Provisional Patent Applications

The number of provisional patent application filings continue to rise.  Well over 100,000 provisional patent applications have been filed each of the past five years.

For many, provisional applications are seen as a low-cost mechanism for claiming a priority date and for delaying the eventual higher cost of drafting and filing a non-provisional application. (A Google search for “provisional patent” resulted in ads for “$99 provisional patent”, “$139 provisional patent”, etc.) Others (especially those in the pharmaceutical industry) use provisional applications as a way to claim an additional year of at the end of the patent term.

Many patent attorneys criticize the use of provisional applications as a low-cost pathway — arguing that approach leads to a false sense of security because the low-quality applications will be insufficient to satisfy the disclosure requirements for later priority claims.

I am working on a project that looks at how patent applicants are using provisional patent applications.  The heart of the project attempts to determine whether the provisional disclosure properly enables and describes the invention as eventually claimed. Those results are still pending. However, I thought I would present some preliminary information about the provisionals in our study.

Results: One of the low-cost benefits of provisional applications is that they have no formal requirements. Thus, a printed PowerPoint presentation, whitepaper, or circuit diagram could each serve as a provisional application.  Patent claims are not required. However, we’re finding that about 60-70% of provisional applications are filed with at least one claim.  About 50–60% really look like non-provisional patent applications.  Around 15% of the provisional applications are essentially a stack of presentation materials. Almost all of the provisional applications are computer generated (rather than handwritten).

 

 

103 thoughts on “Provisional Patent Applications

  1. 103

    To: Roufousse T. Fairfly
    Dear Roufousse:
    You mentioned “If fees are paid, the application is abandoned after receiving the search report (first filings have top priority at the EPO)”.

    In this case for subsequent PCT filing (with EPO as ISA) do they givediscount on Filing Fees at WIPO, considering that the the same searcher/examiner will also prepare ISR?

  2. 102

    MaxDrei,

    My practice is to keep the PCT and the US applications in line as much as possible. A minimalist approach is not to be confused with a sloppy or truncated approach. In fact, writing less takes more time because I have to craft the specification and claims to be tighter.

    If I were to write two different applications on the same invention, I would still have to align the two as I have a duty to share with the US office the search results from the PCT application (in an abundance of caution, I share the search results and the PCT examiner’s search report). With even a moderate sized docket, having essentially two different applications with the resulting doubling of my efforts is not efficient.

  3. 101

    They can’t win, can they IANAE, for as far as the rest of the world is concerned, committing to what you think you’ve invented, no later than the day you file you app at the Patent Office, is an unavoidable part of any “First to File” patent system.

    Not that this requires a c-i-t claim on Day One. Such claims typically emerge only during prosecution.

    No wonder that many of those who file patent applications at the USPTO want nothing to do with FtF.

    Out of curiosity, I wonder how many corporate Applicants file one specification in the USA (which refrains from any commitment) and a different, more committing one under the PCT.

  4. 100

    So actually,

    having read through what I just wrote, I do realize that the the best mode without a summary is very important because you need some identifier of what the invention is and the description alone may not do that.

    It’s important in the US if you want any scope beyond the best mode. Therefore, it is probably a bigger problem in Europe.

  5. 99

    Max,

    The US is more rigid about adding “new matter” than Europe is. Everything absolutely has to be in the application as filed or you lose priority.

    Where I believe Europe is stricter is adding information to the claims. In other words I understand that a clear description of the scope of the intended claims needs to be in a European application to support any modifications to those claims.

    The reason I thought Europe would have been better is that they don’t hold you as tightly to your exact words as the US does. If you get your intent across, the EPO won’t play games.

    Let’s say to one skilled in the art phrase/terminology A means the same as phrase/terminology B. In the US, If I use and claim A in my application and I do not say B any where in my application as filed, I will probably receive a new matter rejection if I attempt to claim B in an amendment.

    My belief is that in the EPO, they look at intent and do not play as many semantic games and would allow a rephrasing that did not change the meaning.

  6. 98

    It does not divide according to what is old and what is new. It divides according to what technical features are in D1 and which are not. Totally different thing.

    It’s not as different as all that, provided you understand “what is new” to mean “what is required to establish novelty under a 35 USC 102-analogue”. It is new to add these features to D1, because D1 does not have them.

    Whether the invention is non-obvious as well as novel is, of course, a separate issue.

    Wondrous to behold how it can expose weak arguments of non-obviousness.

    I actually do like seeing applicants commit to what they’ve really invented, but under the current law they’d be foolish to do so.

  7. 97

    IANAE, I must jump in to comment on the European c-i-t two-part form of claim. Do not compare it with a Jepson. That it most definitely is not. It does not divide according to what is old and what is new. It divides according to what technical features are in D1 and which are not. Totally different thing.

    It does this to expose the obviousness issue to the light of day. Typically, the features of the characterizing portion are old too, just not in D1. I imagine very many readers have already experienced the demoralising effect of seeing their beloved claim rendered into c-i-t form. Wondrous to behold how it can expose weak arguments of non-obviousness.

  8. 96

    Yes, I think you are Lionel. Here are two reasons:

    1. Europe is First to File country. Everything depends on being first to file. So, in a priority contest, everything depends on your being earlier than the other guy, with your statement of invention to the Patent Office. If you find yourself in a priority contest, the content of the provisional will be the exclusive basis on which the Tribunal decides. So, much is expected of those that write provisionals.

    2. Europe, being First to File country, is ruthless on prosecution amendments, that seek to smuggle into the pending application text that discloses an invention that wasn’t there, in the app as filed. This ruthlessness carries over into the judgement whether a claim is entitled to the filing date of the provisional.

    So, in your pro to be relied upon in Europe, those statements of invention are absolutely vital. Not so in the USA, I had thought.

  9. 95

    Ned: IANAE, ah, but I rely on it to provide the requirements of a written description when there are no claims. That is the whole point here.

    That’s not the whole point here. The rest of the point is that the particular requirement to distinguish old from new used to be a specific statutory requirement, and has since been repealed and replaced.

    The law has changed since Eaton, on the very point you rely on Eaton for.

    Read Eaton again. At the time of Eaton, the statute had both the present-day statutory written description language and the requirement to distinguish old from new. One remains, the other is gone. Therefore, the present-day written description requirement, whatever nebulous thing it means, does not mean the patentee must distinguish old from new in the description. The applicant is only required to have a description of what is ultimately claimed as the invention.

    The claims inherently have to recite what’s new to be valid over the prior art, but even they don’t have to distinguish old from new. If they did, we’d all be drafting in European two-part form.

  10. 94

    “better” may not be the appropriate descriptive term. What I meant was, I believe option 1 was potentially less damaging to the applicant in Europe than in the US. Am I wrong?

  11. 93

    Good to know, Lionel. Thanks.

    May I ask, what is it that prompts you to write:

    “….better to use 1 in Europe…..”

  12. 92

    Max,

    It would be extremely irresponsible to use 1 in the US. I would have thought it better to use 1 in Europe than in the US. I would also draft a set of claims from the broadest I thought allowable to the narrowest.

    In the past when I have filed the research paper or presentation as my provisional, I always included a couple paragraph summary and some claims.

  13. 91

    One great thing about provisional is you can have a lot of claims without excess claim fees, and multiple-dependent claims are free. As a result, you have a combinatorial diverse set of claims. all of which you can say were originally filed claims. This gives you great flexibility in satisfying the written description requirement.

  14. 90

    I read this with interest. deliberately provocative, I now invite comment from readers. What sort of provisional serves client better:

    1. Confine it to a detailed description of the Best Mode, and write nothing else; or

    2. write a specification that includes the text of a “Summary of the Invention” (but leaving out any sub-title as dangerously irresponsible as this one), followed by the text of (1) above.

    For the rest of the world, it would be negligent to use Version 1. Conversely, for the special case of the USA, would it be more in the interests of client to follow Version 1?

    I know what Ned thinks. What do others think?

  15. 89

    when there are no claims

    Ned, when there are no claims, you need to pay attention to which parts of the law apply, and which do not. The case cannot be exactly on point, because the case did not deal with a provisional application. Could you ask for as clear and simple a point as that?

    112 2nd paragraph does not apply. And that be the location of the requirement that you be trying to apply. If you think that that be in 112 1st, then the 112 section has surplusage, which we all know (and some even remember) is against the canons of legislative law construction.

  16. 88

    ping, I will hold you to your words:

    “It only means that you have to describe what you believe is the invention.”

  17. 87

    IANAE, ah, but I rely on it to provide the requirements of a written description when there are no claims. That is the whole point here. This case is exact on point when a patent application is filed, as provisional applications are, without claims. What is the requirement of sufficiency of he written description of the invention for provisions in order to get a filing date? The requirement is set forth in Eaton.

    Now, I will grant you this: if a spec is filed with claims, the claims can provide the function of identifying the invention because the claims are deemed part of the specification. But when a provisional application is without claims, there has to be something more than just a description of some embodiments to satisfy Section 112, p. 1. There has to be some description of what the invention is.

  18. 86

    But the majority noted that the requirement to describe the invention

    does not equal “requirement to deliniate that which is old from new”.

    It only means that you have to describe what you believe is the invention.

    I realize that this trend in history happened after Ned’s ability to store new information was lost, but ya really need to take a look at most applications nowadays – little to none in the section “Background”. There be a reason for this.

  19. 85

    Now, why did Ariad cite Eaton for its requirement of a WD, if it was completely obviated by the 1836 Act?

    Because Ariad’s argument was precisely that the written description requirement in Eaton was completely obviated (in relevant part) by the 1836 Act.

    If you have to reach as far back as 1822 for caselaw in support of any position, you should probably check to see if the law has changed in the meantime.

    You’ll note that the Ariad court never actually relied on Eaton for the proposition that the specification must explicitly distinguish old from new. They only relied on it to show that written description was something more than enablement.

  20. 84

    ping, I know that is what he is saying. But, that was exactly Rader’s point as well. When, in 1836, Congress required claims, Rader argued that they no longer need the specification to distinguish old from new. But the majority noted that the requirement to describe the invention, not just how to make and use it (the argument of the dissent in Eaton) was carried over in the new act and was relied upon repeatedly by the Supremes thereafter to be a substantive requirement independent of enablement.

    Now, why did Ariad cite Eaton for its requirement of a WD, if it was completely obviated by the 1836 Act?

  21. 83

    6,

    I LOL you. Always thinking about chicks, man.

    Dr. Zaius wasn’t being sexist, he was being speciesist.

    Ned,

    IANAE’s point is too subtle for you. IANAE asks “Where do those “very words of the act” or their equivalent appear in the current patent law?” because the answer is in the second paragraph of 112 – something provisionals are not bound to. See 35 USC 111(b)(2).

  22. 82

    6, man is pestilence!

    Your buddy mooney is funny though. I guess he’s a frequent RCE filer, most notably in cases where the PTO fails to properly consider an argument with supporting evidence. Or maybe he just gives up and tells his client what a crrp application he has filed. What a fine attorney he must be!

  23. 80

    ” The examiner refused to even acknowledge our arguments. ”

    Like I told you. Don’t make it an argument. M a k e i t a q u e s t i o n. Capiche? I don’t understand what is so hard about this. Either way, I suppose if you couldn’t get ahold of the guy at all on the phone then sure there might have been a problem.

    ” what more must one do than politely point out the deficiency and ask for reconsideration?”

    I just told you in the preceding paragraph. Stop arguing.

    “This resulted in the same ape calling the PTO over and over. I can imagine them answering the phone and thinking “____, it’s Zaius again!””

    Yeah that’s probably not the best thing to do unless you are a master arbitrator, which you obviously are not. I’m guessing you were the partner in charge of this operation because I wouldn’t expect any normal partner to agree to such a thing.

    “I bet SPE “Taylor” was pissed off because he was lazy and did not want to actually read the application, much less the more cryptic provisional application.”

    Idk man I’ve never met a spe that lazy, his wife was probably cheating on him.

    ” I guess I should have expected that much from a man”

    WHOOOOOOOOOOOOOOOOOOOOOOOOOOOAAAAAAAAAAAAAAAAAA. Dr. Zauis is a WOMAN? Don’t even tell me this is NAL in her second suit. I could totally see NAL trying to take over dispute resolution in a lot of cases that aren’t hers. LOLOLOL.

    “All this happened while you were probably still in high school.”

    Ancient history eh?

    ” I am often pleasantly surprised by the professionalism of some of the newer examiners compared with the ones hired ten or so years ago”

    This provides a sharp contrast to everyone btching to high he ck about the new examiners not a year ago. See idk, I think its your guys perception of the office that changed. Not so much the office.

    “Funny that this is what the PTO wanted all along, but at the time it caused many problems.”

    So, 1000$ was a problem? Meh, I have no pity for such an application. You’re applying for power over every person in our country, if you can’t pay a mere pittance meh.

    In any case, hope I was helpful and you can do better with your next provisional citing case.

  24. 79

    But more importantly, the reason why I was trying to appeal to examiners via phone calls was to avoid filing RCEs unnecessarily. It was the only option at the time other than appeal and abandonment. Funny that this is what the PTO wanted all along, but at the time it caused many problems. In this case, the client deciding not to pursue further prosecution (foreign clients like this one more often than not avoided appeal).

    Bizarre. RCE’s are not expensive and it sounds like you had a slam dunk. Maybe it was just a crrrp case and everybody knew it.

  25. 78

    6, you are telling me to ask the examiner exactly the way I attempted to do so. I did call this examiner, several times unsuccessfully, which eventually led to me calling his SPE. What am I doing incorrectly? (I just jumped around in my cage for five minutes)

    Obviously most cases do not turn out this badly. I thought I’d address Dennis Crouch’s question above regarding whether examiners refer to provisional cases. This was the only time I ever attempted this approach to overcome a rejection. In this case, I asked an examiner to consider the provisional of a patent being applied. The fate of our application rode on knocking out this patent reference that taught all the claimed limitations because the earlier filed provisional did not (I remember we could not file a 131 declaration in that matter). The examiner refused to even acknowledge our arguments.

    “Correctly”: what more must one do than politely point out the deficiency and ask for reconsideration? Those parts of the PTO were like an RCE cartel at the time (most often groups 2100 and 2600). But, I do admit one thing I did wrong was to channel problem cases from several prosecutors though myself to the PTO. This resulted in the same ape calling the PTO over and over. I can imagine them answering the phone and thinking “____, it’s Zaius again!”

    I bet SPE “Taylor” was pissed off because he was lazy and did not want to actually read the application, much less the more cryptic provisional application. I guess I should have expected that much from a man. Maybe he was pissed off because his examiner was avoiding me. It might be that he was pissed off that day because I interrupted his ebay bidding.

    [All this happened while you were probably still in high school. I know the culture at the PTO has changed over the past year. I am often pleasantly surprised by the professionalism of some of the newer examiners compared with the ones hired ten or so years ago]

    But more importantly, the reason why I was trying to appeal to examiners via phone calls was to avoid filing RCEs unnecessarily. It was the only option at the time other than appeal and abandonment. Funny that this is what the PTO wanted all along, but at the time it caused many problems. In this case, the client deciding not to pursue further prosecution (foreign clients like this one more often than not avoided appeal).

  26. 77

    “Others (especially those in the pharmaceutical industry) use provisional applications as a way to claim an additional year of at the end of the patent term.”

    Shame on me: I kinda thought that it’s over when it’s over. You Pharma Dogs (and “Others”), so you have a way to get an “additional” year!

    COOL!

  27. 76

    I now can and now do understand why the second made it a divisional. And never cited a Ghost. But as for the next whoooieeee. I will never understand if the USPTO was on the up and up, “WHY” they allowed the (excuse my disgusting commentary) Huk A Louie on the third that was not acceptable, and of course never cited the Infante with the Deep blue eyes?

  28. 75

    Where do those “very words of the act” or their equivalent appear in the current patent law?

    IANAE,

    Ned won’t answer because he cannot answer. It’s all IMHO-Ned law.

  29. 74

    I don’t know if this has been mentioned before, but University Technology Transfers utilize provisional applications extensively. Basically, the provisional allows professors to go out and give presentations, while preserving the filing date. Likewise, it gives the university 1 year to find a willing party to license the potential patent too. That party is then required to pay for the prosecution costs of the non-provisional application, something that most universities cannot afford to do considering the large volume of potential patent applications. Of course, most established companies that are potential licensees want an issued patent rather than a provisional (and will refuse to pay the prosecution costs) and most other potential licensees (i.e. startups) cannot afford the costs. However, every now and then, the stars line up and one of the many provisionals blossoms into a patent and a steady source of revenue.

  30. 73

    “I once had a patent applied against claims I was prosecuting. It was a difficult imaging software case. The priority date of the provisional of the patent was very close to our filing date, but preceded it by a couple of months.

    I decided to order that provisional application and study it for support of what was disclosed in the patent and used against our claims.

    It turned out that there was no support for a particular feature going back to the provisional filing date.

    I brought this up in the reply and sent a copy of the provisional to the examiner, who ignored my argument. I called his SPE, who verbally assaulted me on the phone.

    That case went abandoned because the client was somewhat upset I spent the time to take this route and billed him for it.

    LOLOLOLOLOLOLOLOL @ u. If I may offer a suggestion, next time don’t “argue” that there is no support for a specific feature. Simply ask the examiner, in one sentence, where the support is found after having stated that you have been unable to find it. You dam dirty apes don’t know how to prosecute.

    By the by, was the SPE’s name “bright eyes” or “Taylor” and did he call you a “dam dirty ape”?

  31. 72

    “I don’t do it anymore, but I used to take great pleasure and making SPEs perform their duties. I have, in the past, called many Directors and I believe was blacklisted for some time. In all these cases, we were in the right.”

    LOLOLOLOLOLOLOLOLOL. You can “make” SPEs “do their duty” sometimes, but you can’t forever. Looks like you found out the hard way.

    “Communication. You’re doing it wrong.”

    Indeed it appears he was.

    “As my old buddy root boy slim said many years ago, I used to be a radical until that billy club set me straight. ”

    LOLOLOLOLOLOLOLOLOL

    “No I am not. Those cases were all handled correctly. I just thought I’d try calling when these problems reared their head. In fact, I was the go-to guy when people had PTO problems and many of the cases I as handling for the entire firm. Strong words from someone who seems to spend 90% of his time here. ”

    Defining “correctly”. You’re doing it wrong. I promise.

  32. 71

    The Supremes held that this was a violation of the WRD requirement.

    Ned, read the part of Eaton that you cited above.

    “Nothing can be more direct than the very words of the act. The specification must describe the invention ‘in such full, clear, and distinct terms, as to distinguish the same from all other things before known.'”

    Where do those “very words of the act” or their equivalent appear in the current patent law?

  33. 70

    ah yes, ping, “we” understand what you mean with your cryptic remarks and jabs.

    All, the Eaton court had a specification that described a prior machine. What was new was a round shaft rather than a square shaft. But that became apparent only by comparing the two machines. Nothing in the specification gave any hint that a round shaft was the invention.

    The Supremes held that this was a violation of the WRD requirement.

    Now, patent applications today routine use claims to identify the invention. But provisionals do not — but they still must fulfill the requirements of Section 112, p. 1, to be entitled to a filing date.

    Now, while the courts have yet to hold this (and ping, pay attention, please); it would seem that if a provisional specification is filed without identifying the invention, it fails Section 112, p. 1. So, if it is filed without claims, the spec will have to make up for it by identifying the invention in some manner.

  34. 68

    Completely off-topic question here… Can statements made in prosecution of a patent application be used for estoppel purposes in litigating another commonly-owned patent? For example, the examiner cites a patent (Patent A) granted over a year before the application being examined (Application B) was filed that has the same inventors, interpreting a portion of Patent A a certain way that reads on the claims of Application B… Applicant replies saying that the prior art shouldn’t be interpreted that way – then later the applicant is asserting Patent A in litigation, but is trying to have it construed in the way that the examiner tried to apply it against Application B – can the defense use the prosecution history of Application B to defeat this construction attempt?

  35. 67

    I don’t see any mention of the entitlement requirements in countries such as Australia, Canada, and India. One relatively easy way to establish the proper entitlement of the corporate entity applicant in a PCT national phase entry is where there is a priority claim back to a provisional for which an executed assignment was obtained from all the inventors to the PCT Applicant. There are other ways to skin this cat, but the foregoing is an easy low stress way to accomplish this.

  36. 65

    Ned, ‘ol chap – your own words work against you:
    extent of his improvement only

    Next time, throw in some salty words, for your own sake.

  37. 64

    ping:”is at issue when there are no claims”

    That case is inappropriate. That case does not deal with provisionals, now does it Ned?

    Now you may think it OK to apply a Supreme Court case to something created some 60 years later, but you can also find me that case cite on the inappropriateness of trying to divine the future and the unreasonableness of doing so.

    Ping, the Feds relied on it recently. link to scholar.google.com

    Story said this:

    “Nothing can be more direct than the very words of the act. The specification must describe the invention “in such full, clear, and distinct terms, as to distinguish the same from all other things before known.” How can that be a sufficient specification of an improvement in a machine, which does not distinguish what the improvement is, nor state in what it consists, nor how far the invention extends? Which describes the machine fully and accurately, as a whole, mixing up the new and old, but does not in the slightest degree explain what is the nature or limit of the improvement which the party claims as his own? It seems to us perfectly clear that such a specification 435*435 is indispensable. We do not say that the party is bound to describe the old machine; but we are of opinion that he ought to describe what his own improvement is, and to limit his patent to such improvement. For another purpose, indeed, with the view of enabling artizans to construct the machine, it may become necessary for him to state so much of the old machine as will make his specification of the structure intelligible. But the law is sufficiently complied with in relation to the other point, by distinguishing, in full, clear, and exact terms, the nature and extent of his improvement only.”

  38. 63

    As EG’s point #3, above — within the context of Dennis’ study it would be interesting to get a feel for how many NPA’s cite more than one PPA for priority. I rarely see that.

    Also, w/ respect to claims vel non in PPA, one of our EPO associates has suggested inserting pseudo-claims, as numbered statements. Not claims, per se, but sorta’.

    Etc. In fact, enumerated statements like these could just about constitute the entire PPA. They can then be easily folded into the NPA and/or foreign filing, and they certainly get the inventor focused.

    Also, if you add new matter when filing the NPA, in order to get any PPA priority, at least one independent claim should be restricted to just the subject matter of the PPA. If that claim gets rejected, there goes your priority.

    Your PPA will not serve as priority for a claim that includes any element or limitation not disclosed in the PPA. If memory serves, in New Railhead the whole patent went out the window because all of the claims included a limitation not disclosed in the PPA.

    PPA’s are a mine-field.

  39. 62

    As an International Company based outside the US, I file Provisionals in order to comply with the Export Control requirements. I also file Provisionals in order to obtain an effective filing date under the Hilmer doctrine.

    All of our Provisionals are drafted as if they were normal applications. In emergency situations, for example, when we are facing disclosure, we try to put the case in as best form possible and include claims.

    I rely on EPO search reports to determine if we want to go forward or not with the normal application. We file about 20 Provisionals per year.

    Best

  40. 61

    “Now I simply appeal and call no one.

    Communication. You’re doing it wrong.”

    No I am not. Those cases were all handled correctly. I just thought I’d try calling when these problems reared their head. In fact, I was the go-to guy when people had PTO problems and many of the cases I as handling for the entire firm. Strong words from someone who seems to spend 90% of his time here.

  41. 58

    they were upset that nothing was gained from spending the money.

    The SPE was simply mad that I was calling him about his flunkie examiner oftem, and finally blew his top at me.

    All you agents out there, be nice to patent examiners. It may not be in the Rules, it may not be billable, and you may never be sued over it, but it’s part of your job.

  42. 56

    I don’t do it anymore, but I used to take great pleasure and making SPEs perform their duties. I have, in the past, called many Directors and I believe was blacklisted for some time. In all these cases, we were in the right.

    As my old buddy root boy slim said many years ago, I used to be a radical until that billy club set me straight. Now I simply appeal and call no one.

  43. 55

    Cy Nical, they were upset that nothing was gained from spending the money. They simply did not want to pursue it further because they reached a decision that the more money would probably be wasted.

    Ping, we had some latitude in deciding what to do, especially if no amendments were necessary. I did, however, run this by the client. The study was a gruesome exercise as anyone dealing with these cases knows well, and I outlined in no unclear terms where the original disclosure was lacking. This was back in the dayswhenwe hand delivered things so the flags, highlighting, inserted comments etc. were made to make it as easy as possible on the examiner.

    The SPE and I had an interview at one point (earlier) because the examiner routinely ignored our pleas in this situation and in others in connection with this case. The SPE was simply mad that I was calling him about his flunkie examiner oftem, and finally blew his top at me.

  44. 54

    (Philosophically I sometimes wonder whether the inventor’s could recognize as theirs the claimed subject-matter which is eventually granted).

    Ned, be a good chap and find the case cite discussing that the inventor’s post filing recollection of the invention is not controlling.

  45. 53

    That case went abandoned because the client was somewhat upset I spent the time to take this route and billed him for it.

    I’m struggling with the last part of your story. The client instructed you to abandon the case because he was angry at you? Or you allowed the case to go abandoned because the client was upset and wouldn’t pay you?

  46. 52

    Good Doctor,

    1) always always always make sure the client is aware of and approves what you are doing.

    2) Did you follow up and go over teh SPE’s head? Office personal (and applicants and their representatives) are constrained to behave civilly.

  47. 51

    Priority is essentially assessed at the EPO using a logic similar to the treatment of added-subject matter: claimed subject-matter must be clearly and unambiguously derivable from one single prior document in order to benefit from its filing date.

    I often cringe when I discover that an EP application claims priority of an earlier US provisional with a serial number belonging to the 60+ series. Even though the prior app is usually “properly” drafted most of the time, as Dennis noted, I did get horrors like a dozen marketing PowerPoint presentations stapled together, which raise issues about pre-filing date disclosure (an absolute no-no in much of non-US ROW). A couple of times what I actually had as a provisional application was the inventors’ internal memo addressed to the corporation’s patent department. Comparing the inventors’ simple and candid language with what the attorney made out of it is actually quite interesting, and I could see that he did not necessarily did a bad job. However, language is treacherous and the rephrasing and generalization of the original disclosure can be dangerous. (Philosophically I sometimes wonder whether the inventor’s could recognize as theirs the claimed subject-matter which is eventually granted).

    One is best advised to exercise care when improving second filings in relationship to first filings. I did get first filings (eg., EP or French National) where I was aware of a potential 54(3) document which I couldn’t cite because it hadn’t been published yet. The applicant modifies the application and files it a second time (EP or WO) at the end of the Paris year, and then I cite my new document, which is potentially 54(2) prior art usable for inventive step under Art. 56 EPC. In that case I suddenly felt that some wax doll was being severely maltreated. If you do make amendments, be sure to make them in an additive way whilst taking care not to ruin your priority for whatever was in the prior application.

    Some applicants (eg. Philips) systematically make a regular EP first filing without paying any fees and letting it die just to get the priority. (This works under the EPC). If fees are paid, the application is abandoned after receiving the search report (first filings have top priority at the EPO). I used to dislike this, but in the end everyone is happy, as the applicant gets a credit for the second application if it is identical to the prior one, and the examiner gets another bloody search point.

    I wonder whether the provisional application system is a return to the past, I see many references to “caveats filed with the patent office” in the context of famous 19th century cases, such as the Bell-Gray controversy. What where these and why were they abandoned? Why should caveats and provisionals even be necessary in a first-to-invent system?

  48. 50

    I once had a patent applied against claims I was prosecuting. It was a difficult imaging software case. The priority date of the provisional of the patent was very close to our filing date, but preceded it by a couple of months.

    I decided to order that provisional application and study it for support of what was disclosed in the patent and used against our claims.

    It turned out that there was no support for a particular feature going back to the provisional filing date.

    I brought this up in the reply and sent a copy of the provisional to the examiner, who ignored my argument. I called his SPE, who verbally assaulted me on the phone.

    That case went abandoned because the client was somewhat upset I spent the time to take this route and billed him for it.

  49. 49

    j, you are absolutely correct. I don’t think anyone is knocking provisionals in general. Rather, the criticism is in regard to the cheap, poorly drafted provisional that too many people rely on these days. Don’t get me wrong, there are times when it makes sense to just get something on file even though you are still fleshing things out or cannot afford to spend much money. But, if you go that route, you better be darn careful what you do after the provisional is filed. And the worst scenario of all is when you are up against a bar date (e.g., a public disclosure 11 1/2 months ago) and you decide to file a quick and dirty provisional. That is a recipe for disaster.

    Personally, unless it would be clearly advantageous for a client to obtain a patent sooner rather than later, I usually recommend the provisional route. If nothing else, as you said it gains the client an extra year at the back end. In addition, a provisional also allows for a much cheaper way to “update” the non-provisional application with any additional subject matter developed in the 12 months following the filing of the provisional. That is not always needed, but if you skip the provisional you will then need to file a CIP on top of the non-provisional.

  50. 48

    What I take from the Ariad case is that … One has to know what, of the things you are making, is the invention.

    What part of the Ariad case do you take that from, exactly?

    Zeus’s older brother: Sure you can file almost anything as a provisional app. but if intended to form a proper foundation for future non-provisional apps, the provisional needs to be at least as good as all app that takes priority from it.

    In other words, a provisional has no requirements (call me absurd, I guess), but once you want to rely on it for something it has to be good enough for that purpose.

  51. 47

    what about the extra year of term you get? Thats a good advantage for some technologies where things become more commerical at the end of the term.

  52. 46

    Used wisely (not as an excuse for a sloppy application filing), provisionals provide a number of benefits:

    1. As Red Monkey astutely points out, you have flexibility on drafting claims, including no limit on how many total claims, how many independent claims, multiple dependent claims, etc. I frankly feel that you should have claims in the provisional, may be not as many or even structured similarly to a nonprovisional. Havin a claim set (even an abbreviated one) is especially important if the provisional is being filed at the last minute (e.g., because of an imminent disclosure that will create absolute novelty issues noted below) to avoid a potential 35 USC 112 support “goof” as what is in the claims initially counts as being part of the disclosure.

    2. One other item that I didn’t see mentioned is that a provisional does not start the patent term clock ticking. That could be important for those inventions, such as pharma, where delaying the start of term, even up to a year, could be valuable.

    3. A less expensive way to do what used to be multiple CIPs because you need to file (to meet absolute novelty requirements, such as in Europe), but don’t have all the details of the invention worked. In the initial proviisional, you can define the invention as broadly as the best available data might suggest, put in what details you know, and then refine those details based on additional knowledge gained (e.g., because of further research) and perhaps even refine the broad definition of the invention, which then be captured in subsequent provisional filings. The key is to wrap this all up at the year anniversary with the final nonprovisional filing, including filing a PCT application to gain the benefit of the priority date of the initial and subsequent provisionals that have been filed.

    Just my 2 cents for what it’s worth.

  53. 45

    Its absurd to contend that provisional applications have no requirements

    I’m pretty sure that no one said any such thing. I’m also pretty sure that the provisional requirements are different than non-provisionals and are a different animal than what the Supremes talked about long ago.

  54. 44

    is at issue when there are no claims

    That case is inappropriate. That case does not deal with provisionals, now does it Ned?

    Now you may think it OK to apply a Supreme Court case to something created some 60 years later, but you can also find me that case cite on the inappropriateness of trying to divine the future and the unreasonableness of doing so.

  55. 43

    Why do you keep going around and around. when one document shows the intent. and the other shows the truth? WHAT UP WITH THAT?

  56. 41

    ping, what Supreme Court case comes to mind when the issue of sufficiency of written description is at issue when there are no claims?

    Hint: it was cited, discussed and relied upon by the en banc court in Ariad.

  57. 40

    Its absurd to contend that provisional applications have no requirements…. they require essentially everything a full utility application requires except for format, claims and possibly drawings.

    Sure you can file almost anything as a provisional app. but if intended to form a proper foundation for future non-provisional apps, the provisional needs to be at least as good as all app that takes priority from it. Classic house of cards scenario. One should take a lesson from the three little pigs.

  58. 38

    I usually compare prov. and non-prov. applications side by side to quickly determine how similar they are. If the non-prov. is more detailed then I dig further into the prov. to find support for all of the claimed subject matter. I have yet to come across a case where the claims do not have support in a corresponding provisional.

  59. 37

    what, of the things you are making, is the invention.

    The eternal loop for Ned: the invention – what invention? – the invention as claimed. There is no other invention except the invention as claimed.

    Lacking (forgetting?) this understanding leads to such inanities as “But without claims — it is hard to understand.” – that’s why provisionals do not have to have claims – they are merely placeholders. They are not examined (on their own accord).

    IMHO-Ned law also surfaces in the number of times Ned takes a discussion on US applications and introduces the foreign application cross-threading. For some reason (brain became full, or accident happened affecting memory), Ned seems incapable of digesting law after a certain point in time. Unfortunately for us, that time appears to be before provisionals were introduced and we repeatedly get to hear Ned’s glorious battle with the Office and why the law is as it isn’t.

  60. 36

    Well Steve, we shall see when an appropriate case appears. What I take from the Ariad case is that WDR is more than just a new matter provision. Just describing how to make and use something is not enough. One has to know what, of the things you are making, is the invention. How can you do that except to identify it some fashion?

    The Feds seem to equate the WRD to claims, with the claims defining the ultimate scope of the invention, but the specification also describing what the inventor thought he invented. As others have understood here, just describing a mass of embodiments without more is probably not sufficient to claim a general principle common to all, or to pick subfeatures out of the mass and say that this subfeature is my invention.

    The Feds did say the specification not only has to teach the invention, but also has to teach what others are free to use. With claims included in the original filing, this requirement is somewhat easy to understand. But without claims — it is hard to understand.

    What is the inventor’s invention and what am I free to use? That is the question. That has to be somewhat clear from the get go.

  61. 35

    Leroy,
    You have an excellent point, maybe after all this is out, SUBWAY, will be OUTWAY, or WAYOUT.And it will be allowed in the decision process along with BIG D. And of course the Subway Logo can also be included.

  62. 34

    And we had many many discussions about what I could and could not have!!!!!!!!!!!!!!!!! And then it’s out there go figure. I don’t have to figure anymore. After all the lies nad coverup I get it.

  63. 33

    I spent two plus long months in a back and forth over the phone with the AHEM Atty. each time calling him “at” the Law Office, while waiting for the AHEM you know. The AHEM thing I know is out there.

  64. 32

    “I’ve come across plenty of patents and patent pubs that I think would be enabled by a few bullet points and a diagram. ”

    H ate to one-up you, but I’ve come across plenty of patents n pubs that are enabled by the prior art without even considering that patent itself.

  65. 31

    One of the low-cost benefits of provisional applications is that they have no formal requirements. Thus, a printed PowerPoint presentation, whitepaper, or circuit diagram could each serve as a provisional application.

    Such could also serve as a non-provisional application. Strictly speaking, the difference between the two is really the cover/transmittal letter — i.e., the applicant’s designation one way or the other. Either application must meet the requirements of Section 112, paragraph 1, for the claims as ultimately amended.

    The fact that there’s no adjudication of sufficiency of disclosure of a provisional application until a non-provisional claims its priority does not mean that sufficiency of the provisional application is never examined.

    Regards.

  66. 30

    Ned said “PowerPoint presentations would not (ordinarily) support the claims in a non provisional in a manner prescribed by 112, p. 1.”.

    Obviously this depends on what sort of information is in the slide set. But even assuming that most slide presentations don’t include much detail, I don’t think it follows that little detail means not enabled.

    Because it seems that the amount of description needed to enable and show possession is extremely fact dependent.

    I’ve come across plenty of patents and patent pubs that I think would be enabled by a few bullet points and a diagram. I have in mind simple mechanical, lots of “business methods”, simple software features, and electronics along the lines of “let’s combine a radio and a set top box”.

  67. 28

    This to those who mistakenly suppose that provisionals without claims don’t work at the EPO.

    You don’t need claims to say what your invention is. It used to be the case that American-drafted specifications had a section of text under the sub-title “Summary of the Invention”. But then “Invention” turned into a dirty word so now the sub-title says “Summary”. But nevertheless, what I find in that section often gives me a better main claim than what I find in the numbered paragraphs at the end of the specification under the words “What I claim is:”.

    What your European counsel is warning against is a provisional that is nothing more than a description of a mere embodiment.

    For goodness’ sake chaps, we are patent attorneys. When a client reveals the “blueprint” and announces it as his “invention” do we not then tell him gracefully that he is wrong? Do we not explain that his “invention” is what we will define for him (for a modest fee) in the claims that it will take us an hour or two to write? That is the value we add, no?

    So I ask you, what sort of provisional succeeds in disclosing to its readers the “invention”?

    UK patent law has had provisionals for a century or more. They never needed any claims. European law today is no different.

  68. 27

    It would be interesting to see the differences between the technology areas – electrical/software, mechanical, and chem/bio/pharma

  69. 26

    Ned,
    The CFC in Ariad said that to fulfill WDR, the specification had to describe sufficiently to demonstrate that the inventor had possession of the claimed invention. They noted identifying the claimed invention can meet that requirement.

    They did not say that the application MUST identify the invention. In fact, if you read it close, they did not even commit to a specification that identifies the claimed invention always being sufficient to meet the WDR. I would imagine a functional genus claim with insufficient described species that does nothing more than repeat the functional genus in the specification could be seen as insufficient for the WDR in some circumstances.

  70. 25

    Red M One great thing about provisionals is you can have a lot of claims without excess claim fees, and multiple-dependent claims are free. As a result, you have a combinatorially diverse set of claims. all of which you can say were originally filed claims. This gives you great flexibility in satisfying the written description requirement.

    Word. Of course, you can also put such claims verbatim in the spec and achieve the same result, but for reasons that aren’t entirely clear to me, the general practice is to rewrite them in the summary in less flexible but more gramatically standard English.

  71. 24

    metoo, thanks. We had a huge debate on this issue in the 102(e) thread. Many here refused and continue to refuse to accept that Rader actually required 112, p. 1, support for the claims in the non provisional for the provisional to have 102(e) effect.

    We even went on to discuss whether subject matter disclosed but not claimed could also have 102(e) effect. Ordinarily it should, but not under Rader’s opinion.

    However, my own personal view is that Rader’s opinion is sui generis and not consistent with prior case law on 102(e).

  72. 23

    “6 — Do you look at provisional applications during examination?”

    Yes. I look at them when I think the instant claims might be able to overcome one of my references by its priority to the prov. I also look at them when determining the 102(e) date of some references. Other than that, sometimes I glance at them just for giggles, but not that often. Occasionally I’ll preemptively look at the prov at the beginning of examination after just having read the instant claims for the first time to get a general feel for what gets priority.

  73. 22

    The application as filed must identify the invention.

    Quote me that particular holding from Ariad, please.

  74. 21

    way to go Ned…I’m not sure too many patent attorneys understand what was said in Giacomini with respect to a provisional having to support the claimed invention of the issued patent in order for the 102(e) date to be the provisional filing date. For example, according to dicta in Giacomini, if all of the claims in the issued patent require a limitation not adequately described in the provisional, then the 102(e) prior art date for that patent is the non-provisional filing date–not the provisional filing date.

  75. 19

    IANAE, I do not agree with your interpretation of Ariad. You view the WDR as a form of “new matter” problem. That view was flatly rejected. The application as filed must identify the invention.

  76. 18

    One great thing about provisionals is you can have a lot of claims without excess claim fees, and multiple-dependent claims are free. As a result, you have a combinatorially diverse set of claims. all of which you can say were originally filed claims. This gives you great flexibility in satisfying the written description requirement.

  77. 17

    BB Does EPO allow priority to a PPA that has no claims? I’ve had associates say you gotta’ watch that, but I don’t know of any cases.

    You don’t have to claims per se but if you don’t have claims and you don’t have anything in the specification that looks like a claim, you may run into problems in the EP when you start trying to describe your invention.

  78. 16

    Ned: IANAE, you should say, “That is until Ariad.”

    Ned: But without claims in a provisional, I would submit that any written description would actually have to identify the invention

    You only have to describe the invention somewhere in the spec, not identify it. Particularly pointing out which part of the spec is the invention isn’t 112 first, it’s 112 second.

  79. 15

    RE: Since the word “invention” is such a danger word these days, I am most reluctant to include any claims in a provisional application. §112 says that the claims are what the applicant regards as his invention. There is no need to provide grist for the subsequent litigation mill by defining the invention any earlier than necessary. (Posted by: John Roethel | Jul 15, 2010 at 12:58 PM)

    I read elsewhere that in order to rely on a provisional application in a foreign filing, that said provisional application had to include at least one claim. Is that correct?

  80. 14

    Question:

    Claims filed in a 111(a) patent application define what the applicant regards as his invention. Typically, this would be sufficient to overcome any Section 112, p. 1, written description problem for failing to identify the invention.

    But without claims in a provisional, I would submit that any written description would actually have to identify the invention or else no Section 112, p.1 satisfaction of the written description requirement, no constructive reduction to practice, and NO support for later claims.

  81. 12

    Max
    Does EPO allow priority to a PPA that has no claims? I’ve had associates say you gotta’ watch that, but I don’t know of any cases.

  82. 11

    Well, under In re Giacomini, PowerPoint presentations would not (ordinarily) support the claims in a non provisional in a manner prescribed by 112, p. 1. For this reason, they would not be prior art under 102(e).

    Additionally, PowerPoint presentations would (ordinarily) not support any claims in the manner prescribed by 112, p.1, so there could be no effective filing date for later claims.

    However, they might provide support for a claim of prior invention — at least as to conception. Not being fully descriptive in the manner prescribed by 112, p.1, they could not (ordinarily) legally be a constructive reduction to practice.

  83. 10

    It is the exact opposite, everywhere else in the world. Does anybody here care about that?

    Nope. This here is America, and we know our rights. It’s our job to never ever say what the invention is, and it’s the examiner’s job to find the best prior art for the invention (not just the claims) on the first search so that we never have to file an RCE.

  84. 9

    Shouldn’t the FTC (or at least somebody) be looking into outfits that advertise “provisional patents” since there’s no such thing?

  85. 8

    Joy there from John Roethel, who counsels us never to write:

    “….what the applicant regards as his invention.”

    I have maintained for years that the Golden Rule about filing any app at the USPTO is “Never ever say what the invention is”.

    It is the exact opposite, everywhere else in the world. Does anybody here care about that?

  86. 7

    Since the word “invention” is such a danger word these days, I am most reluctant to include any claims in a provisional application. §112 says that the claims are what the applicant regards as his invention. There is no need to provide grist for the subsequent litigation mill by defining the invention any earlier than necessary.

  87. 6

    How about the Henry Ford explanation?

    He said “You can have any color you like: as long as it’s black”.

    US 35 USC 102(e) says “You can file your priority date-defining first patent application anywhere you like: but if you want it to be effective you gotta file it at the USPTO”.

    And so, increasingly, alien multi-national industry files first at the USPTO.

    What would the US Government say, if China copied these provisions of US law into its domestic law? Would any other country follow suit?

  88. 4

    You also have to factor in that many of the provs that will never publish are likely some of the worst ones that had no WD. But on the whole those numbers seem about right from what I’ve seen.

  89. 3

    I tend to use provisionals when there isn’t adequate time for complete inventor review before a bar date occurs, which drops my provisionals into the “About 50–60% really look like non-provisional patent applications” group. I’m surprised that so many provisionals are done in this manner; my experience with provisionals as outside counsel tended more towards the “stack of presentation materials” category, typically delivered by the client the day before some barring event (often the public presentation of said presentation materials), and a plea to get it filed.

  90. 2

    An interesting statistic would be the fraction of provisonals that expire without a corresponding nonprovisional or PCT being filed. This is where the real cost savings come in for applicants.

  91. 1

    “One of the low-cost benefits of provisional applications is that they have no formal requirements. Thus, a printed PowerPoint presentation, whitepaper, or circuit diagram could each serve as a provisional application.”

    That’s one of the drawbacks leading to the false sense of security.

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