Patent Prosecution Malpractice: Proving the Case-Within-a-Case

Davis v. Brouse McDowell (Fed. Cir. 2010)

Ms. Davis has developed the “IP-Exchange” as a networking portal for IP professionals. The site boldly claims a “Patent Pending Business Method.”

Before releasing her website, Ms. Davis spoke with Daniel Thomson then of the Ohio-based Brouse McDowell law firm about patent protection. Their conversation apparently included a discussion of potential international filing. There was no direct evidence, however, that Mr. Thomson informed her of the “absolute novelty” rule found in most countries that bars an inventor from obtaining a patent on material that had been publicly disclosed prior to the filing of the patent application.

Ms. Davis released her website in 2005 and then several months later (January 2006) she filed two provisional applications pro-se. Five-days before the non-provisional application was due, Ms. Davis again approached Mr. Thomson and asked him to file non-provisional applications and a PCT application. He agreed to do so in a rushed manner (despite a planned vacation). The PCT application was not filed by the one-year expiration date, although three US non-provisional applications were filed.

Ms. Davis eventually allowed her US patent applications to go abandoned. She then sued Thomson and Brouse McDowell for malpractice based on failure to file the PCT applications and negligence in preparing the US applications. The district court (Judge Sara Lioi) dismissed the case on summary judgment – finding that the case lacked merit. On appeal, Federal Circuit affirmed in an opinion written by Judge Moore and signed by Judges Newman and Bryson.

Patent prosecution malpractice has historically been difficult to prove because the court requires proof that – but for the malpractice, the invention would have been covered by a valuable patent.

We agree with the district court that Mr. O’Shaughnessy’s [expert] report provides sufficient evidence to establish a genuine issue of material fact as to whether Mr. Thomson breached a duty he owed to Ms. Davis as her attorney. Mr. Thomson went on vacation, missed filing dates, and, by his own admission, filed an application which he realized contained a poorly drafted specification and claims which he intended to repair at a later time. This is certainly not standard or adequate patent attorney representation, especially if, as Ms. Davis alleges, he did not inform her of his intention to proceed this way.

However, even if Ms. Davis can establish that Mr. Thomson breached a duty to her, she must still also prove causation, i.e., that absent his breach she would have obtained a patent. . . . [However, the] district court observed that Mr. O’Shaughnessy had not performed a prior art search or a “patentability analysis,” nor had he identified particular claims that could be made for Ms. Davis’s inventions. Therefore, the court found that Mr. O’Shaughnessy’s patentability opinion lacked adequate foundation and could not be relied upon by Ms. Davis as evidence of patentability.

We agree with the district court’s conclusion. . . . Mr. O’Shaughnessy’s opinion that Ms. Davis’s inventions are patentable is precisely [the] type of conclusory statement [that are insufficient to defeat summary judgment]. His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory assertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability. An unsupported opinion such as this cannot and does not create a genuine issue of material fact as to the patentability of Ms. Davis’s inventions. . . . [A]n expert’s naked conclusion is insufficient to survive summary judgment.

In dicta, the court made clear that the “case-with-a-case” does not require that the malpractice plaintiff identify the exact patentable claims and how those claims would have been patentable over the prior art. Rather, the burden is to “establish the likelihood that her inventions would have been held patentable on examination . . . in accordance with the criteria of patentability applied during examination.”

Federal Courts Jurisdiction: An interesting aspect of the decision involves the jurisdiction of federal courts. Malpractice is typically a state claim, but some patent malpractice cases are properly adjudged by federal courts if the “relief necessarily depends on resolution of a substantial question of federal patent law.” In this case, the court noted that federal jurisdiction would not exist if the malpractice claim had been wholly based on loss of foreign patent rights.

85 thoughts on “Patent Prosecution Malpractice: Proving the Case-Within-a-Case

  1. Max, re your comment on equity at 8:36 am,

    I agree that Paris is supposed to put domestics and foreigners on the same reciprocal footing. However, your described situation does not lead to me to believe the result is inequitable.

    If you file first at home (a), then again 12 months later (b) then file foreign (c) yet another 12 months later, claiming back 12 months with a priority declaration, your foreign application only got 12 months priority from (b), it did not get 24 months priority from (a).

    I agree that the domestic (b) and the foreign (c) now have different priority dates. But the reason for different priority dates is due to the choices you made.

    Because you chose to file at home 12 months earlier than you chose to file foreign, your priority date at home is 12 months earlier than your priority date in a foreign country. This seems equitable to me.

    I think what you’re saying is that the foreign application and the domestic application should be required to be filed at the same time. In that case, then, the foreign (c) would have the priority date of first-filed (a), instead of the priority date of domestic (b).

    I think the loss of the one year priority in exchange for the opportunity to file one year later is equitable. Nobody is obliged to file everywhere at the beginning of the Paris year. Rather, one should simply recognize that not filing within 12 months will cause you to lose the 12 months priority.

    This is what strikes me as being inequitable about the two-provisional situation. If the applicant files at time 0 and time 6 months, then at 18 months decides to claim priority to time 6 months, he knowingly gave up the priority from time 0. I think it’s inequitable to take from him another 12 months, so that his priority date is now 18 months. There doesn’t appear to me to be any harm to giving the applicant the priority date of time 6 months. The two provisionals did not publish, so there was no removal of knowledge from the public domain. A second-comer would still be in the position of being second-comer and thus possibly liable for infringement.

  2. broje I find that following the blogs and actively participating is far more effective in keeping up and bettering my understanding of IP laws and best practices than any CLEs I’ve attended.

    Hear, hear.

  3. Max, as US patent attorneys, we basically learn a procedure to follow regarding PCT practice. That procedure I learned is correct, and I can’t go wrong by following it.

    Beyond that, when it comes to advising a client regarding whetehr their rights will be preserved to file in foreing countries in view of a potential public dislosure, I have to advise them thqat rules for filing in foreign countries vary, and they can change without us knowing it, so we will have to write and ask foreign associates in the countries of interest to analyze the fact setting and give us their professional opinions. We don’t attempt to be experts who can answer those types of questions, and as persons not licensed to practice law abroad, it would be inappropriate for us to make that attempt.

    As a result of this discussion, I now have a better understanding of the rules that led to that procedure that I learned, and I have gained an appreciation for how to permissibly deviate from that procedure in certain circumstances. As a reult of participating here, I think I probably know a bit more about PCT priority claims than most US patent practitioners. I find that following the blogs and actively participating is far more effective in keeping up and bettering my understanding of IP laws and best practices than any CLEs I’ve attended.

  4. Lurking: re “1) the situation of two provisional applications having identical content. My problem is that the second provisional does not claim priority to the first provisional, so I don’t see how the first provisional can trump if no application ever claimed priority to the first provisional.”

    The way I read article 4c4, the claim of priority to the first provisional is only ONE of several conditions that will cost you your priority claim from the secopnd provisional of identical content.

    In order for the PCT application to get the priority date of the second provisional, these two things must be true at the time the second provisional was filed:

    (a) the first provisional has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

    (b) the first provisional not yet served as a basis for claiming a right of priority.

    The same analysis applies to your second situation. It’s not that you lose the priority claim if both of those things aren’t true. You lose the prioority claim if either is not true.

  5. But is there anywhere you know of, where can I get a more “fair” reading than here in these admirable pages?

    Come on over. I’d be happy to introduce you to some of my colleagues, and we’ll share with you what we think. And I guarantee that none will use the word “baboon” in a discussion of patent law.

  6. Well Hobbes perhaps there is. I grant you there are some fairly bizarre views posted in these pages, which I am inclined to assess as not really typical of those held by representative specimens of US patent attorney views. But is there anywhere you know of, where can I get a more “fair” reading than here in these admirable pages?

  7. In my daily practice, what matters is what US patent attorneys really think (rather than what the law in the USA actually is).

    But Max, isn’t there a threshold question as to whether the threads on Patently-O will actually give you a fair reading of “what US patent attorneys really think”?

  8. I’m genuinely curious, Hobbes, at the extent and depth of the misapprehensions. In my daily practice, what matters is what US patent attorneys really think (rather than what the law in the USA actually is). So, if you like, irony. Whether deliberate or accidental, I’m not sure.

  9. I agree it’s a matter of knowing where to look. For example, I’m looking at this thread, to see how US patent law experts understand the provisions of the Paris Convention.

    Hmmm… Is the irony intentional, or accidental?

  10. Quite right, Lurking. I agree it’s a matter of knowing where to look. For example, I’m looking at this thread, to see how US patent law experts understand the provisions of the Paris Convention.

    As to equity, how about this?

    Paris is supposed to put domestics and foreigners on the same reciprocal footing, so that filing at the “home” Patent Office is equal to filing away from home, so that everybody has the same chance to “get in first” all around the world. But, if domestics can file first at home, then again 12 months later then file foreign yet another 12 months later, claiming back 12 months with a priority declaration, this symmetry is destroyed, obliging everybody to file everywhere at the beginning of the Paris year.

    Paris could have been written in a way that would allow and encourage cascades of filings but it wasn’t. As written, it gives an Applicant a priority date, that is the SAME date both at home and away from home.

    Is that equitable, or is it not?

  11. Um Max, you understand that just because we are attorneys doesn’t mean we’re experts in all facets of law or patent law, correct? I rather think of it as knowing where to look in order to educate myself on whatever facet is relevant at the time.

    Broje, I am having problems applying the phrase “and if it has not yet served as a basis for claiming a right of priority” to two situations:

    (1) the situation of two provisional applications having identical content. My problem is that the second provisional does not claim priority to the first provisional, so I don’t see how the first provisional can trump if no application ever claimed priority to the first provisional.

    (2) the situation of a U.S. utility claiming priority to a provisional. Here, the provisional has not yet served as a basis for priority, so I don’t see why you can’t get the filing date of the U.S. utility. If the provisional was filed at time 0, a first utility was filed at time 6 months, and a second utility was filed at time 12 months, and a PCT was filed at time 24 months claiming priority to the second utility, I could see how maybe 4(C)(4) would apply to cut off you claim to priority of time 12 months. But I’m not sure that’s equitable. Also, I’m not sure why I wouldn’t have advised a PCT be filed at the same time as the first utility or instead of the first utility.

  12. Folks, I have been urging on you that Paris is YOUR law because you signed Paris. Or am I to understand that you sign Paris but then don’t put your domestic law in line with Paris? I am thinking about a priority competition in the USA between, say a German and a Brit, one of which is claiming off of a “first” application in a Paris Convention country and the other of which is claiming off of UK-pro-2, which was not the first (because there was his earlier UK provisional of identical content, filed 11 months earlier and still pending on the day the 2nd UK pro was filed). Does the UK claimant get the benefit of UK-pro-2 in the USA? Is that in line with Paris? Is it in line with domestic US patent law? I’m interested.

    Should it not be you folks educating me about Paris? You are attorneys-at-law and I am not.

  13. *****
    I’m still not sure about that interpretation of 4(C)(4), but will have to think about it some more
    *****

    I know what you mean. It is hard to read. In the example of the regular application claiming priority from the provisional, and the later filed PCT application claiming priority from the regular, I look at it like this:

    “A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority,if …”

    The part above means that the filing date of the regular application (i.e., the subsequent application) becomes the priority date for the PCT in spite of the earlier filing fo the provisional (i.e., previous first application) if …

    “at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority”

    … at the time of filing of the regular US application, no priority claim was already made to the provisional application in any applicaiton, and the provisional application is already dead.

    So, if your regular US application claims priority from the provisional application, or if it was filed before the provisional application expires or is expressly abandoned, then the PCT application does not get the claim of priority to the filing date of the regular US application. Am I applying it correctly to this scenario?

    Not being an expert on laws in foreign countries, I still wonder if that means the regular US application will then be prior art to at the National stages in any foreign countries.

    In the case that the US application claims priority from the provisional application filed one year prior, I’m thinking that the US application will be pulished at 18 months from the date the provisional was filed, which is 6 months after the regular US application was filed. So, if the PCT application was filed within that 6 months, and there had been no public disclosure (e.g., the website) then maybe the PCT application could survive in most foreign countries at the National Stage, but I really don’t know. But if it was filed after the regular US application published, then the published regular US application would be prior art to the PCT application under PCT rule 64. Is that correct?

  14. Hobbes,

    I think Max is referring to the duty to disclose material information from 37 CFR 1.56, or risk inequitable conduct. This assumes that the other applications will eventually be published, I think.

    In that regard, though, Max, U.S. provisional applications are not considered prior art because they are never published.

    I’m still not sure about that interpretation of 4(C)(4), but will have to think about it some more.

  15. broje Not a dig at you, Malcolm. But if this is true, then it is one of the stupidest things I have ever heard

    Like I said: one of the most annoying PCT rules.

  16. Can you (or another reader) educate me on which earlier patent applications must be declared on the USPTO Declaration and Power of Attorney Form that the inventor must sign. I thought Inventor had to declare the details of ALL earlier patent applications filed on the same invention.

    37 CFR 1.63 is pretty clear that the oath or declaration needs to identify the applications to which you’re claiming priority. I don’t know of any reason why an inventor would have a legal duty to disclose applications that are not serving as the basis of a priority claim and that are not published.

  17. broje Malcolm, you said “It is certainly true that the use of a US provisional filing as the basis for a priority claim renders that provisional filing open to the public.” Someone pointed out to me recently that the provisional application only becomes open to the public upon issuance of a US application that refers to it. In your view, is that correct?

    With respect to the term “only”, it is not correct. A provisional which serves as a priority doc for a PCT application also becomes public upon publication of the PCT application (or upon entry of the priority claim, if that happens to be later).

    MD Can you (or another reader) educate me on which earlier patent applications must be declared on the USPTO Declaration and Power of Attorney Form that the inventor must sign. I thought Inventor had to declare the details of ALL earlier patent applications filed on the same invention.

    You mean Form SB01?

    link to usforms.com

    I’m not seeing any such requirement, at least not set forth expressly on the form.

  18. Never mind AGAIN! It does say “at the time of filing of the subsequent application.” Mea culpa.

  19. ********
    My understanding is that, at least in Europe, the priority date of the patent so obtained can be challenged (typically in litigation?) when it is discovered that the provisional application filed at Time 0 was not abandoned prior to filing the subsequent (Time 0.5) provisional. The result of a successful challenge is that the patent is entitled to a priority date no earlier than the PCT filing date.
    ********

    Not a dig at you, Malcolm. But if this is true, then it is one of the stupidest things I have ever heard, and I can’t imagine why any european authorities would rule in this fashion. It is my understanding that the earlier provisional becomes, in effect at least, automatically abandoned for failing to claim priority from it, and it never becomes available to the public. Paris convention Article 4(c)(4) does not say anything about the “previous application” having to be abandoned before the “subsequent application” is filed, and I cannot imagine any good and just reason for European authorities to require it. Can someone explain it to me?

    Also, Malcolm, you said “It is certainly true that the use of a US provisional filing as the basis for a priority claim renders that provisional filing open to the public.” Someone pointed out to me recently that the provisional application only becomes open to the public upon issuance of a US application that refers to it. In your view, is that correct?

  20. Max,

    I can appreciate your position. Malcolm’s answer addressed my concerns, so no harm done.

  21. Me again. Malcolm, I’m curious about your “strange voluntary public admission”. Can you (or another reader) educate me on which earlier patent applications must be declared on the USPTO Declaration and Power of Attorney Form that the inventor must sign. I thought Inventor had to declare the details of ALL earlier patent applications filed on the same invention. So why is Inventor spared the duty to declare on the USPTO Form that accompanied US-D the filing of application US-A, that was still pending when US-D was filed?

    Could it be very simple, that there is no requirement to file a Declaration and Power of Attorney form on filing a US pro? But is there a requirement for such a Declaration later, if and when the PCT comes back into the USPTO in the national phase?

  22. Malcolm, indeed we look. The loss of Paris Convention priority is not often decisive. But when it is, it short circuits what might otherwise be a longer and more uncertain process to get the claim found invalid.

    Lurker: I don’t mean to be rude, in not answering. I just think that Paris is no less part of your law than it is mine. Any US patent attorney should know it as well as any patent attorney from any other member State, no? Perhaps you haven’t heard from your EP counsel because by the time the case gets to them it’s too late to repair the damage done by claiming off of an app that wasn’t the First in a Convention country in respect of that same subject matter. They might also baulk at starting to educate you about something they would presume you knew (or ought to have known) already? What do you think about that?

    Other readers know this already: I post to amuse myself and to provoke answers from which I can learn something. I don’t post in order to give legal advice.

  23. MD The only thing I want to dispute about Malcolm’s surmises above is the bit about discovery. I had thought that use of a US filing as the basis for a priority claim under Paris would result in the PCT file open to the public including a certified copy of the priority application.

    It is certainly true that the use of a US provisional filing as the basis for a priority claim renders that provisional filing open to the public.

    But the first scenario described in my comment refers to the situation where a previously filed provisional “concerning the same subject matter” as a subsequent provisional (let’s just say the two provisionals are identical, to make the analysis straightforward) is *never* the subject of a priority claim but, importantly for the statute, was not abandoned prior to the filing of the second identical provisional application that is used as the basis for a priority claim in a PCT application.

    In that case, absent some strange voluntary public admission by the patentee, the only way to discover the existence of the earlier filed provisional application is through discovery. I realize this sounds like inside baseball, but my impression is that EP (and presumably other foreign) litigators always look into the possibility of such an earlier filed provisional because removing the early priority date makes for a much easier kill.

  24. The only thing I want to dispute about Malcolm’s surmises above is the bit about discovery. I had thought that use of a US filing as the basis for a priority claim under Paris would result in the PCT file open to the public including a certified copy of the priority application. I had always thought that any US application would recite the serial number of any earlier US application in respect of the same subject matter. So why do I need discovery when I can see in the priority doc that there are earlier US filings on the same invention?

    Malcolm has everything else right, including when you claim priority from a CIP. Amazing how well-informed some baboons are.

  25. This is truly one of the most annoying of all PCT rules:

    Paris Convention article 4(C):

    (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.

    (2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.

    (4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority

    From a practical perspective, the main impact of this rule for many US practitioners relates to the repeated filing of provisional applications prior to pulling the trigger on a utility application. Consider a provisional filing at Time 0 to preserve an early filing date to put a stake in the ground for the concept of an invention that is deemed not quite ready for a prime time utility. At Time 0.5 years, the inventor realizes she is still not going to be ready for a utility filing after 1 year, so she re-files the provisional application (the “subsequent” or second application). Then, at Time 1.5 years the inventor files a PCT application claiming priority to the subsequent provisional.

    My understanding is that, at least in Europe, the priority date of the patent so obtained can be challenged (typically in litigation?) when it is discovered that the provisional application filed at Time 0 was not abandoned prior to filing the subsequent (Time 0.5) provisional. The result of a successful challenge is that the patent is entitled to a priority date no earlier than the PCT filing date.

    Under this hypothetical, the existence of the previous provisional would presumably only be known through discovery.

    The complicating twist arises from the fact that serial provisional filings drawn to the same generic subject matter often differ by the addition of new examples and more specific written description related to those examples. My understanding — and MD or someone else who considers themselves an expert here should chime in — is that the reference in article 4(C)(2) to “the same subject matter” puts the focus squarely on the claimed invention. Therefore, as long as my issued claims are drawn relatively narrowly to the species first disclosed in “subsequent” provisional D, the failure to abandon provisional A prior to filing provisional D (or even the existence of a separate PCT claiming priority to provisional A) would not prevent a PCT application from properly claiming priority to provisional D.

    I would love to be set straight if any or all of the above is bullshxt.

  26. Looking at 4(C)(4), it’s time to clarify with a concrete example. Max, I’d appreciate your input here.

    (a) File a U.S. provisional on Jan. 1, 2000.
    (b) File a U.S. utility application on June 1, 2000 that claims priority to the provisional (a).
    (c) File a U.S. utility application on Jan. 1, 2001, that claims priority to the provisional (a).
    (d) File a PCT application on Jan. 1, 2001, that claims priority to (b) and (a).
    (e) File a PCT application on June 1, 2001, that claims priority (b) and (a).
    (f) File a U.S. continuation on Jan. 1, 2002, that claims priority to (c) and (a).
    (g) File a PCT application on Jan. 1, 2003, that claims priority to (f), (c), and (a).

    In my experience, here is the result:

    PCT application (d) receives a priority date of Jan. 1, 2000, because that date is 12 months prior.

    PCT application (e) receives a priority date of June 1, 2000 from claiming application (b), but does not receive the priority date of Jan. 1, 2000 that is claimed from application (a) because that date is more than 12 months prior to the filing of application (e).

    PCT application (g) receives a priority date of Jan. 1, 2002, from claiming application (f), but does not receive the priority date from claiming applications (c) or (a).

    I think Max’s comments are directed towards claiming priority from a continuation, not from the provisional itself. Is this correct? I ask because claiming incorrect priority dates usually gets resolved by WIPO during the international stage, and this is how they handle it in my experience.

    I also think the point of Paris is not as Max stated. Rather, the point is that at most you get one year of priority, no matter the priority rules in one particular country (i.e. U.S.) which might give you more than one year of priority.

    Of course it is relevant if the earlier filing was laid open or published. There’s a gigantic “if” clause in 4(C)(4) that makes it relevant.

    I searched for any patent cases related to Paris Convention priority dates and did not find any results. It was a quick search, though.

    I’m also curious about the malpractice question. If you are a European patent attorney, is it considered malpractice if you do not advise your U.S. client of how to properly claim the priority date? I don’t mean to sound confrontational (if it does sound this way), but I have never heard of Article 4 being interpreted this way from any of the European attorneys I work with, and I’m pretty sure this issue would have come up before.

    Max, I have learned some helpful practice points from you before. I hope this is another one of those times.

  27. broje is on to it.

    WARNING: the following comments come from my pen at midnight on a Friday night and so might not be as judicious as usual.

    The point of Paris is that it deters you from creating a cascade of filings, a sequence, and declaring the priority of the filing in the sequence which is closest to one year old, by providing that your priority declaration is of no effect in ROW, unless the fact is that you killed all earlier filings BEFORE you filed the one which is being claimed as the priority date.

    It is irrelevant whether the earlier filings are pro or non-pro, and whether they were ever laid open in a PTO file, or printed and published.

    As far as I know, the USA is the ONLY country in the world that has the entity known as the continuation or continuing application. Long may it remain so. It bamboozles US patent attorneys into supposing that they can choose as priority, to declare in their foreign filings, any filing in the sequence. They only find out years later that their declaration of priority is useless, and that with the loss of its benefit their claims and their client are totally fxxcked in every foreign jurisdiction.

    Which is why I ask, who knows about the Paris Convention. I should have thought it relevant to malpractice insurance.

    Mind you, if Patent Deform goes through, and the US starts thinking about the effects of FtF, the risk of malpractice will diminish, as everybody begins to get a grasp of Parisian philosophy.

    Tell me, are these provisions of Paris used, in the US courts, when a US patent declares a Paris Convention priority date in, say, Japan, and the priority date is invalid?

  28. Nevermind. this is one of those times I thought I was worng, but I was wrong. I’m mea culpaing my mea culpa in view of Paris Convention article 4(C)(4):

    A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority

  29. ******I believe Max is correct – the way Article 4 of the Paris Convention is written, it specifies the conditions under which a priority claim can be made. One of those conditions is that the earliest application to which priority could be made must be less than one year old.
    ******

    I used to read it that way too, until I took a look at the Paris convention article 4 and saw that it says nothing about earliest application in the chain of priority. It just says earlier application.

    I looked further, and it appears that the thing about the provisional application is that it does not constitute a public disclosure. I’ve recently seen some in depth discusions of this issue online, and it appears that Still Lurking is correct. From all appearances, you do get the priority date of the regular US application despite the provisional being filed earlier.

    The provisional application has to converted to regular in order for it to become prior art. Nobody does that because it costs a year of patent term in the US. The reason a provisional can serve as a proper claim of priority in a PCT application without it being converted to regular is that the law in the US was amended to specifically provide that a proper claim of priority in a PCT designating the US will convert it. But, since the claim is late and not proper, it does not convert.

    Admittedly, all this is quite confusing, and I am open to further discussions.

  30. Whoa!

    Here’s a link to Article 4 of the Paris Convention:

    link to uspto.gov

    I see nothing here that refers to the earliest application that “could” be made as subsequently invalidating a priority claim to even the non-provisional. JimD, Max, and Ned, which section of Article 4 are you referring to? Is there a treatise you can refer to on this point? The closest thing I see is Section C.4, and a U.S. provisional appears to meet all the requirements to be disregarded there: it is abandoned after one year and never published.

    I’m willing to learn, but this does not sound correct at all.

  31. JimsD, the zombie provisional will haunt you if you did not abandon it before filing the application that IS within 12- month period. However, if you did abandon it in time and if you, did not claim priority to it, there should be no problem.

  32. JimD and MaxDrei, two more wrinkles: you have to abandon the provisional prior to filing the non provisional and further cannot claim priority to it in the US non provisional for the priority claim in the PCT to the US non provisional to be proper.

    There are a lot of requirements for a proper priority claim under the Paris convention.

    The US attorney in this case clearly did not understand the Paris convention.

  33. Spot on Jim D. There are two potentially rich seams to mine, when a European patent needs to be put in issue. The potential is higher when the application came out of the USA. One juicy attack is that claim 1 fails to meet Europe’s “written description” requirement. The other attack is that the claim is not entitled to benefit from the Paris Convention claim to priority whereby Applicant’s own activities in the USA (filing or publication) prior to the date of PCT filing, are prior art which kills the claim.

    Question: Does a US patent attorney regard Paris Convention, as such, as “domestic” or “foreign” law?

  34. I believe Max is correct – the way Article 4 of the Paris Convention is written, it specifies the conditions under which a priority claim can be made. One of those conditions is that the earliest application to which priority could be made must be less than one year old. Fail that test, say with a 13-month-old provisional, and you get NO priority claim, not even to the non-provisional, in your PCT application.
    It’s been suggested that a provisional can be formally abandoned, so as to head off this result, but in the US it’s possible to claim priority of an abandoned provisional. The mere existence of the option might render the dead provisional undead under Art. 4. Unpublished, perhaps, and not an issue during prosecution — but if it’s discoverable, can the zombie application come back to haunt you?

  35. “I’m getting the distinct impression that not even the barest minimum knowledge of Paris is necessary to qualify as a US patent attorney. Anybody want to dispute that?”

    Sure thing. The patent bar has sections on PCT in the MPEP. In order to get a registration number, they would presumably need to know at least “the barest minimum knowledge” of PCT (unless they get a threshold passing number of the other questions correct, which may minimize necessary PCT knowledge to zero).

    I would certainly hope though, that those using PCT would be familiar with its workings.

  36. Anybody want to relieve broje and lurking of their abject ignorance of the provisions of the Paris Convention? Sorry fellows, you don’t get the priority effect of the non-pro, and what’s this “reported as prior art” guff?

    I’m getting the distinct impression that not even the barest minimum knowledge of Paris is necessary to qualify as a US patent attorney. Anybody want to dispute that?

  37. OK. Techniclly, you are correct. It is not viewed as prior art in the preliminary examination, but will be reported as potential prior art that countries may want to consider at the National Stage. Mea Culpa.

  38. broje,

    That doesn’t appear to be correct. If your PCT application claims priority to the US nonprovisional and to the US provisional, and is filed more than one year after the provisional, you only get the priority claim to the nonprovisional (assuming you file less than one year after the nonprovisional). The nonprovisional does not become prior art against the PCT application.

  39. My understanding is that the actual filing date of the PCT application would be viewed as the actual filing date in Canada, and not the priority claim date.

    Also, I am under the impression that, even if there had been no public dislocure before the provisional was filed, the PCT application would still have to be filed within one year of the filing of the provisional patent application. The reason is that the PCT refers to the Paris Convention rules for claiming priority, and the Paris Convention requires that the foreign application be filed within one year of the earliest priority date in the chain of priority. So, if the PCT application were filed more than one year after the provisional application, and if it attempted to claim priority from the US regular application that, in turn, claims priority formt he provisional application, then the priority claim in the PCT applicaiton would be ineffective, and the US regular application is prior art to the PCT application.

    However, let me remind you that I am not your lawyer, and this is not legal advice.

  40. my thinking was couldn’t the PCT be treated as a continuation of the earlier filed non-provisional US application? Then it would get benefit of filing date of the non-provisional as well as the provisional.

    It’s not a dumb question, and the correct answer is the one you got – yes you can do it, but it probably won’t work.

    US continuation practice is pretty unique. Not every country allows you to file a new application whenever you want and claim priority back to anything that’s still pending and follow that application’s priority all the way back up the chain. Most places will let you reach back one year for priority, and anything filed earlier than that is prior art.

  41. I guess I should have known better that to ask a question here without being ridiculed. To specify my question, my thinking was couldn’t the PCT be treated as a continuation of the earlier filed non-provisional US application? Then it would get benefit of filing date of the non-provisional as well as the provisional.

    Of course I’m aware that the website could still be prior art if there is no priority chain.

    Haven’t any of you heard of the saying that there is no such thing as a dumb question?

  42. PCT Question asks:

    “If he filed the patent application before the 1 year deadline of the provisional application, could he not file a PCT application claiming priority to the just filed patent application, as long as it was filed within 30 months of the filing date of the provisional application?”

    to which the answer is “Yes, of course he could so file.”

    Whether there would be any point though, is another matter.

    When can a filing at the USPTO establish a priority date outside the USA, and when can’t it? Who knows. I assume that the USA is still a member of the Paris Convention club of nations. Anywhere in the world that operates a FtF system (including Canada) needs strict priority rules, to ensure that the first filer of an enabling disclosure prevails over even earlier filers who deposit at the PTO less than enabling disclosures of the same invention.

    May I ask, how much knowledge of the Paris Convention is required, in order to qualify by examination as a US patent attorney?

  43. could he not file a PCT application claiming priority to the just filed patent application,

    He could, but the public disclosure (if it counts as one) would still anticipate in Canada.

    It’s amazing what you can find on the internet. Here’s Canada’s version of 102, in relevant part:

    28.2 (1) The subject-matter defined by a claim [...] must not have been disclosed
    (a) more than one year before the filing date by the applicant, [...] in such a manner that the subject-matter became available to the public [...];
    (b) before the claim date by a person not mentioned in paragraph (a) [...];

    Note “filing date” (the actual Canadian or PCT filing date) for disclosures by the applicant in (a), and “claim date” (the priority date) for disclosures by a third party in (b).

  44. If he filed the patent application before the 1 year deadline of the provisional application, could he not file a PCT application claiming priority to the just filed patent application, as long as it was filed within 30 months of the filing date of the provisional application?

  45. Would it be possible to bring a share holder’s derivative suit against the company if it could be shown that the patent could have been granted?

    You don’t file a shareholder’s derivative suit against the company, you file it against someone else (e.g., a director) on behalf of the company. Any award goes to the company.

    Here, it appears that you’re unhappy with a business decision. That’s not a sufficient basis for any suit. See “business judgment rule.”

  46. A query for those of you out there. Were a company to abandon a patent application that it turns out could have been used to protect a valuable market, as evidenced by a competitor’s sale of a product. Would it be possible to bring a share holder’s derivative suit against the company if it could be shown that the patent could have been granted?

    Or is it that this is too tenuous of a situation for which damages could be had vis-a-vis a share holder derivative suit.

  47. This article answered my questions.

    link to internationallawoffice.com

    The PCT filing does count as the actual Canadian filing for falling wirthin the grace period. But, if the website disclosed “in such a manner that the subject matter became available to the public in Canada or elsewhere,” then the PCT application would have to have been filed months before the US conversion apps were filed. Regarding on-sale bar issue in Canada, if, due to the nature of the invention, the product sold cannot be reverse-engineered to reveal the subject matter of the invention, there is no disclosure. I’m not sure what the facts are here, much less what the outcome might be.

  48. Yeah, broje is right. I was thinking of Canada, but I forgot the public disclosure was before the provisional filing on these facts. Of course, Canada doesn’t have a specific “in public use or on sale” bar, so we could discuss whether the website really does anticipate.

    So, PCT was probably a waste after all. Still, there’s no set of facts that justifies both (1) agreeing to file a PCT, and (2) not filing a PCT.

  49. *******
    I thought Japan does not require absolute novelty. Six month grace period?
    *******

    But it was already a year later. Anything else?

    Last I heard, Canada has a one year grace period for public disclosure, but there is a funky requirement that the actual Canadian filing must occur within the year, and that it does not suffice to claim priority to another patent filed within that year. Maybe that is more of an issue for design patents, and the PCT filing will count as the actual Canadian filing in a utility application. Does anyone know the answer to that question?

  50. Maybe Thompson will countersue under 35 USC 292 (patent false marking) alleging that The IP-Exchange website statement, “Patent Pending Business Method, 2010″ is intentionally deceptive.

  51. After spending months arguing with MM, I can say that this is accurate. She did forget to mention that he is in fact a baboon.

    Posted by: Night Writer Patent Attorney

    Martin, you’re a one-note p.o.s.

  52. “exception of NAL’s typical ad hominem agst malcolm”

    I can think of no one more deserving of ad hominem attack…

  53. plurality wrote “I look forward to no more than ten interesting posts interspersed among 90 posts dealing with speculation as to which pseudonyms are actually being used by the same person”

    Actually, with the exception of NAL’s typical ad hominem agst malcolm, and malcolm’s predictable response, the posts are pretty interesting.

  54. “. . . [A]n expert’s naked conclusion is insufficient to survive summary judgment.”

    can Ms. Davis file a malpractice suit against her expert?

    isn’t this her attorneys’ fault for not knowing how to prove a patent malpractice case?

  55. It is instructive to see continuing use of means + function clauses in claims in the business method area.

    35 USC 112(6) anyone?

    Was there supporting structure e.g. specific programs that might be adapted and if so how, or flowcharts? Probably not, but others may know more.

  56. >>In this light, “back up any comment” means non->>answer and run away, or change the subject

    After spending months arguing with MM, I can say that this is accurate. She did forget to mention that he is in fact a baboon.

  57. oh, I forgot malcolm uses “bui” – broadest unreasonable interpretation in filtering his position.

    In this light, “back up any comment” means non-answer and run away, or change the subject, or provide a misdirective non-answer such as derogatory political references including sex acts with dead presidents, or of t-bagging (obviously something heavily on malcolm’s mind). So in malcolm’s mind, he has backed up any comment he makes, even if it is backed up with the same crap that needs back up in the first place – conclusory, circular handwaiving is perfectly legitimate in malcolm’s world of “bui”.

    How nice of such a person to ask anyone else to stay classy.

  58. Oh Malcolm you are such a funny sock puppet. You remind me so much of someone else Malcolm. And I see you are an early riser like me. Or are you having trouble sleeping tonight Malcolm?

  59. “I’ll back up any comment I make, any time”

    Written

    Matter

    Doctrine

    or perhaps we could try the within-6-month-hints-of-sock-puppet challenge?

    What the sam hill?

    Now run malcolm, run.

  60. Mr. Thomson, at best, could be faulted for (1) not counseling Ms. Davis on the absolute novelty bar (although he may have but evidence is lacking), and (2) for accepting her request to file the nonprovisional and PCT applications.

    But for her to assert malpractice because he accepted her instructions Wednesday (although she knew he was leaving Thursday), to give him materials ON Thursday consisting of over 275 pages, and expecting him to file pristine applications on Monday, is just galling. Did she really need to be told that the applications weren’t going to be perfect? C’mon. (Same goes for this panel – Newman should know better.) And Bad Joke Ahead is right on, as I’m sure Mr. Thomson would agree now.

  61. NAL This coming from the expert on conclusory assertions

    Sorry, NAL. I’ll back up any comment I make, any time. You must confusing me with someone else. Again.

    I also will happily admit being incorrect about any assertion that I make, and have done so here plenty of times. Try it sometime. It won’t kill you.

  62. No good deed goes unpunished is a aphorism that applies here.

    Heather Davis seems like a mentally unstable and overly demanding person. It is precisely such people who file malpractice claims.

    Good job, Fed. Cir. Had they held for the good Ms. Davis, I would have puked.

  63. *******
    he might have secured some protection for his client in whatever countries might still have been salvaged.
    ******

    Are there really any countries that don’t require absolute novelty, and in which the PCT application would have served to secure the right of priority despite the public disclosure one year before filing?

  64. Mmmm, oh how malcomy:

    “His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory assertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability.

    Mr. O’Shaughnessy would find a lot of friends here. – Posted by: Malcolm Mooney | Mar 02, 2010 at 03:48 PM”

    This coming from the expert on conclusory assertions, added with the delightful subtle reference of the Office with “lots of friends here” – Malcolm must know that fine Office attorney who tried handwaiving before Michel (but we indeed have 400,000 patents being processed here – you can trust me, don’t I look honest?).

  65. “1. An apparatus for providing at least one transaction of intellectual property rights, the method comprising the steps of:
    providing a means for listing intellectual property rights;
    providing means for accessing the means for listing;
    providing a searchable database of the intellectual property rights; and
    categorizing the intellectual property into technology categories.

    1. A search engine for providing at least one transaction of intellectual property rights, the method comprising the steps of:
    means for listing intellectual property rights;
    means for accessing the means for listing;a searchable database of the intellectual property rights; and
    means for categorizing the intellectual property into technology categories.”

    Lololololol, no comment on these particular matters.

    Class, mixing claim types is bad mmmkay?

  66. His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory assertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability.

    Mr. O’Shaughnessy would find a lot of friends here.

  67. Another example of why the Supremes in In re Bilski need to “save the patent system from itself” by finally dealing with business methods? But can we hope for any real clairity?

  68. Subject to detailed analysis about what means means, doesn’t the PTO website anticipate those claims?

    Also, “An apparatus, the method comprising” and “A search engine, the method comprising”? Wow. This guy must have been really eager to make his flight.

  69. Even though normally arising under state law, malpractice claims in patent matters are heard in federal court on the following grounds:

    28 U.S.C. §1332 Diversity

    Marley Mouldings Inc. v. Suyat, 970 F.Supp. 496 (W.D.Va.1997)

    28 U.S.C. §1338 Exclusive Jurisdiction for Patent-related cases

    Air Measurement Tech v. Akin Gump Strauss Hauer, 504 F.3d 1262 (Fed. Cir., 2007)

    Immunocept v. Fulbright & Jaworski LLP, Case No. 06-1432 (Fed. Cir., 2007)

  70. At the risk of sounding like Mooney, these two applications were based on “have a website perform the operation and it’s novel!” delusions. She should be grateful that the attorney did not file corresponding PCT applications. One (cringe-inducing) independent claim for each app., as follows:

    1. An apparatus for providing at least one transaction of intellectual property rights, the method comprising the steps of:
    providing a means for listing intellectual property rights;
    providing means for accessing the means for listing;
    providing a searchable database of the intellectual property rights; and
    categorizing the intellectual property into technology categories.

    1. A search engine for providing at least one transaction of intellectual property rights, the method comprising the steps of:
    means for listing intellectual property rights;
    means for accessing the means for listing;a searchable database of the intellectual property rights; and
    means for categorizing the intellectual property into technology categories.

  71. can Ms. Davis file a malpractice suit against her expert?

    Anyone can file a suit. The interesting question is whether she would win.

    She’ll need a new expert, of course. The new expert will have to opine that but for the old expert’s malpractice Ms. Davis would have won her case against her lawyer. This will require the new expert to also opine on the fate of a hypothetical competently drafted patent application for her invention, without either her lawyer or the PTO being a party to her latest malpractice suit. Assuming he’s even an expert on that. Otherwise, Ms. Davis will need a second expert.

    She’d better get good experts for that suit, or the recursion will quickly spiral out of control.

  72. “. . . [A]n expert’s naked conclusion is insufficient to survive summary judgment.”

    can Ms. Davis file a malpractice suit against her expert?

  73. If you went to those CLE’s, you’d know that that’s EXACTLY the kind of client most likely to sue for malpractice and file bar complaints regardless of any errors.

    Even so, promising a timely PCT and not filing one is bad practice regardless of the prospects in Europe, as is rushing a regular or three when someone else at the firm might have had more time to do a proper job.

    What’s more, at least if he’d filed PCTs instead of US regulars, he might have secured some protection for his client in whatever countries might still have been salvaged. Or he could have filed one regular instead of three, with enough material to support later continuations or divisions.

    Let’s be clear, this isn’t a case of no malpractice. This is a case of no damages.

  74. Looks like Daniel Thomson should have paid more attention in his local bar association’s client intake CLE.

    This lady had EVERY mark of the worst kind of client. At every turn, she wanted top quality work at cut rate prices and wanted it straight away. If you went to those CLE’s, you’d know that that’s EXACTLY the kind of client most likely to sue for malpractice and file bar complaints regardless of any errors.

  75. “That by itself may make it standard, but does not make it adequate. You reject those applications, right?”

    Sometimes.

  76. MaxDrei: “I look forward to a vibrant thread, on a subject dear to the hearts of posters here.”

    I look forward to no more than ten interesting posts interspersed among 90 posts dealing with speculation as to which pseudonyms are actually being used by the same person.

  77. Great case Dennis. Am keen to read the Decision. How long before this thread gets bogged down in discussion about loss of the lady’s Constitutional right to a patent under the PCT? Never mind the unavailability outside the USA of patents for pure business methods. That Mr O’Shaughnessy knew of no impediment to patentability outside the USA does him no credit in his capacity as expert. Did we not recently discuss the phenomenon of deliberate indifference? Has it now reared its unattractive head again, and so soon too.

    I look forward to a vibrant thread, on a subject dear to the hearts of posters here.

  78. That is actually all too common.

    That by itself may make it standard, but does not make it adequate. You reject those applications, right?

    Also, add this case to the list of recent CAFC decisions that follow the numbered circuits on questions not particular to patent law.

  79. “This is certainly not standard or adequate patent attorney representation,”

    This particular judge needs some time in the trenches. That is actually all too common.

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