89 thoughts on “Question on Provisionals?

  1. Leopold,

    Compare In re Stempel with In re Scheiber, both CCPA cases that can only be overruled by an en banc Fed. Cir. Stempel held that one could show prior invention of so much of the claim that was in the reference. Scheiber said that in the “claimed subject matter” had to have full Section 112, p. 1 support, so that you had to have more than just show that one’s parent application disclosed the same subject matter as in the reference. Baldwin explained that a Section 131 affidavit was required (though not in so many words) because not everything disclosed in an application is invented by the applicants. In fact, most applications include discussion of background art the most likely is not the invention of the applicants. The nut seems to be that to antedate a reference that discloses only part of a claim in a CIP where the claim includes new matter, one has to file a Section 131 affidavit with respect to the matter supported in the parent.

    I say this is poppycock and provided the above examples to demonstrate why it is poppycock.

  2. Hey anon, do you have any particular case law in mind?
    (“the case law that would require the filing of a section 131 affidavit in order to claim priority to the disclosure of A in the provisional application with respect to claims that include the B subject matter”)

    I’d like to look at it – this is an interesting topic. Perhaps not as interesting as e6k’s foreign policy ideas, but interesting nonetheless.

    leo

  3. I think the issue of the effective dates may be more complicated than as portrayed in this thread. Considering the following:

    Provisional application disclosing and fully supporting A.

    Intervening reference disclosing A.

    Intervening reference disclosing B.

    Non-provisional application disclosing A, and B, an improvement of A.

    Claim 1: A
    Claim 2, Depending from Claim 1: A + B
    Independent claim 3: A + B

    Applicant files a section 131 affidavit showing completion of the invention of A as of the filing date of the provisional application, using the provisional application as both his conception document and his constructive reduction to practice document.

    I would argue that all three claims would have an effective filing date with respect to the subject matter A as of the filing date of the provisional so that no proper rejection based upon the reference disclosing A could be made against any of the three claims. (I would also argue that the case law that would require the filing of a section 131 affidavit in order to claim priority to the disclosure of A in the provisional application with respect to claims that include the B subject matter is wrongly decided.)

    That said, of course, the effective filing date of any claim to A plus B in an interference with another application claiming A + B would be the filing date of the non-provisional application.

  4. JAOI, my own firm not only does great patent work but sometimes gives out full (70 cl) bottles of single malt Scotch!

  5. Herr Max,

    Marks & Clerk not only do great patent work, but they sometimes give out little bottles of Scotch (it was a blend, but at least it was ten years old).

  6. Dear Leo & e6k,

    Thanks for the edifications. I feel I learned enough to proceed down the right track with my provisionals. I do ask my patent attorney to review my work before filing. I do as much as I can for myself but I’m an ordinary inventor – I rely on patent attorneys for the heavy patent lifting.

    I read a comment today (I forgot where) that suggested it is a good idea to write the claim for an invention first, before writing the description. I agree with that comment for some types of inventions, such as computer system and method inventions.

    However, for other types of inventions it might be better to draw the Figures first, and then simply describe the Figures in detail, and then the claims can be readily drafted (even at a later date). This approach works well, for example, for some electrical circuit and mechanical inventions. One of my provisionals is an electrical circuit and the other is a mechanical invention — starting with the Figures, then writing the description (as Just described) worked well for both.

    In both cases I started with one simple Figure first, and then I described it in detail. Then I added more Figures elaborately describing each before drawing the next Figure.

    Moreover, when I reread my mechanical provisional to prepare claims for the utility filing which I plan to file soon – this is the provisional that I had been thinking I’d need additional disclosure in order to support a particular feature – I discovered to my pleasant surprise that I do not need additional disclosure to support all of the features I want to claim.

    Thanks for the teachings.

    ——————————

    That’s what I like about this patent world – every time you look again, it gets deeper and deeper. It certainly is not for the simple minded.

    Last week I ran into 35 USC 273. At least that question was for academic purposes.

    This week I run into MPEP 2701, which looks like gobbledygook at first blush. I believe the question posed on this link about 17-year / 20-year term switchover is important:
    link to patentlyo.com

    Somebody in Patently-O Land must have run into this problem and figured out how to solve it.
    If not, we’ll have to ask Professor Crouch.

    ——————————

    BTW, here is how to type a non breaking word space, as described in this comment:
    link to patentlyo.com

    Hold down the Control key AND the Shift key then hit the word space bar.

    ——————————

    Disclaimer: Please consider my questions purely from an academic standpoint, a Socratic philosophic inquiry, and in now way legal advice.

  7. Marks & Clerk prosecuted my applications in Europe. My European patents’ claims are different than corresponding US claims. Thanks for asking.

  8. ….but that’s just for USA, JAOI (and 6K). ROW, with absolute novelty and strict “First to File”, is another matter, as Eurodisnae makes crystal clear above. There’s more to success in prosecution amendment in ROW than merely 1) staying inside the scope of the independent claim of the priority document as well as 2) ensuring that the Best Mode is still inside the narrowed claim. I wouldn’t have mentioned the point, for fear of boring readers, except that JAOI did once mention that he’s got stuff going through the EPO. I hope he doesn’t one day suffer the fate of so many American applicants in Europe, finding out in post-issue proceedings that his claim is not entitled to the US priority date declared, yet its validity depended on retaining that date. By the way, JAOI, may I ask, has the EPO yet got round to issuing you a useful set of claims? I guess not. Keep in mind that, for any one inventive concept, it is rare that the claim formulation that is optimal for the USA is also optimal for mainland Europe.

  9. Just keep yourself within what you put in the prov if you want the date JAOI and you should be fine. The examiner might cite some art but you’ll just reply that it’s not proper since you have the date and your claim is supported under 112 by the prov.

  10. jaoi(tm),

    Your academic question is not simple. If the provisional application includes claims, or other material, that are identical to the claims in the utility patent, then I think it’s fair to say that any prior art must antedate the provisional. Of course, that doesn’t mean you don’t have Section 112 problems of one sort or another.

    One thing I worry about with provisionals, even if they include claims, is whether new or different claims in the utility application add “new matter.” If so, this new matter doesn’t get the benefit of the provisional’s filing date. I think the discussion above is generally on point – this isn’t as likely to be an enablement issue as it is to be a written description issue. You may have a lovely enabling embodiment that represents the best mode. But if you don’t have that top claim, which is probably broader than your detailed embodiment, then you haven’t demonstrated possession of the entire invention in the provisional application.

    If I’m litigating against your patent, and I have potentially invalidating intervening art, I’m going to scrutinize every difference in wording from the provisional to the utility, especially with respect to those claims that appeared in the original utility filing.

    Provisionals are sometimes better than nothing, but not a lot.

  11. Thanks Just Visiting and Leo,

    If I may, I have a different question about another provisional; perhaps I should have asked this first:
    I filed a provision without claims and timely filed a utility application with claims. For all intents a purposes, both applications had identical disclosures (no new material whatsoever) and identical Figures.

    May I assume that the Examiner will search for prior art only up to the filing date of the provisional application?, and not cite any art he may be or become aware of against my invention that may have been published after my provisional’s filing date?
    Here is the boiler plate I used for that utility application”

    “This application claims priority to U.S. Provisional Application serial number 23/456789 filed February 28, 2007. The title of that Provisional Patent Application is the same as this Utility Patent Application (above). The entire contents of U.S. Provisional Application serial number 23/456789 are herein incorporated by reference.”

    This boiler plate was followed by the same disclosure and Figures as the provisional, and the new claims (none had been previously filed).
    I had performed searches on the PTO website for patents and published applications and on google and disclosed prior art I found in the provisional filing, but I did not perform another search prior to the utility filing.

    Disclaimer: Please consider my questions purely from an academic standpoint, a Socratic philosophic inquiry, and in now way legal advice.

  12. “I don’t think your boiler plate creates any presumption that the PTO has reviewed your claim for priority. You’ve also created a nuisance of having a specification citing claim numbers which may change during prosection or even after prosecution is closed.”

    I’ll go farther – I think your boilerplate, with the exception of the first two sentences, does you no good, and may instead cause harm. Even the second sentence is unnecessary, and could cause harm. Of course, all this is hypothetical.

  13. “Additional disclosure will be clearly differentiated and will immediately follow the provisional’s disclosure.”

    I don’t think your boiler plate creates any presumption that the PTO has reviewed your claim for priority. You’ve also created a nuisance of having a specification citing claim numbers which may change during prosection or even after prosecution is closed.

  14. Dear step back,

    Re: “There could be some claims in the issued utility that are fully supported by the provisional under 112 and others that are not so. The fully supported claims would be entitled to the earlier filing date of the provisional. The nonsupported claims would be assigned the later date of the nonprovisional filing.”

    This sounds like patent gospel to me, and I find it most helpful and timely.
    Question (Q1): Isn’t this Just like a C-I-P and its parent application?

    I filed a provisional without any claims on an improved “weggy” and am now preparing to file a utility. I plan to add disclosure for one feature not specifically disclosed in the provisional. So as to clearly delineate between the provisional disclosure and the new utility disclosure down the road, (Q2) do you think my saying in the preamble of the specification (first paragraph) the following is a good idea?:

    This application claims priority to U.S. Provisional Application serial number 12/345678 filed June 30, 2007. The title of that Provisional Patent Application is the same as this Utility Patent Application (above). The entire contents of U.S. Provisional Application serial number 12/345678 are herein incorporated by reference, and are printed verbatim at the beginning of this disclosure. Additional disclosure will be clearly differentiated and will immediately follow the provisional’s disclosure. I have also added Figures 10 and 11 to this utility application. All claims are supported by the provisional’s disclosure with the [possible] exception of claims 11, 12 and 13 which are supported by this specification and its Figures.

    Note: I will have to consider the possible inclusion of [possible] after I write the claims.

    Re:
    “Moreover, the inventor may have filed a Rule 131 that claims a date of invention prior to the provisional or nonprovisional filing date for one or more of the claims. So assessment has to be claim by claim and in view of what happened during prosecution.”

    (Q3) I don’t really understand Rule 131 but insofar as I do, I think it could only come into play if there was a contest down the road regarding the priority date and/or first-to-invent date of my invention. Am I close enough for now?

    Disclaimer: Please consider my questions purely from an academic standpoint, a Socratic philosophic inquiry, and in now way legal advice.

    Thanking you in advance for any further help you may graciously offer, I remain

  15. Kremen says:

    “Unfortunately, in most cases, a provisional is virtually never examined. So, the examiner does not use the disclosure of the provisional as part of his or her findings. However, what if the provisional application is incorporated by reference in its entirety into the non-provisional application. Here, the examiner is required to examine the contents of the specification of the non-provisional application which includes the provisional application. In that case, I believe that a case can be made for a presumption of adequate disclosure.”

    I am an examiner and I always consider the provisional in making my finding on patentability. After all, either you are or are not entitled to the benefit of your earlier filing date for the claims you are now making (btw I well appreciate the distinction between being making a proper claim to the benefit of priority vs. actually having 112/1 support for the claimed subject matter in the application to which benefit is being claimed.) As an examiner you must resolve this question as it is essential to determining if the claimed invention is truly novel and non-obvious.

    Furthermore, I have a question about the comment “However, what if the provisional application is incorporated by reference in its entirety into the non-provisional application. Here, the examiner is required to examine the contents of the specification of the non-provisional application which includes the provisional application.”

    It is my understanding of the mpep that prior filed applications to which applicant has made a proper claim to the benefit of priority are de facto “incorporated by reference” even if no such statement is made in the claim to the benefit of priority. So if this is the case then an examiner is obliged to examine all those provisional/non-provisional benefit applications to which are automatically incorporated by reference in their entirety into the application under examination.

  16. There is no reason NOT to draft claims. May even lead to malpractice. How can one draft a provisional without drafting at least one claim. In order to draft a provisional disclosure that you know “enables” claims presented in a subsequent non-provisional application it seems to make sense to draft the same claims in the provisional to make sure the claims are enabled. FYI – many patent attorneys draft claims before even starting the disclosure. Why? to get a handle on what is being claimed so a cost effective and enabling specification can be drafted. Learning the technolgy while drafting the specification may not be the best way of drating the patent application. The first thing I try to do (especially with complex cases cases) is meet with the inventor and draft claims.. draft… draft… draft… Claims are the most important part of the application. Drafting the specification after preparing well drafted claims is almost as easy as copying and pasting.

  17. “c) While the CAFC has not ruled on this issue yet, the Festo decision penalizes an applicant when he or she narrows his claims. There is a loss of doctrine of equivalents in the area narrowed. While Festo has not yet been applied to claiming more narrowly in a non-provisional application than in a provisional application, the court could construe, in the future, that since tha applicant inserted claims into his application when not required to do so, the applicant intended to comply with 35 U.S.C. 112, second paragraph. In that case, Festo might reasonably apply.”

    But for now, PHE only applies when the amendment is in response to a requirement for patentability.

    I agree though that it’s not out of the realm of possibility for the court to apply it to “amendments” from provisional to non-provisional.

  18. I don’t think file history can apply to matter that is not legally claimed. Since claims have no legal effect in a provisional they are not *claims* thus they could have no limiting legal effect in a subsequent application. However, your argument may counsel to write relatively narrow claims in a provisional if at all.

  19. 1. A provisional application must meet the requirements of the first paragraph of 35 U.S.C. 112. Those requirements are (a) a complete written description; (b) disclosure of the best mode; and (c) enablement. Unfortunately, there is no presumption that the provisional application sufficiently discloses material such that the applicant can claim both benefit and priority. There would be a presumption if the provisional application were to be examined. An examiner’s grant of allowance and priority is a finding of fact to be overturned in court only where no reasonable examiner would rule in that way. In that event, the burden of proof is on the infringer to show by clear and convincing evidence that no reasonable examiner could have allowed the patent. Unfortunately, in most cases, a provisional is virtually never examined. So, the examiner does not use the disclosure of the provisional as part of his or her findings. However, what if the provisional application is incorporated by reference in its entirety into the non-provisional application. Here, the examiner is required to examine the contents of the specification of the non-provisional application which includes the provisional application. In that case, I believe that a case can be made for a presumption of adequate disclosure.

    2. I am against placing claims into a provisional application for several reasons:

    (a) Some attorneys claim that claims put the public on notice concerning what the inventor regards as his or her invention. This is not the case because a provisional application is never published until the non-provisional application is published (if at all — and in that case, not until the patent issues). So, the public never sees claims in the provisional. In any case, they are superceded by the claims in the published application.

    (b) Claims in a provisional application are never examined and are not required. An applicant only needs to meet the requirements of 35 U.S.C. 112, first paragraph. A provisional application is a disclosure of the invention. It is not a statement of what the applicant believes is novel and inventive. Claims are unnecessary.

    (c) While the CAFC has not ruled on this issue yet, the Festo decision penalizes an applicant when he or she narrows his claims. There is a loss of doctrine of equivalents in the area narrowed. While Festo has not yet been applied to claiming more narrowly in a non-provisional application than in a provisional application, the court could construe, in the future, that since tha applicant inserted claims into his application when not required to do so, the applicant intended to comply with 35 U.S.C. 112, second paragraph. In that case, Festo might reasonably apply.

    Stan Kremen

  20. at least I think Gentry and/or Tronzo touched on 1st claims including lim’s not wanted later on .. can’t think of the situation specific to claims in the prov, but there’s at least one specific risk I’ve read about, there .. mostly curious if there are any specific problems to this solution?

  21. Re claims in Prov’s, benefits may be obtained from circumscribing the base concepts in the prov, but there can be drawbacks any time you “claim” your *invention*, such as when limitations you longer wish to include in later claims were recited in the indep claims(s), a la the center console in Gentry Galley and perhaps Tronzo (see page 6+ of the USPTO’s Written Descrip Training Materials). I head my listing in the prov with “Aspects of the Innovations herein include:” and sometime even listed them with letters, not numbers. Based on the all the pros and cons I’ve seen, this captures all benefits of having them in the prov and avoids all of the pitfalls of setting your “claims” in stone that early.

  22. Anonymous,

    You are right it was off-topic, but I felt it tied into the rest of the things being discussed. Anyway…

    I haven no empirical or statistical evidence. I am going by my working in the field since the mid-80’s, as well as what I get from other long-time examiners and from you attorney’s here. I also have often sat in a junior examiner’s interviews and, off the record, many of the older attorneys make the same types of complaints to me about both sides.

    You all seem to agree that examining quality has gone down considerably, so I will not address that, other than to point out that I think the quality of rejections, more so than allowances, is what has gone down.

    As for the attorney side, I see a lot of cases from other examiners in my work and see a lot of responses from all different firms. Obviously, the top attorneys/firms will always be better than the rest, but the “average” attorney response appears to be worse than years ago.

    We (examiners) are seeing more “bad” responses, where the response is either totally meaningless, does not apply to the rejections in the case, and other clearly wrong or horribly sloppy work. Often the responses are very cursory and mostly just you version of form paragraphs/boilerplate, with little that actually addresses the real merits of the rejections. It appears that many of the responses are very rushed and not well fleshed-out (too much work at some firms??) Also, many of the responses seem to indicate that the respondent has little knowledge of the state of the technology.

    On top of that, many are becoming very adversarial/antagonistic, particularly to the many minorities in the office. I think that many attorneys think that they can bully them around. A couple of years ago I had an attorney call me complaining that he was not able to understand the language spoken by an examiner because of their accent. While the examiner does have a strong accent, the language the attorney used was highly unprofessional, to say the least. I wish I had a recording & I would have turned him in to EOD.

    Also, attorneys are less willing to make amendments or be willing to even argue references in depth, anymore. I realize much of that comes from fears from Festo & the like (& they are probably right to have those types of fears, unfortunately). This also leads to a more antagonistic relationship between examiners and attorneys.

    For a couple of brief examples of the things we see that I have seen from the last 2 weeks.

    1) 1st action rej claims A v B; amendment; final rej C v D; after-final response argues A v B again even though these references are no longer being used.

    2) In response to an obviousness double patenting that attorney responded the following (this is an exact quote of the total response for the ODP rejection, other than the numbers and dates have been modified to make the specific case less recognizable):

    “1) Claims 24-44 and 46-54 stand rejected under 35 U.S.C. 102(e) as being unpatentable over Claims 1, 2, 6 and 8 of U.S. Patent No. 7,xxx,xxx. Applicants
    respectfully traverse this rejection:
    U.S. Patent 7,xxx,xxx, filed on October xx, 2xxx, claims priority to provisional application Ser. No. 60/aaa,aaa, filed Oct. xx, 2xxx.
    Present application 10/xxx,xxx, filed on Month xx, 2xxx, also claims priority to provisional application Ser. No. 60/aaa,aaa, filed Oct. xx, 2xxx (as with U.S. Patent 7,xxx,xxx), but further claims priority to earlier provisional applications Ser. No. 60/zzz,zzz, filed Amonth. xx, 2xxx, and Ser. No. 60/yyy,yyy, filed Amonth xx, 2xxx.
    Thus, the obviousness-type double patenting rejection of Claims QQ-WW and RR-TT over claims GG-HH of U.S. Patent No. 7,xxx,xxx is improper and must be withdrawn.”

    This 2nd example is unclear to me (and everyone else that saw it). 1st they say it was a 102(e) rej, then go into the claims of priority to various provisionals and, somehow, conclude that the ODP rejection was improper. Makes no sense at all.

    So, based on these kinds of things we see more and more, I concluded that the quality of work on both sides is in a state of decline from a couple decades ago.
    Obviously, not all attorneys, nor examiners, are bad or incompetent. There are a lot of good ones on both sides. It just appears that the “average” is a lot lower than what it previously has been.

    Hope that answers your questions.

    MVS

  23. “pds, I agree that getting a reg # is harder than getting hired. But, the quality of BOTH examiner AND attorneys has gone down significantly in the last 10-15 years. Too many being added and the overall quality being diluted. That was the point.”

    MVS, the above-quoted post is off-topic but, since you said it, please state your basis. Searching my considerable personal experience (~1990), I truly cannot identify a basis for your statement. There was a mean and a standard deviation in ability then; there’s a mean and a standard deviation now. There were statistical outliers (incompetent, unreliable etc. )then; the same is true today. So, with all due respect, the floor’s yours.

  24. “It will just appear that you messed up and applied a reference whose date was no good (and I have seen examiners try to apply references that don’t have a good date all too often)”

    Anyone that it appears that way to obviously didn’t look back to the provisional themselves. That’s their bad, not mine. There is no “presumption” of getting the date.

    If it was “questionable” and I made the call that they didn’t get it, then I’m pretty sure it would be apparent that it was “questionable” to other people as well. If it wasn’t questionable to them (presumably a spe etc) then I am in error, and they should point it out that my date is bad because of blatant priority support.

  25. “The PTO simply refused to even acknowledge my argument. I called the SPE and he was extremely hostile to me over the phone. After filing a couple after final arguments, the client decided to let it go abandoned.”

    Experienced this issue a couple of times. I cite M.P.E.P. § 2136.03(III), entitled “PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)”

    The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under 35 U.S.C. 102(e).

  26. I’m sorry again. This happened about five years ago and I am now recalling why they decided not to pursue appeal. The prosecution of that case was torturous. Re-openings after final and such. Lot’s of wasted money.

  27. Google in charge of USPTO searching… an intriguing idea, given their own exponentially increasing patent filings.

    (Currently, 95 granted and 96 published US patents/apps naming Google as assignee, but 408 Google cases visible in EPO – earliest EP case filed 2003)

  28. “The PTO simply refused to even acknowledge my argument. I called the SPE and he was extremely hostile to me over the phone. After filing a couple after final arguments, the client decided to let it go abandoned.”

    Ugh, that’s frustrating. But why didn’t you appeal??? I think the Board would have very likely overturned that rejection.

  29. Sorry, I forgot to mention that our filing date occurred between the provisional and actual US filing date of the applied patent.

  30. I once argued that a patent applied in a rejection against our claims did not have an effective US filing date of that patent’s provisional, and thus was not prior art. In an act of desperation, I had ordered a copy of the patent’s provisional and discovered that there was no support for the subject matter relied upon from the patent, which was used to make the rejection.

    The PTO simply refused to even acknowledge my argument. I called the SPE and he was extremely hostile to me over the phone. After filing a couple after final arguments, the client decided to let it go abandoned.

  31. 6K,

    RE specifically stating that you are denying the claim to the provisional.
    If you do not tell them that the claim is denied, they (and anyone reviewing the case) will not know if you did the analysis and came to the conclusion that the prov didn’t support the pending claims. It will just appear that you messed up and applied a reference whose date was no good (and I have seen examiners try to apply references that don’t have a good date all too often). Making it clear that the claim was denied makes the record clear what you did & why and leaves no doubt that it may have been an oversight about the dates.

    As for east, I largely agree. I know that last year they (cio, sira, etc.) had a bunch of meetings & contractors (including Google) come in with their products & proposals for systems. Don’t know what, if anything, will come of it.

    You are right that sometimes (not always, for sure) a Google search will give a good reference near the top that east will have buried in a couple hundred hits. That is because Google has a ranking built into their search engine & we do not. Personally, I would love to see it added as a feature in east. That way you can sort it by ranking, date, etc. Right now, we can only hope.

    MVS

  32. File claims with your provisional, if you can, for this obscure reason.

    A design application cannot claim priority to a provisional application. A design application can claim priority, however, to a non-provisional application. If you need priority to the provisional filing date for your design application, you cannot do so unless you filed a claim with your provisional application, and can convert your provisional application to a non-provisional application.

  33. Bierbelly:

    Perhaps the 112 rejections in the application on which the publication is based would be (persuasive) evidence of lack of enablement of the publication.

  34. “2. What is wrong with filing claims in a provisional application?

    One may not have enough time to draft claims.”

    …and then when the 1-year deadline to file the nonprovisional rolls around, it will be all too tempting to simply file the non-provisional with the claims from the provisional, for expediency.

    Other than that, the claims in the provisional are not examined. They are simply treated as more disclosure. Only to the extent that they support an enabling disclosure does their presence in the provisional have any effect.

  35. In the US, the whole issue centers on written description support for a claim in nonprovisional. I’ve never seen case law describing a legal presumption of written description support. That’s a fact question, isn’t it? However, I’ve had discussions with EPO practitioners that there may be valid reasons to draft multiple-dependent claims in a provisional if you want a firm priority date and support for them in Europe or other jurisdictions that allow such claiming. Since provisionals are not examined in the US, the issue of their inclusion here seems moot except to form the basis of later filed singly dependent claims in a nonprovisional.

  36. Answer to #2, leads one back to the answer to #1. There is nothing wrong with filing claims in a provisional. In fact, one should include at least one set of claims – but preferably, submit all the claims in the provisional, thus, rendering support for the presumption that the claimed invention is supported by the provisional. Obviously though the spec must support the claims submitted. In other words, if you submit bare-bones provisionals, you are running a high-risk of loosing priority to the provisional AND a malpractice claim.

  37. Ah, a lot of grist for my mental mill, as to responses to the enablement of published applications. One reason I posed the question is that when the standard was set, most “prior art” was in the form of issued patents. Obviously, that’s no longer the case. After all, a published application, until issued, is merely the assertions of the applicant. What if a published application is ultimately rejected and abandoned? What if the rejection(s) include enablement rejections under 112P1?

  38. A non-provisional can claim benefit, not priority, of a provisional. Isn’t that the statutory language?

  39. “I do not understand how the “presumption of validity” of 35 USC 282 passes constitutional muster. As far as I can see, Sec. 282 clearly violates the “due process” clause of the Fifth Amendments. When the government issues a patent to an inventor in an ex parte proceeding, it is essentially restricting the rights of “others” to the claimed invention But shouldn’t “others” have the right “to be heard” before the patents issues and their rights are restricted?”

    Patent law student,

    Here’s the relevant portion of the Fifth Amendment:

    “No person shall…be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.”

    I think the answer to your question is that “others” are not being deprived of property because no “property” exists until the patent is issued.

    As to others having a “right” to the claimed invention, it sounds like you’re assuming something previously existed that “others” had a right to. Assuming an actual invention, why should “others” have a right to something that did not previously exist? If I make $200 doing work today from laboring, why do you have a “right” to it? We’re capitalist American pi gs, not socialists or communists. I say this patri otic ally of course, not in any der ogat ory sense.

    Alternatively, the due process clause gives you a “right” to a hearing, but does not demand that you be allowed to personally represent yourself. I suppose the examination process can be considered the hearing, and the examiner could be considered as your agent in this sense; s/he’s claiming the public already has rights to your invention when s/he rejects the claims.

    Boy is my Con Law rusty. Any other thoughts out there?

    Also, boy is it fun trying to figure out what the sp am filter will reject.

  40. OK, you are citing the arcane case law from plant patents and transgenic mice…

    Sure, if a reference said, transgenic mice can be made, without saying more, such a disclosure could be deemed to be not enabling.

    In the electrical arts, these type of enablement issues wrt prior art don’t come up often if at all. Although I may just have to start using these arguments more often…

    guess I learned something today besides inventing the wheel and bringing the world the gift of fire.

  41. “They are also supposed to inform the applicant that the claim to priority was denied & explain why it was denied.”

    Well I admit I wasn’t aware that I was supposed to inform them that a date wasn’t given, since it should be apparent what is going on to a trained attorney. But I suppose holding their hand is the big fad around here. I would like to know from whence came this instruction you have recieved MVS. I presume you may have just been paying more attention in an OPQA meeting than me.

    Today I tried doing searches “the old fashioned way” first yet again. And yet again a three word google brings up the first hit 102b art for the ind. that 5+ hours of easting didn’t show. East blows, I ha te this thing, they need to replace it, seriously, the amount of $ saved by having more production done faster, better art found on first action, and etc, that would be saved in about 1 week to 1 month would pay for a first class piece of software to replace this. First Class /rantoff

  42. ” Enablement is really not the issue or question despite the issues of the case somehow being so framed in Rasmussen.”

    That doesn’t make sense.

    “Either a prior art method or structure discloses the claimed method or structure or it doesn’t.”

    If that’s the holding of Rasmussen, then Rasmussen would be overturning Elan v. Mayo (“A patent claim “cannot be anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior art are not enabled”) but they cite that case approvingly.

    Always be careful of blurring the distinction between “method” and “structure” claims. In this particular discussion, the distinction is critical. If the prior art describes how to make a specific claimed composition but provides no utility for it, the structure claim **is** anticipated. But if the prior art accidentally discloses a structure (e.g., by virtue of a typo) and nobody in the art knows how to make the structure, that structure is **not** anticipated, i.e., the structure is not anticipated even though the **structure** is published and appears in the prior art, in black and white.

    By attempting to find consistency, the CAFC in Rasmussen instead creates contrast. In Rasmussen the CAFC says that a method described in a prior art reference **is** enabling, **even if nobody else in the art could make the method work.** The only rationale I can come up with for this rather strange (but useful) result is that unlike a “stucture”, a “method” does not have to be “made.” A method is something that one merely does. So if somebody in the art publishes a description of “doing it”, the result of “doing it” is irrelevant.

  43. “Thus, it seems as far as the PTO is concerned, patent publication is presumed enabled”

    Agreed. The burden is on whoever is facing the invalidity challenge to show evidence of non-enablement. The question I was adressing (i think) is : is it harder to show “non-enablement” of a claimed method in an issued prior art patent (asserted as an anticipatory reference) versus showing non-enablement of a method disclosed in some other type of prior art. If the “administrative agency is competent” argument for the various presumptions we find in the patent realm is legit, then I think it should be even harder to show non-enablement of a method disclosed *and claimed* in an issued patent.

    Frankly, I think the difference between these standards is mostly negligible except where the courts have been so kind as to provide us with per se rules relating to particular types of evidence.

  44. Sorry Mooney, its all jibber jabber and gobbeldygook. CAFC was NOT saying “a prior art method is enabled…(blah, blah)” (especially since the prior art method was quite possibly not enabled). Enablement is really not the issue or question despite the issues of the case somehow being so framed in Rasmussen.

    The CAFC was saying essentially that enablement has nothing to do with whether a prior art disclosure is anticipatory. In choosing the language: “…those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference for purposes of anticipation…” they were being kind to the BPAI.

    Either a prior art method or structure discloses the claimed method or structure or it doesn’t.

    To the extent that the lack of enablement in the reference amounts to a teaching away of the claimed method under an obviousness analysis you would be, gasp, correct.

  45. Hi DC,

    1. When an issued utility patent claims priority to a provisional patent application, is there a presumption that the claimed invention is supported by the provisional?

    Yes.

    2. What is wrong with filing claims in a provisional application?

    One may not have enough time to draft claims.

  46. Malcom:

    See MPEP 212

    Prior Art; General Level of Operability Required to Make a Prima Facie Case [R-6]

    >I. < PRIOR ART IS PRESUMED TO BE OPERABLE/ENABLING

    Thus, it seems as far as the PTO is concerned, patent publication is presumed enabled.

  47. Speaking from a non-US centric position, there appears to be a procedural advantage in filing a provisional with claims if the client intends to proceed with a PCT application.

    The PCT rules now allow incorporation of missing elements of a PCT application by cross-reference to a priority application. If your provisional was filed with claims you have the opportunity to rectify a PCT application which was inadvertently missing claims and which otherwise would not be entitled to an International filing date.

  48. pds, I agree that getting a reg # is harder than getting hired. But, the quality of BOTH examiner AND attorneys has gone down significantly in the last 10-15 years. Too many being added and the overall quality being diluted. That was the point.

    MVS

  49. “Do YOU really think that ALL those 40000 registered attorneys are high quality?? If so, I want some of what you are on ;)”

    It is a WHOLE LOT HARDER to get a reg number than it is to become an examiner. I’m not saying that their aren’t bad patent attorneys/agents out there, but the comparison isn’t even close.

  50. On the other hand, it must be noted that the CAFC has held that proving “enablement” of prior art under 102(a) or 102(b) requires less than proving enablement for 35 U.S.C. 112P1 purposes.

    Also, as we know, the burden is on applicants and patentees to prove that a prior art reference is inoperable. But the CAFC has set that bar quite high.

    The most interesting case in this regard is Rasmussen:

    link to cafc.uscourts.gov

    In Rasmussen (an interference), the Board found a patent valid in view of 102(b) art, a published EP application, because (the Board concluded) the EP application was not enabled. The Board made two key findings of fact to support its conclusion: (1) there was no reasonable scientific basis for a person of ordinary skill in the art to conclude that the method in a prior art EP application would be effective [in treating prostate cancer]; and (2) a person of ordinary skill in the art as of the publication date of the EP patent would not have believed that the method described in the patent would be effective.

    The CAFC **overturned* the conclusion of non-enablement based on those findings of fact, stating that “Under the legal standard set forth in Hafner and the cases that have followed it, those findings are insufficient to support the Board’s conclusion that EP ’383 is not an enabling reference
    for purposes of anticipation.”

    In other words, a prior art method is enabled even if the reference which discloses the method “teaches away” (only relevant for obviousness); even if the reference states flat out that the method does not yield successful results; and even if as of the date of publication of the reference nobody skilled in the art believed that the method could yield the results later obtained by the patentee.

    That’s a very low standard.

  51. “anon” said “During examination, the examiner’s search excludes intervening art”

    “6K” countered “Examiners aren’t supposed to make rejections to get them to show where claims are supported in the prov., we’re supposed to look and see if we deem that they have support. If we reject the claim, it’s because we don’t think it has support, if app wants to point it out and be specific as to why it has support (if it’s not apparent) then that’s up to the app.”

    “Veteran Attorney” countered with “Boy, that’s a load of bull. I currently have a non-provisional claiming priority to a provisional. Every claim is supported by the provisional. The examiner has rejected every claim with intervening art. Our provisional completely antedates the intervening art. The examiner didn’t make any analysis of which of our claims were supported.”

    Well, you guys are 1) wrong, or at least they are not supposed to do that; 2) right, that is the way it is “supposed” to be done; and 3) wrong, in that 6k’s answer was “Bull”, but right in that the examiner should have provided the necessary analysis. Respectively.

    The examiner should NOT automatically exclude prior art between the prov date & non-prov date (really, limiting searches by date is almost ALWAYS a BAD idea). If prior art is found that can be used to reject the claims & it falls between the 2 dates, before making the rejection the examiner is supposed to perform the analysis to determine if the application is entitled to the priority date of the prov app. They are also supposed to inform the applicant that the claim to priority was denied & explain why it was denied.

    Unfortunately, examiners do not always do this analysis and just send out the rejection based on the intervening reference. At that point, it makes for a relatively easy response for the applicant, but is a waste of time & money for everyone.

    It gets even worse when the reference relies upon a prov app & that earlier date is needed to make the ref qualify as prior art (i.e., the ref non-prov beats the app non-prov date & the the same with regard to the prov apps.) Then, the analysis is needed for BOTH the applicant AND the reference. All too often it is not done by the examiner, but should be. I have seen this tried a few times in the last couple months & had to get it corrected.

    And, as an additional note to “veteran attorney”, just remember that you attorneys $crew up just about as often as we do, whether you want to admit it or not. I am not excusing the mess examiners make. But I AM pointing out BOTH sides make mistakes.

    After all, for all the hiring the office has done in recent years, there has been a lot more out there. In the time I have been in the office, the employee numbers have gone up from the mid-60,000 to the mid-80,000 range. In the mean-time reg #s have gone from the around 29000 to pushing 70,000.

    Do YOU really think that ALL those 40000 registered attorneys are high quality?? If so, I want some of what you are on ;)

    MVS

  52. Professor Crouch:

    Were these two questions on a patent law final exam which you gave to your students? If so, please post the best answers. Thanks

  53. “Does a published patent application have the same presumption of enablement as does an issued patent, for prior art purposes?”

    Surely not.

  54. What is wrong with filing claims in a provisional application?

    Is there an estoppel if the claims which are filed in the regular application differ from the provisional claims???

  55. “Boy, that’s a load of bull. I currently have a non-provisional claiming priority to a provisional. Every claim is supported by the provisional. The examiner has rejected every claim with intervening art. Our provisional completely antedates the intervening art. The examiner didn’t make any analysis of which of our claims were supported. Had the examiner bothered to do so, the rejection would never have been made.”

    So you’re saying a single examiner somewhere did something “wrong”? OMG NO!!!! Say it isn’t so!!!

    “Any thoughts, anyone?”

    I’ll tell you why law student, because this is LOL land. Probably also because they’re interpreting the due process to be whatever the f they want it to be in whatever type of case is under discussion. Don’t let the fact that a good portion of this nation’s laws/regulations are unconstitutional get you down, we do the best we can.

  56. Mad Prosecutor–I did not explain very well, and maybe this is only a problem for sequence-related applications. However, one possible scenario (not discussed during the presentation, but consistent with it) would be as follows: the application contains a claim directed to a method involving the use of a sequence, perhaps identified by name (“Gene A”). The Examiner makes a rejection and in response the Applicant modifies the claim to specify a particular sequence, perhaps by GenBank accession number, which is included in the specification. The PTO notes, fairly, that sequences identified by accession numbers are subject to change and outside the control of the Applicant; on the other hand, any such “changes,” I believe, are usually corrections of an initial sequence later discovered to include mistakes. In any event, Ms. Burke indicated that such an amendment (in addition to making possible a second-action final) would be scrutinized for specific/explicit incorporation by reference of the sequence identified by accession number (requiring both “intent to incorporate” and the “root words”). Further, if that sequence had been modified (e.g., corrected on GenBank) prior to the filing date of the application, the official position would be that the PTO could not determine which of the versions of the sequence was intended and that a rejection under 112, 1st (new matter) could also be appropriate. Ms. Burke indicated that in some instances the specification could be amended to correct any such problem, but if the PTO is going to apply this strictly I would imagine that it’s going to cause problems for a lot of applications that were believed to have been carefully drafted. In any event, if you have claims including a limitation to a particular gene, be careful of what amendments you make to that limitation in view of this new rule (or “interpretation,” or whatever it’s supposed to be).

  57. Inquiring mind – not sure whether “Julie Burke” and her slides have the last say as to what is required to incorporate by reference. Also, I think that many of us write something along the lines of “the disclosure of YYY is incorpated by reference herein in its entirety.” That would seem to be specific and root-word-using enough.

  58. “Does a published patent application have the same presumption of enablement as does an issued patent, for prior art purposes?”

    Published patent applications, IMO, don’t have any presumptions attached to them, until they issue.

  59. News flash from the BCP presentation today by the PTO: blanket statements of incorporation by reference are probably not sufficient for incorporation of essential information, so the catchall paragraphs we’ve all been using for years are an illusory protection. The incorporation must be specific and must include the “root words” “incorporate” and “reference,” or something like that–see Julie Burke’s slides, available at the Cabic website (cabic-dot-com). The presentation also made it sound like putting something in the claim of a priority application gets more weight from the Examiners, or maybe it’s just easier to find; I am still not sure. Why do I keep feeling like the PTO is playing “gotcha”? And why can’t everybody be more like my favorite PTO person, Jean Witz? (although I’m not familiar with all of her stuff, her presentations always seem kind-hearted and non-adversarial–thank you, Jean, from the bottom of my heart).

  60. I do not understand how the “presumption of validity” of 35 USC 282 passes constitutional muster. As far as I can see, Sec. 282 clearly violates the “due process” clause of the Fifth Amendments. When the government issues a patent to an inventor in an ex parte proceeding, it is essentially restricting the rights of “others” to the claimed invention But shouldn’t “others” have the right “to be heard” before the patents issues and their rights are restricted? The “due process” clause has been widely invoked in numerous cases involving Federal agencies proceedings, including the FDA and IRS. Why wasn’t the “due process” clause ever invoked in a patent infringement case, in regards to the allocation of the burden of proof under Sec. 282?

    Any thoughts, anyone?

  61. “Examiners aren’t supposed to make rejections to get them to show where claims are supported in the prov., we’re supposed to look and see if we deem that they have support. If we reject the claim, it’s because we don’t think it has support, if app wants to point it out and be specific as to why it has support (if it’s not apparent) then that’s up to the app.”

    Boy, that’s a load of bull. I currently have a non-provisional claiming priority to a provisional. Every claim is supported by the provisional. The examiner has rejected every claim with intervening art. Our provisional completely antedates the intervening art. The examiner didn’t make any analysis of which of our claims were supported. Had the examiner bothered to do so, the rejection would never have been made.

  62. Yes, I did misunderstand, my bad. Um, I don’t see what he could be meaning by “presumption” then, if you have claims directed towards the prov then those claims get the date, other claims, so far as I know, do not. You do not “presume” the claims in an issued patent to get the prior date until you yourself look back.

    “Clearly this is a trick question by the Professor.
    Priority date is assigned on a claim by claim basis rather than to a patent as a whole.
    It’s treated the same as a CIP. During examination, the examiner’s search excludes intervening art, so I guess you could say that a presumption exists here (although that’s not DC’s “question). During litigation, “priority” (really earliest date of invention) is determined on a claim-by-claim basis. As the plaintiff, you better do you due diligence before you assert, because the defendant certainly will. ”

    ^that is the correct answer. And yes, examiners are expected to look and see which claims have support for what date they get to determine what art is applied. There is no “presumption” in litigation (i.e. after issue) until the court looks back and sees, but when they do find support and your argument is on art that is in the intervening period then you’re up the river. You have to look back and see for each claim.

    “An examiner is fully within his/her rights to reject a claim in a non-provisional with intervennig art and require the applicant to respond and show how the provisional supports the non-provisional claim and antedates the intervening art.”

    I say something based on not reading the question well, and then you come along and say something blatantly stupd. Gj. Even assuming we’re talking about examining the app your answer is 180 degrees arse backwards. Examiners aren’t supposed to make rejections to get them to show where claims are supported in the prov., we’re supposed to look and see if we deem that they have support. If we reject the claim, it’s because we don’t think it has support, if app wants to point it out and be specific as to why it has support (if it’s not apparent) then that’s up to the app.

  63. And here’s a corollary question:

    Does a published patent application have the same presumption of enablement as does an issued patent, for prior art purposes?

  64. I sure don’t presume the examiner looked to see if there was support. That is: attorneys amend claims all the the time. Sometimes the amendments comply with 35 USC 112 1st, sometimes they don’t. And when they don’t: Sometimes examiners catch it, sometimes they don’t.

  65. “Nice to see that when the professor’s not teaching students, this blog gets more substantive!”

    Are you sure he’s not teaching? You’ve heard of the Socratic method, haven’t you?

  66. “If there’s no presumption of priority in a CIP that has a different disclosure (see recent case), there shouldn’t be any presumption for provisionals that have different disclosures.”

    I like this, SF.

  67. Nice to see that when the professor’s not teaching students, this blog gets more substantive!

  68. It’s treated the same as a CIP. During examination, the examiner’s search excludes intervening art, so I guess you could say that a presumption exists here (although that’s not DC’s “question). During litigation, “priority” (really earliest date of invention) is determined on a claim-by-claim basis. As the plaintiff, you better do you due diligence before you assert, because the defendant certainly will.

  69. If there’s no presumption of priority in a CIP that has a different disclosure (see recent case), there shouldn’t be any presumption for provisionals that have different disclosures.

  70. “Some of you are discussing this question in the context of an application under examination (i.e., does the examiner presume priority). The question is regarding “**issued** utility patents” (emphasis mine), specifically, and is therefore not about whether the examiner is to presume priority, but whether an **issued patent** carries the presumption.”

    Oops. Then I change my answer. There is no presumption.

  71. Perhaps the professor will clarify his question – I suspect that where he is going is whether or not the presumption of patent validity carries with it a presumption that every claim of an issued patent is assumed to be entitled to the provisional’s filing date if necessary to preserve the validity of the claim. My response was directed to the prior art status of an issued patent which claims priority to a provisional.

  72. Clearly this is a trick question by the Professor.

    Priority date is assigned on a claim by claim basis rather than to a patent as a whole.

    There could be some claims in the issued utility that are fully supported by the provisional under 112 and others that are not so. The fully supported claims would be entitled to the earlier filing date of the provisional. The nonsupported claims would be assigned the later date of the nonprovisional filing.

    Moreover, the inventor may have filed a Rule 131 that claims a date of invention prior to the provisional or nonprovisional filing date for one or more of the claims. So assessment has to be claim by claim and in view of what happened during prosecution.

  73. OK, then is the real question: “Does the presumption of validity of an issued patent extend to a presumption that any provisional filing date is effective to exclude intervening prior art?”

    Does the answer to that not depend on USPTO practice relating to examination of that issue? If the issue hasn’t been examined, it can’t be presumed to have been disposed of…

    If the issue had been considered in examination and the provisional filing date had been found to be irrelevant to the issued claims, would that fact be reflected in the cover data of the issued patent?

  74. From Ex parte Traversat:
    “In accordance with the Examiner’s theory that some or all of the Teodosiu published application may be applied against the instant claims, the rejection should show, to establish a prima facie case for unpatentability, where § 112 support resides in the earlier provisional applications for each instance of specific subject matter relied upon in the published application, including an explanation why the provisionals would still be recognized by the artisan as providing support if not “word for word” the same as the later text or drawings.”

  75. There is no such presumption that an issued patent is presumed to be entitled to the priority date of a provisional from which it claims priority (although many examiners assume that there is such a presumption). See, e.g., Ex Parte Traversat: link to des.uspto.gov

  76. Some of you are discussing this question in the context of an application under examination (i.e., does the examiner presume priority). The question is regarding “**issued** utility patents” (emphasis mine), specifically, and is therefore not about whether the examiner is to presume priority, but whether an **issued patent** carries the presumption.

  77. What constitutes the USPTO “considering priority” though?

    If the only prior art of record is dated before the priority date, there is no guarantee that the examiner did anything more than assume that the priority date was valid for all claimed subject matter. The only time you have such a guarantee is in the negative – i.e., if the examiner used an intervening reference to reject particular claims combined with a determination that the claimed subject matter was not supported by the provisional. In short, you can not show the positive (i.e., all claimed subject matter is properly supported) absent an explicit statement as indication.

  78. Yes, there is, in the realistic sense.

    Examiners usually assume that there is, and very infrequently actually check before abandoning the rejection based on the intervening reference. Also, when preparing opinions, the initial thought is that the patent probably will (arguably) be able to claim priority to the earlier filed provisional application.

  79. “e6k, you misunderstand the question.”

    That’s not even the tip of the iceberg that is 6k’s misunderstanding.

    I don’t think there is any presumption. A claim in a non-provisional is entitled to the priority date of a provisional if the provisional enables/supports the claims as required by 112, 1st.

    An examiner is fully within his/her rights to reject a claim in a non-provisional with intervennig art and require the applicant to respond and show how the provisional supports the non-provisional claim and antedates the intervening art.

  80. Presumably the real question here is whether the provisional filing date is presumed to be effective to exclude prior art that would otherwise be relevant to the validity of the claims of the issued utility patent; i.e. whether that issue is positively considered during examination by the USPTO.

    Is it?

  81. If you’re talking about in litigation (which I think you are based on the reference to an “issued patent”), this sounds like the recent PowerOasis case–presumption of priority exists if the USPTO considered priority during prosecution, otherwise not.

  82. e6k, you misunderstand the question.

    I don’t know why there would be such a presumption. An examiner can reject over intervening art if the provisional doesn’t support the claim. Conversely, the record might indicate that the claims were distinct from intervening art, perhaps only after amendment. In the latter case, you might even argue that the patentee is estopped from arguing that the provisional provides support.

  83. DC we went over this the other day, you get that “presumption” if you include a REFERENCE to the application and say the relationship between them. You do not have to specifically claim priority though. And, of course, you have to have claims that cover something in the prov.

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