An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications. According to the rules of practice, claims are not required in the provisional application. (MPEP 601). However, there are a few good reasons for including claims in the application.
In the wake of Phillips v. AWH, it has become even more important to ensure that a patent’s specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application. Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing. Russ argues that claims in the provisional can only hurt the applicant.
I disagree. The claims can be helpful in ensuring adequate disclosure and enablement — this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget. The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush. As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date. It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted — this is especially true in the fast-paced area of provisional applications. One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel. However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel — especially since the nonprovisional is newly-filed rather than simply an amended version.
An astute Patently-O reader provided the following comment:
I include at least one extremely broad, never likely obtainable claim in a provisional. First under US law, it is true that a provisional need not include one in order to be considered valid. But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won’t go foreign.
I hear the arguments related to the effect of narrowing by amendment as creating PHE. In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE. Let’s face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle. In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many.
No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, “A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document.” Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out.
Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application. So if you present a very broad claim initially, you can amend narrower. But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader. It is for this reason you can include a “claim” that says something like, “I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration.” or a “process to […] comprising any process described, in any order, using any modality, …”
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Paris establishes a right of priority, but ONLY when the priority document is the first application in a Paris country that is for protection of the SAME invention as that of the claim in suit. When your priority document exhibits a claim that is identical to the claim in suit, you’re in good shape. When it lacks such a claim, your Opponent has an “issue” to run with, when disputing your entitlement to Paris priority.
Is that reason enough for readers to include claims in their FIRST US appln for protection of an invention?
Actually, is that reason enough to include a (alien to US practice) nicely graded set of dependent claims, of successively-diminishing scope and correspondingly increasing patentability?
We do file provsional specification in India for claiming priority of this application globally. If we do include at least one broad claim in this specification, is there necessity how many claims could be included i.e. can we have only one broad claim in provisional and then at the time of filing complete specification, file as many no. of claims based on the scope of the invention.
There are two reasons to add claims in a provisional in the U.S.:
1) Makes sure the Examiner and the Judge deciding the case give priority to the claim you need in examination or litigation; and
2) Makw sure you lcaim everything. I don’t know about you, but the best way for me to think through an invention is to write claims.
Furhter, you can add more claims than you can add in the regular (since you don’t have to pay for them), and then incorporate them by ref in your regualr filing.
One note: If foreign agents are telling you you need a claim, then add one (where is this view of needing them to be an application coming from?). Do we all really want to be the test case in China/Thailand etc. that establishes that they have been interpreting the Paris Convention wrong? Keep in mind that 50% of prosecution involves dealing with clerks who are supposed to mechanically apply whatever rules their director gives them. The cost of getting a rejection of the priority claim, plus the benefits of having the claim from a drafting standpoint – given the rush many provisionals are filed with (rush depends on your practice – some clients make a point of filing thorough well written provisionals others come to you the day before their work publishes in a journal, despite being repeatedly admonished to keep counsel informed), as well as the narrowing issue pointed out above – counsel one to almost always include a claim. Take Festo into account and write the broadest reasonable claim possible.
Our attorney told us recently that if we file US provisional without any claims first, then we may loss the priority claim in China. I disagree that. In China, it also has similar description as Paris Convention in examiner guide ” it should be first filing and a regular national filing”. It does not talk about whether the foreign patent includes claims or not. However, I am confused about what actually means “regular national filing”? Could a US provisional patent that does not become a regular patent lastly count as a regular filing? Should we file a regular US patent first or we could go to file foreign patent to claim US provisional patent priority directly? I think I will wait to see what our case going on in the future.
Thanks for the info/comments. I am writing an application that my client will file as a US Provisional and have erased and re-pasted the claims 5 times as I read.
I had already put the content of the claims in a Summary.
Now, one comment of my own to those saying that time and money should not effect the application. Are all of you the lone partner in your firm? Come on. Virtually every applicaiton can be improved by another read through taking more time (and money). If a client has a limited budget and thus goes for a Prov, a practitioner should do his/her best and certainly provide an enabling description for what the client has described, but does this mean spending extra hours drafting and polishing claims? And, improvements commonly occur when office colleagues (a fresh set of eyes) review the Spec – do all of you make sure that happens? (Our office commonly does that, btw). That kind of time comes at the expense of something else.
Time and money should not be involved once one accepts the obligation of preparing a patent application, regardless of provisional or non-provisional. One should always first prepare the drawings; then a catalog of parts; next write the claims which need not be set forth as a “numbered claim” in a provisional. After all, “objects of the invention” are nothing more than a claim since they can subsequently be introduced into the case during prosecution as a claim where deemed desirable to do so. Last of all comes the preparation of the specification which writes itself if the above sequence of events is followed. A provisional patent application is a rough draft of the polished non-provisional. Further Affiant sayeth nought.
Dennis
Hereis the strategy I adopt. I write a full set of claims just as I would for a regular filing. Then I convert them to sentence format and that forms the skeleton for the Summary of the Invention. That way they do not appear as “claims” and at the same time provide the explicit disclosure needed for later claims.
1. Your “astute Patently-O reader” actually shows a remarkable ignorance of foreign (i.e. non-US) patent law. Dreaming up a situation where a foreign court would deny priority because a provisional lacked claims doe not amount to being “astute”. An “astute” reader might look at the Paris Convention.
2. I totally agree with Tim Jackson about shoddiness. I never refer to something being “only” a provisional application — an application either does the job of establishing a priority date or it doesn’t. Do the job properly at the start and then there’ll be no problems. Sticking an omnibus claim on the end of a submitted poster will not protect your clients’ rights outside the US.
I have seen some practitioners put a listing of the claims inside the specification section and call it a description of the invention or something like that, but specifically do not include a separate claims section in a provisional.
Personally, I just don’t like the concept of doing shoddy work the first time through. The attorney has an obligation to include all the information necessary when filing the provisional, regardless if he needs to stay up past his bedtime to do so. I have a hard time imagining a real world scenario where a competent attorney would file a shoddy provisional. The fact that he is in the situation speaks to another problem.
Whether the Paris Convention is self-executing in any particular country is a matter for the law of that country. It might be in some, but I agree it probably isn’t in most. I would have assumed it wasn’t in the US, even without the CAFC telling us so.
However, on the present issue, there is clearly wide agreement throughout the world that an application without claims can found a priority claim. It’s a practice that has been accepted for around a century, long before the US introduced provisional applications and some people in the US started asking questions about it.
Until Bill mentioned this Thai case, I would have said there had never been an occasion where the lack of claims, by itself, had been a problem. Since Thailand only very recently changed its law, with the express intention of becoming TRIPS- and Paris-compliant, it’s still not at all clear to me that Thailand is a problem today.
What can certainly be an issue is whether the *disclosure* in the provisional application is good enough to support the priority claim. You only get priority for what the provisional actually says.
Dennis and I both highlighted that, in different ways. He mentioned the enablement and disclosure requirements. I said that the description should support the breadth of scope of the invention – including using claim-like statements in the description if there are no claims as such.
Although the U.S. is a signatory to the Paris Convention, the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law. In re Dr. Matthias Rath (Fed. Cir. 2005).
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Dennis- Could you please cite the CAFC case that you are referring to, I would be very interested to read it. Thanks
Great comments:
1) As the CAFC recently held, the Paris Convention itself is not binding on a country and is not self executed.
2) Just because a patent is considered a “filing” does not mean that it will comply with the enablement and disclosure requirements of that particular country.
I’d not heard of this Thai case. Do you have any further details, Bill?
One question would be whether it was before or after 1999. From a little Googling, I think it was around then that Thailand amended its law about priority claims.
Before then, as I understand it, they just had bilateral treaties with various countries, providing reciprocal priority arrangements. So I suppose they would decide any such case on the basis of what the relevant treaty said.
But the revised law was apparently intended to make Thai law TRIPS-compliant. They were required to introduce priority on Paris Convention principles (though they still haven’t joined the Paris Convention itself).
Note that Article 4A of the Paris Convention says that priority should be given to “any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union”. And that “By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.”
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It seems to me that in order to comply with the Paris Convention (and thus with TRIPS), countries should not grant or refuse priority merely on their own view of whether patent applications require claims. Rather, they are required to recognise anything which establishes the date of filing under the domestic legislation of the originating country.
Under the domestic legislation of various countries, including the US, patent applications without claims can establish a filing date. So either Thailand now recognises them, or their revised law is not TRIPS-compliant as intended.
As a student in an IP Master’s program I am surprised that there is not a consensus among practitioners as to whether US provisionals without claims can serve as a priority claim. I would expect that they clearly would be. In Article 4 of the Paris Convention it says that any filing equivalent to a national filing can serve as priority, and “any filing” is defined as a filing that establishes a filing date, regardless of the subsequent fate of the application. To me that means it doesn’t matter if there are claims or if the application is even examined, as long as the receiving patent office gives the document an application date.
Since all WTO members must apply this Article to conform with TRIPs, I don’t see how Thailand (which has been a WTO member since 1995) is allowed to disregard Paris. Does anyone know if I’m missing something?
I know many practitioners in AU file their provisionals without claims (although I think that most usually draft the claims and then delete them before filing). I, on the other hand, have for a long time included claims, in part because I see no benefit in deleting them after they are drafted, and in part as a reaction to a decision several years ago from Thailand where they effectively concluded that if the priority application does not have claims it is not a patent application and therefore you cannot claim priority to it.
This is a very good discussion and shows the split in the legal community. Including a “broad claim” in a provisional creates a real risk of Festo type estoppel and does not help claim priority in any country.
First, no country or court has ever stated a U.S. provisional must contain a claim. In fact, WIPO, the EPO and the Japanese Patent Office have all taken the position that U.S. provisional applications are recognized as regular national applications.
Second, a claim added to a provisional, is a real “claim” that can be examined by the USPTO! Pursuant to MPEP 601.01(c)(3), a provisional application can be converted to a non-provisional application. MPEP 601.01(c)(3) specifically states that no additional claims are required if the provisional already “contains at least one claim.” In other words, a claim in a U.S. provisional application can be examined under current U.S. patent law.
Finally, I believe those that support including a broad claim in a provisional should consider the following example.
A patent applicant:
1. files a first non-provisional with a broad claim;
2. then files a second non-provisional with a narrower claim that claims priority from the first non-provisional; and
3. then expressly abandons the first non-provisional before an Office Action is sent.
Assuming the applicant added the narrower claim in the second non-provisional because they didn’t believe the first broader claim would be allowable, would Festo apply? I believe the answer is yes, but it appears that some posting here do not believe Festo would apply (and I am interested to know why).
Brian W. wrote: “Some countries require the parent application from which priority is claimed to include claims. Otherwise it is not deemed a ‘patent application'”
I think this is a misconception which stems from a slightly different notion that circulated when the US first introduced provisional applications. At the time, some people did indeed suggest that foreign countries might not recognise US provisionals as being true patent applications.
But the reason originally put forward wasn’t because US provisionals lacked claims. Rather, the argument ran that a US provisional could never actually mature into an issued patent. So how could it be called a true patent application? In order to be issued a patent, you had to file a *separate* non-provisional application subsequently, and prosecute that instead.
Personally I have doubts about whether that was ever a serious risk. But in any case, a year or two later there was an amendment to US law on provisional applications. As I understand it, the sole purpose of this amendment was to scotch such arguments.
This subsequent amendment made it possible to add claims to a US provisional and convert it to a non-provisional application, rather than just filing a separate non-provisional and claiming priority.
In reality, there seems to be no reason why anyone would want to make use of this possibility, and good reasons not to do so. But it does make it clear that a provisional application is genuinely something which can mature into a patent. And so it should provide a basis for a priority claim in other countries, were that ever in doubt.
As Mike Dowler pointed out, there is no requirement for a provisional application to have formal claims in order to support priority in a foreign application.
For around a century now, practitioners here in the UK have been filing provisional applications without formal claims, and successfully using them as priority for foreign applications. The UK is where various other countries borrowed the idea from – including most recently the USA. Although current UK law no longer actually uses the term “provisional”, the practice remains alive and is widely used here.
In all that time, I’m not aware of a single case in any country of the world where priority has been denied to a UK provisional application merely because of the absence of formal claims.
What *can* cause some loss of priority is if the description in the provisional doesn’t support the breadth of the claim you eventually make in your foreign application.
What counts as adequate support for a broad claim is a legal issue which can vary from country to country. For example, the European law on this is rather different from US law. In part, and depending on the nature of the invention, you may need to describe several different embodiments in your provisional, exemplifying the invention over the whole broad range of the eventual claim.
But support can also depend on whether the broad language of the claim is supported by corresponding broad language somewhere in the provisional priority application – though not necessarily in formal claims.
For the latter reason, UK practitioners have for many years usually adopted the policy suggested by Lawrence. Include paragraphs in the Summary of the Invention section of your provisional, which define the invention in a claim-like manner. Far from leaving foreign applications hanging in the air, it helps to ensure they get the priority benefit.
Nir, your argument cuts the other way as well. Since omnibus claims are not patentable, the replacement of those claims with more detailed claims would certainly be done ‘for reasons of patentability.’
The argument for Festo estoppel is weak, but its probability for success is non-zero.
That’s a good point, Dennis. However, Omnibus claims are clearly not patentable in the US according to the PTO (MPEP 2173.05(r)) so would the more detailed claim be considered a ‘narrowing amendment’ as per Festo or would it be clear that the amendment was made in order to satisfy patent office practice and not to overcome prior art?
In general, does Festo-type estoppel apply to any narrowing amendment made for patentability or does it only apply to amendments made to overcome prior art? In other words, does it matter if the original claim is unpatentable due to 102/103 vs. 112?
Nir, I believe that Brad has a good approach. The only problem is the slim possibilty that when you replace the omnibus claim from the provisional with a detailed claim in the nonprovisional the court will find a ‘narrowing amendment’ and apply Festo-type estoppel.
Does anybody see anything wrong with what Brad proposes? This is essentially in agreement with Lawrence, with the added beneift of filing an omnibus claim to satisfy any potential foreign jurisdiction requirement for a claim in a priority application.
Lawrence, Your comment is well taken. The one problem with your solution is that it leaves the foreign applications hanging in the air.
I have to disagree regarding Festo; I believe that actual claims in a provisional may raise Festo issues. There is Federal Circuit caselaw holding that the fiing of a new application with narrower claims, in the face of a rejection of claims in a previous related application, is the same as a narrowing amendment. There is also precendent holding that narrowing amendments, with no express basis, are presumably made for reasons of patentability. The Federal Circuit has not addressed these issues, yet, but would certainly analogize such cases to a provisional -> nonprovisional context. (Of course, a number of factors would have to be considered; how much of the nonprovisional specification did the provisional contribute, etc.)
It seems there is a relatively simple workaround, though. If there is time, draft a good set of claims that covers the invention broadly and narrowly; convert the claims into one or several paragraphs, and move them in the Summary of the Invention. File the provisional sans claims. That way, you would (1) define the invention for 112 purposes; (2) have ipsis verbis support in the specification for the claims; and (3) avoid Festo issues.
It is not true that claims are necessary to provide a priority date for a European Patent Application – there is a notice from the President of the EPO dated 26 Jan 1996 (sadly not available online) which specifically states that US provisional applications (even without claims) are accepted as giving rise to a priority right.
Here in the UK we have been filing provisional applications without claims and using them to claim priority abroad for many many years!
Certainly, there are clearly advantages to drafting claims, if time and money permit, in the course of good preparation of a provisional patent application (and assuming that we are not all rushing to get a filing in under the proposed legislation for first-to-file). In light of the potential for Festo limitations on the applicability of Doctrine of Equivalents in the event changes are made to the claims between the provisional and the utility, my practice is to include sentencized versions of the claims as paragraphs at the end of the specification, but to instead rely on an omnibus claim (i.e., the inventions as shown as described) as the claim. One needs to include some kind of claim in order for the provisional filing to serve as an effective priority date for international applications, such as a European patent application.
Another reason for including claims in a Provisional is for the purpose of priority claiming in a subsequent foreign application. Some countries require the parent application from which priority is claimed to include claims. Otherwise it is not deemed a “patent application”
Thanks Arnold, Next time we’ll get into the purposes of filing provisional versus nonprovisional applications.
Above all, we should remember the gist for Provisional Patent Applications.
I think it will be better submit not using provisional patent application systems with formal patent application if I have to draft claims.
By the way, there are no systems for the Provisional Patent Applications in Korea.
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