Tidbit: About 3% of recently issued US patents are following an interesting path that begins with the filing of a US provisional patent application followed one-year later with an international application (PCT) and then eventually followed-up with a US non-provisional application based on the PCT. The delay in filing the non-provisional application means that, on average, these patents issued more than six years after the priority filing date. Most of the patents come from TC1600 (Biotechnology and Organic Chemistry), but the most frequent users of this approach are actually foreign hard-tech companies such as LG and Philips. — Dennis    

69 thoughts on “

  1. IANAE, "Sure, the claims of the regular aren't entitled to the date of the provisional. Still, the regular does contain a valid priority claim to the provisional, and is prior art as of the provisional date for any disclosure supported in the provisional."

    1. What do you mean by "valid?" The claims of the NP are not supported in the provisional. Under the law, there is no priority.

    2. Your statement regarding the prior art date of the patent to the date of the provisional is without support in the case law. In fact, it is flagrantly contrary to In re Wertheim. The first step is to show that a claimed invention is supported. You seem to always skip that step, and simply jump to the continuity of disclosure. I agree that continuity is required. But I do not agree that the disclosure must itself pass 112, p.1. That is a requirement for "claimed" inventions.

  2. "Ned: The basis for a US patent application being prior art is the theory that it could issue on the date it is filed. That is not the case with an international application before it enters the national stage."

    IANAE: "Surely we all agree that this "theory" is a pretty far-fetched legal fiction.

    Even so, in Legal Fiction Land, what stops an applicant from theoretically entering US national stage and getting his patent magically issued on any given day?"

    I am sure you are aware that 102(e) use to limit all patents issuing on PCTs to their US national stage date? I think this was because they were trying to implement the Supreme Court holding.

  3. You make a good point – I was thinking of submarine patents in terms of squeezing extra time out of patents in a rather shifty manner, but the term submarine patent was named after these patents that “pop up” after being hidden for years. So my analogy of “submarine patent-lite” was inaccurate.

  4. Nope. BioSteve’s approach makes sense for his scenario.
    BioSteve: are you actually seeing a slowdown in continuation from PCTs (that is, bypass applications) vis-a-vis national stage entry? That would be useful in some situations.

  5. The NP is not entitled to the benefit of the provisional.

    That’s not the question we’re asking. Sure, the claims of the regular aren’t entitled to the date of the provisional. Still, the regular does contain a valid priority claim to the provisional, and is prior art as of the provisional date for any disclosure supported in the provisional.

    The effective date of subject matter A is not the date of the provisional because there is no effective 119 benefit claim.

    If this were the case, you could change the effective prior art date of a patent disclosure by amending the claims. Which is plainly ridiculous.

  6. Example:

    Provisional discloses A.

    Non provisional discloses A and B. Claims B. Claims A + B.

    The NP is not entitled to the benefit of the provisional. The effective date of subject matter A is not the date of the provisional because there is no effective 119 benefit claim.

  7. IANAE, there is case law to the contrary about what it takes for an effective benefit claim. What is claimed must be supported in the parent for the benefit claim to be effective. Without an effective benefit claim there is no “parent” under 120 or 119.

    Second, it makes no difference whether the subject matter forming the rejection is described in the manner provided by 112, p.1 That relates to the claimed invention. For anticipation, the subject matter forming the basis has to be enabled. For obviousness, it does not. In either case, it does not have to be claimed.

  8. The basis for a US patent application being prior art is the theory that it could issue on the date it is filed. That is not the case with an international application before it enters the national stage.

    Surely we all agree that this “theory” is a pretty far-fetched legal fiction.

    Even so, in Legal Fiction Land, what stops an applicant from theoretically entering US national stage and getting his patent magically issued on any given day?

    The MPEP has got it wrong when it says “The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under 35 U.S.C. 102(e).”

    No, that’s correct. Rejections are based on disclosure, not claims. If the relevant disclosure has 112 support all the way back, it’s art all the way back. The contents of the claims, as amended from time to time, can’t change whether or not the disclosure is prior art as of its priority date. Saying “112 support” is merely shorthand for how much support is required.

    The application as a whole is entitled to the priority even if the claims aren’t. What result would you expect if that application spawned a continuation with claims that had 112 support back to the provisional?

    Finally, there is not one case that has ever held a patent application to be prior art at an earlier date than its own filing date. Not one. Why?

    Good question. How many cases ask the question, whose outcome depends on the answer to that question, and what are their pertinent facts?

  9. RH, all nice and good.  But the fact remains that it is the international application published in English of an application that designates the US that is statutory prior art. 
     
    Think.
     
    The basis for a US patent application being prior art is the theory that it could issue on the date it is filed.  That is not the case with an international application before it enters the national stage.
     
    Moreover, there is not one hint in that MPEP section that the law also requires that for patents to have the effect of earlier applications, the benefit claim must be “effective.”  At least one claim in the patent must be supported in the parent case in the manner described by 112.  The MPEP has got it wrong when it says “The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112, first paragraph, in order for that subject matter to be entitled to the earlier filing date under 35 U.S.C. 102(e).”  That should read, the subject matter “claimed” must be supported for the benefit to be effective.  If it is, the whole contents of the earlier application is prior art and it makes no fricken difference if the subject matter forming the basis of the rejection is claimed in the referencing patent or whether it meets the requirements of 112, p. 1.
     
    The MPEP is simply misleading and wrong.
     
    Finally, there is not one case that has ever held a patent application to be prior art at an earlier date than its own filing date.  Not one.  Why?  Because the law gives the benefit only to claimed subject matter.  Now, just what is claimed subject matter in a patent application?  The claims published, the claims as they exist at the time the patent application prosecution is terminated, or as they appear in the issued patent? 
     
    You tell me.  There are no cases.  I think it best to assume that a published application has no earlier prior art date than its own filing date.
     
     
     
     

     
     
     

  10. In addition, and perhaps more importantly, prosecution in a lot of smaller PCT countries heavily utilize the US search and prosecution. Therefore, if you get the case allowed in the US your chances have gone up greatly in a lot of the smaller countries that do not have well funded Patent Offices.

  11. As GC of a small biotech, I do this frequently. I don’t care when the US patent issues, because no matter how slowly it moves (and filing a US continuation from a PCT is pretty slow), the patent will issue prior to FDA approval of the claimed product. An early patent grant is very rarely useful. In pharma/biotech, the focus is on the expiration date. That’s also why in pharma/biotech it is not uncommon to file a provisional that is word-for-word identical (including claims) to the PCT filed a year later — this approach avoids any enablement problems with the provisional, while maximizing patent term.

  12. I think the following verse indicates just who lives in the land of submarines:

    As we live a life of ease
    Every one of us has all we need – [lol, think communism]
    Sky of blue and sea of green
    In our yellow submarine (submarine, a-ha!)

  13. anon,

    Not being hard on myself, just my misimpression because of how confusing the “effective dates” are as identified in the AIA (Abominable Inane Act). Just glad Paul M. could point to “chapter and verse” in the AIA that addresses this issue so I hopefully don’t repeat that misimpression.

  14. MPEP 706.02(f)(1) spells it out pretty clearly, I think. If a US Patent or PGPub resulted from, or claimed the benefit of, an int’l application, and if the int’l app was filed on or after 11/29/2000 in English and designated the US, then the int’l filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).

    US docs can properly be used (and are frequently used) as prior art under 102(e). The language of 102(e) and the guidelines in 706 are pretty clear to me about it. Patents issuing on national stage applications do often qualify as prior art under 102(e).

  15. Ned, adding new claims to previously unclaimed spec material [in a pending application, continuation or divisional] more than two years after the original application filing date [inspired by seeing patents or products of others, or whatever] has been done many thousands of time over the years in the U.S. As one case put it: “claims written from the catbird seat.” The only objection I am aware of to this unlimited term hindsight claim drafting (e.g., Lemelson and Hyatt) has been in a few interferences, on the basis of a 112 objection that the subject matter of these new claims were never described or sugggested as an invention in the spec.
    I’m not endorsing this practice from a public policy standpoint, just noting that it seems to be considered perfectly legal in the U.S. absent any new legislation to the contrary.
    To get back to the subject of this blog, another great reason to delay prosecution, as I had noted earlier.

  16. anon, it was specifically intended by the drafters that a patent issuing on the national stage of a PCT not have any 102( e) effect at all.

     
    Sent from Windows Mail
     

  17. LB, I think you are mixing the statute up quite a bit. The statute concerns two different topics. The first topic is the effect of published patent applications. The second is the effect of patents.

    The clause you are talking about is talking about the effect of published applications. Is not talking about the effect of patents.

    Patents, to be effective prior art, have to be filed in the United States.

    International applications will be effective as prior art when published when they are published in English.

    You also have to be sensitive to the history of the statute where the PTO made a great distinction between patents issuing on patent applications filed the United States and on international applications. Patent granted on applications filed in the United States was construed to be simply that, filed the United States Patent and Trademark Office under §111 (a)

  18. when you have determined that prompt issuance is not so valuable is a good idea.

    Another (strawman) post-hoc inserted assumption that actually makes my point, as the determination that a patent in hand MUST be the key driver is nowhere in sight in the earlier comment and is NOT a universal condition.

    Put. The. Shovel. Down.

  19. Nope. Thoughtfully choosing PCT first to delay prosecution costs when you have determined that prompt issuance is not so valuable is a good idea.

    For Richard, I am pressured by biotech clients to get claims as quickly as possible, under the theory that it is impossible to get funding without a patent in hand. If they delay prosecution, get patent in the six to ten year time frame, then nobody want to invest because it take another five to ten years to get FDA approval, and you end up with a patent term ending not long after you reach the market.

  20. Read the statute again, Ned. Slowly:

    “A person shall be entitled to a patent unless … (e) the invention was described in … (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the inter­national application designated the United States and was published under Article 21(2) of such treaty in the English language;”

  21. Clearly making use of the rule that the Patent Office has to extend the length of patent extensions that go too long, up to a maximum of five years. Kind of a submarine-patent-lite. We can expect more companies to go this route with their patents in the future.

  22. Don’t be so hard on yourself EG – you were probably reacting to what I actually wrote, notably the “(initiating new ones) ” portion and treated “new” as covering the priority date issue.

  23. DC, blame me. I pointed out to the PTO brass that Section 120 expressly required that the application claim the benefit claim and that a “request” is not a part of the application as defined in 111(a).

    The same might be said of an ADS, but such is construed to be part of the application or an implicit request for an amendment.

    Furthermore, a “Request” only claims “priority” and really does not claim 120 “benefit.” That left the only proper way to make a benefit claim in a PCT was to make it part of the application itself.

  24. RH, we are NOT talking about an international application. We are talking about a patent.

    A patent issuing on an international application is not a patent issuing on a patent filed in the United States as required by 102(e).

  25. Still, what’s the difference between “file the U.S. under 365 claiming priority to the PCT” and “just go national stage.” If the PCT application is not defective, why do anything other than “just go national stage.” Just trying to figure out what you guys are getting at, since priority a pretty important issue and I am not picking up on the issues you are seeing.

    You alluded to multiple pathways from PCT to US application, but the only two I can envision are the national stage and the bypass. Are there additional ways of getting into US prosecution from a PCT application?

  26. from 102(e) – “…an international application … shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published … in the English language.”

  27. “Anon’s answer suggests that you should do something asinine from time to time, because always doing it properly is asinine.”

    That’s a completely wrong spin on what I actually said.

    Not at all. DC is simply having some fun at the expense of your strange comment (here it is, in case you’ve forgotten it: “[D]oing ANYTHING – ALL THE TIME – when multiple options exist is a bit asinine”).

    As DC slyly noted, the fact that a person repeatedly chooses the best option out of a set of “multiple options” is typically not considered “asinine.” But on your planet … things are different. We knew that already, Humpty.

  28. A plurality, I haven’t read the guidelines, but 102(e) requires that the patent issue on an application filed in the US. An international application is not filed in the US.

  29. As the F&L firm expert put it: “Derivation proceedings are available only for applications that only claim (and only ever claimed) subject matter with an effective filing date of March 16, 2013 or later, and that only claim (and only ever claimed) priority to such applications. This is because the presence of a claim with an effective filing date prior to March 16, 2013 (or a priority claim to an application with such a claim) makes an application subject to the current “interference” versions of 35 USC §§ 102(g), 135 and 291.”

  30. The patent would be usable as prior art under 102(e) as of the provisional application date, as long as the provisional provides support in the 112 1st paragraph sense for the relevant disclosed material and as long as the PCT publication was in English and designated the US.

    The MPEP provides some handy flowcharts for this in 706.02(f) (see section III, flowchart 1).

  31. It’s not a “wonder” at all, Ned, it’s a straightforward reading of the statute. The words in the statute matter.

  32. You’re most welcome, anon. I too thought that you could commence an interference proceeding based on an application filed before March 16 until someone else pointed this provision out to me.

    A major problem with the effective dates for when provisions/proceedings commence/terminate under the AIA is that they’re laid out very confusingly; you often have to “follow a chain” of references from one paragraph to another to figure out the correct answer. That’s yet another reason why the AIA is the Abominable Inane Act.

  33. University technology transfer officer here, we do this with our IP several times a year. Bottom line is that the timeline between discovery and market for an early stage pharma/biotech invention is so long that the delay in getting initial US claims hardly matters. It’s critical to preserve foreign rights, but the IP budget is always tight, so this strategy trades speed for cost savings over filing separate US and PCT cases.

  34. Anon’s answer suggests that you should do something asinine from time to time, because always doing it properly is asinine.

    That’s a completely wrong spin on what I actually said.

    Try again, and please pay attention to the fact that I posited that multiple ways are present (your attempt at defining in a one and only one proper way is where you drive off into the weeds).

  35. “The elimination of interference law will take a long time since that elimination only applies to brand new applications filed since March 16.”

    Not true Paul. Instead, unless the interference was commenced as of September 16, 2012, there can be no interference proceeding. See Section 329 (f)(3)(A) which indirectly states this effective date.

  36. The CFRS are not making sense. From a PCT application, you usually just enter the national stage by paying the fees and filing the declaration (now, I think you only need to pay the fees and can file the declaration at any time). Entry into the national stage does not require claiming priority to the PCT, so NWPA’s question leaves me wondering what he means. Ned’s question, why not just go national stage, could mean “Why claim priority if you are entering national stage and the claim is implicit in filing the national stage per 35 USC 365?” The answer is that 37 CFR 1.78 was amended to require an explicit priority claim in PCT applications claiming priority to US applications (provisional or non-provisional) include an explicit priority claim (whereas the PTO used to require deletion of superfluous priority claims in PCT applications, because the priority claim is in the Request form).
    Anon’s answer suggests that you should do something asinine from time to time, because always doing it properly is asinine.
    In the past, if you entered the national stage AND supplied a priority claim: The PTO assumed you are filing a continuation and/or a Paris Convention application, not a national stage, and demanded that you then provide certified copies of the priority documents. Just adds an annoying extra step that you already paid the PCT to take care of.
    To answer Ned, It may make sense to skip the national stage and file a bypass application (a continuation or continuation in part claiming priority to the PCT application) if the PCT application is substantially deficient, but that requires a priority claims under 35 USC 119 or 120, not a superfluous priority claim under 35 USC 365 (superfluous, but now required by the PTO).
    BUT, if the PCT was based on a US provisional, the PTO currently, and newly, requires either an ADS with the priority information or an express priority claim in the first sentence of the spec of the national stage application. It does not seem to be required by 37 CFR 1.78, unless they have conflated non-provisional applications with national stage applications.
    Anyone know when 37 CFR 1.78 was amended to require this?

  37. Anon, well the PTO interpreted the prior statutes to the effect that the prior art status of an application issuing on a PCT was given ONLY by 102(e). (I actually “litigated” this issue within the PTO.)

    However, imagine an interference. The PCT patent would be given the date of its provisional for 102(g) purposes. Why that date is not prior art outside of an interference is a wonder.

  38. Paul, as I understand it, Muncie Gear would have barred a claim first presented more that two years after a public use. This sounds in statutory prior art and would require new matter to justify the holding, which is what Rich actually held in the ’81 CCPA case, IIRC.

    But equity is fact dependent, and Crown Cork emphasized both unjustified delay and intervening rights. This sound more like a “personal” defense to the one having intervening rights than a rule of invalidity.

    Still, I think, Crown Cork and the cases following it could justify a rule by the USPTO that a claim to a previously unclaimed invention first presented in a continuation application is late if the claim is not made within two years of the subject matter appearing in a published US patent or application.

  39. Yes, but equitable “prosecution laches” [finally adopted as a defense by the CAFC in the Lemeleson cases over J. Newman's objections and then narrowed by a subsequent J. Newman decision to require proof of prejudice, and apparently yet to be successfully used against anyone other than Lemelson so far], is not based on a “late claiming” doctrine.

  40. the most frequent users of this approach are actually foreign hard-tech companies such as LG and Philips

    I wouldn’t have predicted that. Any idea what percent of the PCT applications filed by either (or both) of these two companies enter national phase?

  41. Paul, but there are another line of cases the Federal Circuit does follow. What it requires is laches and intervening rights. That effectively was the gloss put on by Crown Cork.

  42. Ned, see Westphal v. Falzwi, 666 F2d 575 (CCPA 1981) for the CAFC’s correct interpretation of Muncie gear, and anther decision [Goldman?] cited in the MPEP.

  43. The elimination of interference law will take a long time since that elimination only applies to brand new applications filed since March 16. Even then, the new derivation proceeding also has a one year bar. Most importantly, the 135(b) claiming bars are not just limited to preventing interferences. In re McGrew, 43 USPQ2d 1633 (Fed Cir. 1997), makes 35 USC 135(b) grounds for rejection of ANY subject “late claim”.”

  44. My thinking exactly.

    The decision to invest in FF should be deferred for as long as possible for most inventions that I deal with. Filing PCT extends that time by at least a year, and also gives one the benefit of the international search before the decision is made.

  45. Ned,

    I can volunteer one easy answer:

    It depends.

    Like most any path made available in the alternative, the pro’s and con’s of each path can be weighed for each particular application.

    (similar to the fact that doing ANYTHING – ALL THE TIME – when multiple options exist is a bit asinine)

  46. Question for all here.

    Provisional is filed in the USPTO on Jan. 1, 2012, the PCT in the USPTO on Jan. 1, 2013, the US Nation Stage date is Jan. 1, 2014, and the patent issues on Jan.1, 2016.

    What is the “prior art” date of the Patent?

  47. [There is no surviving U.S. "late claiming" prohibition doctrine or statute other than for copying interfering claims from published applications or patents of others after the time bar period for that of 135(b).]

    Interference practice (initiating new ones) did not survive the AIA.

  48. That’s one good reason, but there are also applicants who like to keep applications pending longer to enable later claim amendments or divisionals to try to better cover their end products or competitive alternatives with valid claims.
    [There is no surviving U.S. "late claiming" prohibition doctrine or statute other than for copying interfering claims from published applications or patents of others after the time bar period for that of 135(b).]

  49. The justification might be that the cost of filing in foreign countries can add up very quickly so it’s better to file a PCT and wait to see where your invention is commercially valuable. You can convert the provisional to start US prosecution earlier than going national phase in PCT.

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