):
Path One (Provisional) is described as a "placeholder" that "holds space but doesn't examine." This mirrors *Giacomini*'s holding - a provisional holds your priority date defensively but doesn't actively function as prior art. Only Path Two (Non-Provisional) creates a complete filing that "counts" for all purposes.
The barrier won't fully shatter for a provisional filing - it would only shimmer, holding open the possibility of crossing later. Full crossing requires Path Two.
(a) IN GENERAL.—
(1)(A) Subject to the provisions of subsection (b), any person who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may make an application for a patent therefor, subject to the conditions and requirements of this title.
(B) Notwithstanding subparagraph (A), any person who has been denied an application for a patent under section 2181(a) of title 10, United States Code, may make an application for a patent therefor in the United States Patent and Trademark Office.
(2)(A) An application for patent shall include—
(i) a specification as prescribed by section 112;
(ii) a drawing as prescribed by section 113; and
(iii) an oath or declaration as prescribed by section 115.
(B) The application shall be accompanied by the fee required by law.
(b) PROVISIONAL APPLICATION.—
(1)(A) An application for patent filed under subsection (a) may be a provisional application for patent.
(B) A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director.
(C) A provisional application shall include—
(i) a specification as prescribed by section 112(a); and
(ii) a drawing as prescribed by section 113.
(D) The fees required under subsection (a)(2)(B) shall not be applicable to a provisional application.
(2) Subject to the provisions of paragraph (3) and to the payment of the fee set forth in section 41(a)(1)(G), a provisional application may be filed by the inventor or inventors.
(3) A provisional application for patent shall not be required to have a claim or an oath or declaration.
(4) The United States Patent and Trademark Office shall not examine a provisional application for patent.
(5) A provisional application for patent shall have the filing date determined in accordance with section 111(a)(2) and shall be regarded as abandoned after 12 months from the filing date.
(6) A provisional application may not be filed for a design invention.
(7) An application for patent filed under subsection (a) may claim the benefit of one or more provisional applications in the manner prescribed by section 119(e).
(8) If a provisional application has been filed and converted to a nonprovisional application in accordance with paragraph (3), the provisional application shall be regarded as abandoned 12 months after the filing date of the provisional application.
(e) APPLICATIONS FOR PROVISIONAL PATENT APPLICATION.—
(1) Subject to subsections (f) and (g), an application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall be entitled to the benefit of the filing date of the provisional application if the later-filed application—
(A) is filed not later than 12 months after the date on which the provisional application was filed;
(B) contains or is amended to contain a specific reference to the provisional application; and
(C) is for an invention disclosed in the provisional application.
(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120, it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
Primary Statutes Taught in Chapter 2: