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Preserving Claims of Priority in the EPO Via Provisional Claims in the U.S.

By John H. Hornickel

The value to U.S. practitioners of provisional patent applications is still being uncovered, even though they arrived more than 10 years ago and were substantially improved more than 7 years ago by allowing convertibility to non-provisional patent applications.

Viewed from one perspective, a provisional patent application costs 20% of the cost of a non-provisional patent application and gives the applicant the benefits of the Paris Convention, while avoiding the onset of search, publication, and examination in the United States. For more from this perspective, see this author's article 'The Third (and Best) Way to Use PCT,' Patent Strategy & Management, Vol. 5, No. 3, July 2004.

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