Disclosure under the AIA: Introducing The Poor Man’s Provisional Patent Application

By Dennis Crouch

Provisional patent applications have received increasing focus as an integral element of corporate patent filing strategy. Although many patent attorneys reject this strategy, hopeful US-based patentees regularly use provisional applications as a cheap method for obtaining an early patent application priority filing date. Provisional applications have a very low filing fee and do not require the same level of formality as a true or non-provisional application. In this sense, a provisional application is thought of as a “poor man’s patent application.” A provisional filing allows an applicant to obtain an early filing date for a low cost and delay or avoid further prosecution costs. And, with provisional applications, patent term is not lost but simply shifted forward in time.

Delaying Decisions: In my empirical studies, I find that a substantial number of provisional patent applications are abandoned. That statistic suggests that the provisional system is working as a mechanism for delaying the decision on whether to substantially invest resources in the newly invented technology. The one-year delay can be important in providing applicants with time to determine whether the particular avenue of technology will be commercially important.

Substitute for Invention-Date Rights: In my article on invention date novelty, I argued that provisional patent applications serve as a partial substitute – or an alternative approach – for patent applicants attempting to rely upon their date of invention when proving patentability. The early provisional filing date is often a much simpler alternative than proving conception, diligence, and reduction-to-practice. In my article, I treated provisional applications as an alternative choice available to applicants who want to show an early priority date and who do not want take the steps required claim that date based upon pre-filing invention activity. The recently enacted Leahy-Smith America Invents Act (AIA) changes that alternative into something of an imperative in that the new law largely eliminates an a patent applicant’s ability to rely upon anything other than a filed application in proving priority of invention. I expect that this change in the law will lead even more companies to choose provisional applications filings a core tactic in their approach to patenting.

Grace Period for Disclosure: Under the AIA, an inventor’s early filing date is important because any disclosure by a third party prior to the inventor’s filing date will normally be seen as prior art that can negate patentability. There are two major exceptions to this general rule: a third party disclosure within one-year of the applicant’s filing date not count as prior art if either (1) the inventor had already disclosed the invention prior to the third party disclosure or (2) the third party disclosure was somehow derived from the inventor. As Professor Jason Rantanen has discussed, this provision offers an incentive to applicants to go ahead and disclose their invention as a mechanism of defeating potential prior art.

Poor Man’s Provisional Application: In many ways, a pre-filing disclosure draws a line in the sands of time in much the same way that a provisional application establishes a priority date. Self-disclosure offers similar benefits to that of a provisional application in that it is cheap with few formalities and provides an additional year of delay. In fact, public disclosure should be cheaper and easier than filing a provisional application. In the same way that a provisional application is seen as a poor man’s patent application, I suggest that public disclosure will be seen as a poor man’s provisional application or a “really poor man’s patent application.” The disclosure allows an applicant to buy an additional year of delay with few capital expenditures and without losing patent term but instead merely shifting the term forward in time.

Some of the Problems with Disclosure: There are a number of problems with the pre-filing disclosure strategy. Most importantly, a pre-filing disclosure would substantially negate the potential for non-US patent rights because most other countries have a more absolute rule that pre-filing disclosures negate patentability. In addition, a public disclosure eliminates the ability of an applicant to pursue technology development in secrecy. (Provisional applications are not made public until well after their one-year expiration.) However, the new law does not require that the public disclosure identify the inventor or assignee but only that the invention be publicly disclosed. This offers potential anonymity if not absolute secrecy. Finally, the lack of formal requirements associated with the disclosure invites cost cutting and low quality, inadequate disclosures. This will scare forward looking attorneys who realize that the underlying purpose of the disclosures is as legal documents relied upon to prove priority.

45 thoughts on “Disclosure under the AIA: Introducing The Poor Man’s Provisional Patent Application

  1. Just a small point, but “priority” in a legal sense is not at issue, although it may be an issue practically.

    “Priority” requires support for a claimed invention. However, what is at issue here is whether the applicant publicly disclosed the subject matter of a reference first. This could be the entire invention, or it could be part of it, or it could relate to utility or enablement.

  2. Paul, do you mean that grace period protection

    from intervening-dates art that is on subject matter that is directly obtained from your inventor,

    from intervening-dates art that is on subject matter that is indirectly obtained from your inventor, or

    from intervening-dates art that is on subject matter that is not at all obtained from your inventor?

  3. I recall a statement in the legislative history that is unambiguous about the equivalence between the acts in 102(a) and the “disclosures” in 102(b)

    It would be nice to have more onthis (an dnot another of those Ferris Bueller – Quorum?… Quorum?… Quorum? musings.

    At least here there is ambiguity in the language that might allow the congressional record to have an impact.

  4. I think the real issue is how much content in the prior public disclosure of an inventor is needed for a valid one year delayed application filing grace period for that inventor. Does that prior disclosure have to be fully 112 supportive of the claims of that inventor’s ultimate patent in order to obtain [and retain] that grace period protection from intervening-dates art? [Note that it does to obtain the filing date benefit of a provisional.]

  5. Good question. The general principle applies, that he who asks the court for something has to support that request with a preponderance of evidence, or else suffer rejection of his petition. When one is asking for a claim to be held invalid, for obviousness or want of novelty, and one is relying on prior use, or prior oral disclosure, it can be hard to get to a preponderance. In that case the claim remains…..not invalid.

    And of course, ex parte, in the PTO, the Examiner stands little chance of relying on such prior art, to stop the claim going to issue.

    Immediately after issue though, it sometimes happens that an Opponent tries to convince the EPO that the claim is hopelessly invalid because it covers age-old conventional industry practice. To win on that petition, he needs a water-tight case. Every so often though, that’s exactly what he has.

  6. A “minimal” approach for disclosure might also be invented, by exploiting differences in the requirements/need for revealing a disclosure in the U.S. versus ROW/Europe?

    In RO/Europe: What are the requirements for an Applicant to reveal a possible public disclosure to the Patent Offices or Courts? Or is it up to the other parties to find such a disclosure?

  7. “I find that a substantial number of provisional patent applications are abandoned.”

    Not to get all technical and all, but 100% or provisional patent applications are abandoned (each one year after its filing date).

  8. Anything “made available” to any member of “the public” anywhere in the world, by written or oral description, by use or in any other way, counts towards the “state of the art” relative to which obviousness is judged, in Europe.

    But for a novelty destroyer, in Europe, only a disclosure that is good enough to “enable” something within the ambit of the claim whose validity is being attacked is good enough.

    Does that help?

  9. On the contrary, I hear that if someone who is not an examiner wants to file on this bad boy all they gotta do is add in some little nothing to a dependent claim, put both of us on as inventors, file it, have it assigned to a shell corp, consider me to be a non-cooperating inventor, prosecute the app, then maybe or maybe not sell the shell corp to me after it issues.

    Lawlyerly games and all that.

    If anyone is interested let me know, there may be some dime in it.

  10. >>> “a pre-filing disclosure would substantially negate the potential for non-US patent rights because most other countries have a more absolute rule that pre-filing disclosures negate patentability.”

    Are there “minimal” disclosure approaches that:

    a) act as a “disclosure” to protect against possible later 3rd party activity (under AIA in the U.S.) and

    b) yet are not considered a “public disclosure” in ROW/Europe;
    so an option to patent in ROW/Europe is maintained, when 3rd party art does not occur before the PPA/NPA is filed.

    Such disclosure approaches might exploit differences in the definitions of disclosure in the U.S. and ROW/Europe?

  11. On the other hand, most patent attorneys do not reject provisionals as a “cheap method” to avoid having one’s rights (e.g., foreign rights) obliterated by an imminent publication of the invention.

  12. I don’t agree with the assertion that many patent attorneys reject the provisional filing strategy. My experience is that the majority of attorneys file provisionals, but they are careful to write them as “full” applications for 112 purposes.

  13. Is everyone confident that all of the acts/events listed in 102(a) constitutes a disclosure for purposes of the exceptions listed in 102(b)?

    I recall a statement in the legislative history that is unambiguous about the equivalence between the acts in 102(a) and the “disclosures” in 102(b)

    For example, does the sale of an invention constitute a “disclosure” under 102(b) such that if the inventor is the party offering the invention for sale the bar will not apply?

    That’s my understanding based on the above.

  14. The point of early publication, really early, is to deny others the chance to take to issue really broad conceptual claims that aim to pre-empt the concept. The point of filing is to secure exclusive rights in the specific implementation of the concept. The strategic publisher/filer thereby clears the path forward of him, while denying others the path to follow him into the lucrative future.

    A perfectly viable strategy. Some clients, however, will still value whatever bit of secrecy they can maintain within the patent system.

  15. Dennis,

    Good points in your article. I am a bit troubled, however, that the term “disclosure”, the term used 102(b) for exceptions to the disclosure bar in 102(a) is not used at all in 102(a) and not defined anywhere in the AIA that I can see. Is everyone confident that all of the acts/events listed in 102(a) constitutes a disclosure for purposes of the exceptions listed in 102(b)? For example, does the sale of an invention constitute a “disclosure” under 102(b) such that if the inventor is the party offering the invention for sale the bar will not apply?

    If a sale does NOT constitute a disclosure then it appears a third party sale (over which the inventor has no control) would operate as bar to patentability even if the invention derived from the inventor.

  16. Given that either interpretation might be correct or incorrect, what is the most prudent path to take?

    Ignore what a high ranking Officer of the United States Patent and Trademark Office has publicly stated, advise clients to disclose freely and that there is no risk of losing patent rights (or spending untold sums in trying to prove derivation),

    or

    tell clients to file prior to any disclosure.

    The choice is easy.

  17. Agreed with Ned. I don’t understand anything that anon is saying. It doesn’t appear to make sense based on the language. He seems to be re-drafting the provision and moving around commas (or something).

  18. As I have mentioned before, what we need is the ability to ” lay open” provisional applications. This could be simply done by providing a checkmark on provisional application cover sheet, with uploaded electronically filed provisional applications.

  19. When the “first to file” regime of the AIA comes into effect less than 18 months from now, having an effective strategy that uses provisionals to put early “date stakes” in the ground is going to be critical to avoiding fatal or potentially fatal “intervening prior art” created by third parties. See the following article written by me and posted on IPWatchdog: link to ipwatchdog.com .

  20. If Hi-way Wrecker knew I was shot at, and had the Bullet. And then tested it. Why didn’t he report it to his brother who was a COP? Instead they tested it and tried to say… guessing here… That I shot the tire out myself? Or that Little Richard did because he gave me the gun for protection… Well anyway this all could have been fixed then too. The Cherrys’ would have been off the streets instead of 10 years later.
    See I told you TMI this Story needs at least three books.

  21. I wonder if it makes sense for serious and well-funded prospective Applicants (I think of new business models for trading on the internet) deliberately to use BOTH early publication and conventional PTO filings in tandem. The point of early publication, really early, is to deny others the chance to take to issue really broad conceptual claims that aim to pre-empt the concept. The point of filing is to secure exclusive rights in the specific implementation of the concept. The strategic publisher/filer thereby clears the path forward of him, while denying others the path to follow him into the lucrative future.

  22. Shall we span into a third thread on the meaning of the exceptions?

    Dennis, you state:

    There are two major exceptions to this general rule: a third party disclosure within one-year of the applicant’s filing date not count as prior art

    if either

    (1) the inventor had already disclosed the invention prior to the third party disclosure or

    (2) the third party disclosure was somehow derived from the inventor

    Your reading of what the law actually states is not correct.

    In particular, there is no such thing as a universal blanket grace period provided by publication. Your reading of the exception provided by (1) is vastly overstated. That section is merely a personal grace period for the primary inventor and the primary inventor (and that primary inventor’s agents) ONLY. There is no protection against indepedent inventors at all. NONE.

    The protective grace period provided by (2) is likewise rather sdhallow – only flowing from subject matter “obtained… directly or indirectly” by one inventor from the primary inventor. Independent invention is a killer of the exception.

    I do understand what the congressional record purports the exceptions to be. But the plain and direct words are simply different.

    102(b)(1)(A) covers the inventor’s (or his agent’s) disclosure.

    102(b)(1)(B) covers a diferent inventor’s (or the different inventor’s agent’s) of subject matter “obtained… directly or indirectly” by the different inventor from the primary inventor covered in 102(b)(1)(A). There is no provision that provides a blanket grace period against all prior art effects of post-publication and pre-filing of the primary inventor (or the primary inventor’s agent).

    In other words, the first part of the exception is that the inventor’s own actions are not patent defeating and the second part of the exception is that the inventor is protected from derivers. There is NO protection from independent inventors – NONE. The “who obtained” clause is not an optional aspect. Independent invention is a killer of the exception.

    The risk is very real for anyone who discloses and later files. As Malcolm has indicated, it would be utterly foolish for anyone to not file prior to disclosure. For anyone working in crowded art fields, pre-filing secrecy is practially mandated – that is, unless you have money to burn in legal challenges of the largely untested new deriviation proceedings.

  23. The poor mans Patent. The Rich mans theft after redesigning it, and blocking start ups just like you have done to me for the last 16 years. I’d rather file the NPP. when I am free and all Lawyered up that is. Just like I was told I paid for and got charged for.
    To bad Superman, Kryptonite (Kryp to Nite) is everywhere. Crip that is what they ( the Family I lived with) called me after I got hit by the Car.

  24. I love this new “First to Publish” 102. Whereas ROW gets innovation published for the first time only 18 months after a pat appln is filed, the AIA gets it out into the wheels of industry a full 30 months earlier. If the purpose of a patent system is to stimulate designs-around, the AIA is 30 months better than the ROW/EPC model.

    that we have to wait nearly 3 years to find out whether what’s published is also patented is no disadvantage either. People should design around, not just copy slavishly.

  25. 6, you do know that the only people who can’t file patent apps are PTO employees, right? OTOH, I suppose if you left the office just prior to your 12 month date and filed …

  26. Here’s the bit you’ll probably want to refer to most often:

    §102. Conditions for patentability; novelty
    (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

    (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

    (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

    (b) EXCEPTIONS.—
    (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.
    —A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

    (A) the disclosure was made by the inventor or joint
    inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

    (B) the subject matter disclosed had, before such
    disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

    (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

    (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

    (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;
    or

    (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

  27. Yes, “any disclosure” is broader than “public disclosure.”

    You have been rejected based on secret disclosures.

    Take your pick of punch lines:
    A) The Office learned this trick from the academics – we can’t show you the data, but trust us.
    B) I could tell you, but then I would have to kill you.

  28. How many (if any) of the pool of numbers are allocated to applications that have non-publication requests?

  29. Man, I am way too old to be learning §102 all over again.

    Nevertheless, am I correct that prior art will be broader than “printed publications” and “public disclosures”? According to the above text, “any disclosure” is the term used. This seems broader than “public disclosure.”

    Dennis: could you provide a link on this web site to a nice clean version of §§ 100-103 of the new law? Thanks

  30. D, while your eyes are here on the site, do you not see the horrendous layout of this comment thread? Your comment goes over into the links on the side and so does my second comment. Is the site too poor to have this basic thing fixed? MBHB not shellin’ out enough mollah?

  31. Re calculation: It is a rough calculation b/c abandoned are kept secret. However, PTO keeps track of how many provisionals are filed and I can count how many serve as priority documents for patents and published applications. The count of abandoned provisional applications can then be calculated as the difference between these two.

  32. In ur first 2 ur leavin’ on limitations out.

    SUBSEQUENT PURCHASE SON. NOT THE SAME PURCHASE.

    Not to even mention that even if your water is free on a different bill separate from the powerade bill (which it probably isn’t), the computer has to take care of that automatically. I doubt theirs does that automatically. The cashier rings it up as free.

    Oh and also, how long have they been using this machine in public? I don’t see no evidence a showin’ all this that you speak of a year ago. Or a publication printed/filed in the PTO in the mean time.

    And people think us examiners are bad about BRI and legal stanards etc.

    “They also have sales that print coupons for a free item next time.”

    Printin’ coopins is not a giant (Giant?) computer brain keeping up with my transaction for me so I don’t have to carry around coopins. That’s the whole fking point. Getting rid of the blasted coopins. More specifically the coopins that require you to get a little punch each time you buy a sandwhich, and then keep brining the card in for a punch until you get a free sandwich after 4 sandwhich purchases etc. I could have had like 30 free sandwhiches instead of like 10 by now if they’d keep up with the fin punches in some other way than some card I had to hold on to and bring in each time.

    I know, I know, I make inventin’ look ez.

  33. I’d imagine that the “substantial number” of provisional patent applications that are abandoned is about to become a much smaller percentage as a result of the AIA.

  34. How do you empirically determine that “a substantial number of provisional patent applications are abandoned” if they are not converted to non-provisional applications or the subject of a priority claim in a non-provisional application? Do they not remain confidential, do you use survey data, or some other technique?

  35. 6,
    You live in the DC area? Do you have a Giant customer card? Right now, they have a sale on cantaloupe, buy one, get one free. They keep track with your giant card number.

    Another sale going on right now at Giant is for Powerade Sport Drink – Buy 10 for $10 with your card thru Sep 22
    All Flavors, 32 fl. oz. btl. In a single transaction, and get Dasani Water 24 Pack ($3.99 value) FREE

    They also have sales that print coupons for a free item next time.

  36. I hereby do conceive of, reduce to practice and disclose, to mark this special patent blog entry the following inventionlol:

    A programmed general purpose computer or cash register which functions to keep track of customer purchases of a category of items and automatically deducts the cost of one purchase of one item in the category on a subsequent purchase bill after a predetermined number of customer purchases of items within the category of items.

    Further, the programmed general purpose computer or cash register above wherein the programmed general purpose computer or cash register is a cash register. The programmed general purpose computer or cash register above wherein the function of keeping track of customer purchases is performed by identifying the customer by an identification number wherein the identification number may or may not be the last 4 digits of a credit card number used to make the purchase.

    I claim all the same as above.

    Disclosed this day 09/21/2011 and witnessed by all reading on that date. Probably already invented, but if it is I haven’t heard about it.

    6

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