Tag Archives: Provisional Patent Applications

10-Month Rule: Federally Funded Provisional Patent Applications

File your non-provisional patent application early, within 10 months of filing your provisional application if your invention was conceived using Federal funding.

ISSUE: What might be the consequences for a contractor after failing to timely file a non-provisional patent application within 10 months of filing its provisional patent application?  

RULE: The agency can request conveyance of title upon contractor’s omission to timely file patent applications in any country.1 Timely filing means filing a non-provisional patent application within 10 months of filing a provisional patent application (the “10-Month Rule”).

RULE NEEDS CLARIFICATION: Though the 10-Month Rule may sound straightforward, the rule may conjure further issues. The authority is found in the Federal Regulations at 37 C.F.R. 401.14(c)(3). However, the C.F.R.’s wording may leave matters open for debate.

Unfortunately, guidance from other sources appears to be sparse. The 10-Month Rule is not specifically recited in 35 U.S.C. § 202 and the Federal Statutes that codified the Bayh-Dole Act. Furthermore, the manual of Manual of Patent Examining Procedure (MPEP) does not appear to refer to the 10-Month Rule. Furthermore, there does not appear to be any case law opining on the 10-Month Rule.2 This is likely because no Federal Agency has yet to enforce the 10-Month Rule, analogously to how no Federal Agency to-date has not activated any march-in-rights they may have under the Bayh-Dole Act. At least no litigation has arisen after an enforcement of the 10-Month Rule.

ISSUES FOR CLARIFICATION:

Timing?

QUESTION: When can the Federal agency request conveyance of title? The question may be further split up into two questions of when:

(1) From what time?; and

(2) Until what time?

ANALYSIS (1): The C.F.R. clearly shows that the Federal agency may request conveyance of title from the time the contractor fails to timely file its non-provisional application. This means that the Federal agency may request conveyance of title after the 10-month deadline if the contractor has not yet filed its non-provisional patent application.

ANALYSIS (2): The C.F.R. does not provide clear guidance. The Federal agency clearly my request title from at least 10 months to 12 months (i.e., the Statutory deadline to file in the US/PCT).  But the Federal agency may not clearly continue to have the right to request conveyance after 12 months, even if the contractor filed its non-provisional application in compliance with the statutory 12-months anyway.

DISCUSSION:

The 10-Month Rule makes sense under the scenario where a contractor has not filed the non-provisional and the time is now 11-months from the contractor’s provisional application filing date. In this scenario, I can see the Federal agency saying: “You did not file it after 10-months, it is now 11-months. This invention is ours now. We are going to file it ourselves and own it 100% now. And by the way, you are not getting it back.”

What I believe may remain ambiguous, is whether or not the federal agency can still require conveyance of resulting non-provisional application even if the non-provisional application was filed anyway, after 10 months, yet before 12 months. One could argue that, yes, the Federal agency can, at any time over the next 20 years, take the patent away from the contractor. That would be cruel.  However, while I believe that Federal agencies such as the NIH would not be so cruel,3 perhaps a potential infringer might indeed be so cruel to a patent owner by asking a court to rule that the patent owner forfeited its rights to the NIH, long after a patent is granted. A countering argument is that, no, federal agencies cannot do so, because that was not what the rules intended.

Patent Validity and Enforceability

QUESTION:

Is a patent valid and enforceable if it resulted from an non-provisional application that was filed after 10 months of the provisional application, yet filed before the statutory 12 months?

ANALYSIS:

  • There should not be any challenges to the enforceability or the validity of such a patent because it complied with a Federal Statute, even though it may not have complied with a Federal Regulation.
    • This would be contrary to the intent of the Federal Regulations, which appear to have been intended to support the policy of keeping patent applications alive rather than letting them lapse and go abandoned.
  • The Federal Agency would not want the resulting non-provisional application or patent to be then held invalid or unenforceable.  The 10-Month Rule is in place to ensure that a Federal Agency may rescue an invention after a contractor fails to file a non-provisional application after 10 months. The reason for the rule being 10 months is to allow the Federal agency to wrestle control (ownership) of the invention and still have 2 months of time to file the non-provisional application by itself, after the contractor neglected to do so.
  1. See, https://www.nist.gov/tpo/bayh-dole-act/2018-faqs. See also, https://www.fenwick.com/insights/publications/avoiding-loss-of-title-to-inventions-m[…]al-funding-as-new-bayh-dole-requirements-affect-patent-rights –  Fenwick & West, LLP. ↩︎
  2. I checked Westlaw & Lexis at the Worcester Law Library. But I may be rusty. ↩︎
  3. Disclosure: I received a Post-Doctoral Research Grant from the NIH in 2000. ↩︎