By Dennis Crouch
An ever increasing proportion of US-based patent applicants rely upon provisional patent applications. For many, a provisional application is 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. More sophisticated parties also use a provisional application as a way to shift the patent term back by one year. One problem with the cost-savings approach is that provisional applications only serve their purpose if they include a sufficient disclosure to protect the eventual claims.
One question that I’ve had for a while is whether patentees ordinarily add new matter when filing a non-provisional application that follows a provisional priority document. New matter might be needed because the original provisional application was filed hastily without sufficient time to marshal and understand the important facts. Similarly, new matter might also be wanted if additional technological progress occurred during the interim. The question has been difficult to ascertain because the USPTO does not make its database of about 2,000,000 provisional applications publicly available other than the individual files in PAIR. This, despite the law that provisional applications count as prior art in many situations. Additionally, the USPTO does not ordinarily ask the applicant to identify whether any new matter (additional disclosure) has been added to the formalized non-provisional or, if so, what that new matter might be. Rather, applicants merely “claim priority” to the provisional without saying more. The AIA first-to-file transition offers an opportunity to shed some light on industry practice in this area.
As part of a project on the impact of the America Invents Act, I looked up a set of about 2,000 recently published patent applications that were each filed on or after the March 16, 2013 but that claim direct priority to a provisional patent application filed before that date. This cohort is interesting because the applications span the transition from the pre-AIA invention-date focus to the post-AIA filing-date focus. The cohort is particularly interesting for the provisional-priority question because applicants must declare whether the claims in the newly filed application are fully supported by the provisional.
Some Background: Under the new law, the filing-date focused (first-to-file) patent regime applies to patent applications filed on or after March 16, 2013 – with the caveat that these post-AIA application filings will be examined under the pre-AIA regime if each claim (ever) in the application has an “effective filing date” that is pre-AIA. In other words, a later-filed application will be judged under the first-to-invent rules if it properly claims priority to a pre-AIA application that sufficiently discloses the claimed invention. See AIA, Section 3(n). Under the plain language of the law, the regime used is done on a patent-by-patent basis rather than claim-by-claim or family-by-family.
Ask the Patentee Whether AIA Applies: Now, you might expect that the USPTO would be charged with examining the priority documents to ensure that the newly filed applications properly claim priority. That is not really done on a systematic basis. Rather, the Patent Office simply asks the applicant whether the new claims are fully supported by the priority document. For several reasons, I believe that the vast majority of applicants will be truthful in their response. People do lie, but attorneys strongly shy away from on-the-record lies that – if discovered – would lead to potential charges of inequitable conduct, violation of the rules of professional ethics, and malpractice. While attorney bars severely frown upon attorney dishonesty, patent prosecutors are held to an even higher standard that requires both “candor” and “good faith.”
Findings: Looking at post-AIA non-provisional applications that each claim priority to a pre-AIA provisional application: I find that the files of more than 80% of those applications assert that all claims in the non-provisional are fully supported by priority provisional application.
More on Methodology: For the study, I randomly selected a cohort of about 2000 recently published patent applications that were each filed on or after March 16, 2013 but that claim priority to a provisional application filed within 12-months before that changeover date. For each of those applications, I then used PAIR to determine whether the patent applicant indicated that all of the claims in the non-provisional application were effectively disclosed by the provisional filing. The result was that 1,743 out of 2,097 (83%) assert full disclosure by the provisional whereas 354 (17%) assert that the claims were not fully disclosed by the pre-AIA priority documents. Of some interest, large entities were much more likely to claim full priority than are small or micro entities. I also found nuance within firms that had multiple applications in my sample – i.e., some firms claimed full priority for certain applications but not for others.
Caveats and Conclusions: There are a few potential conclusions to draw from this result. My best guess: These results suggest that provisional applications are ordinarily being drafted with care and purpose to ensure sufficient disclosure. At the same time, I suspect that attorneys are also purposefully limiting invention scope so that full priority can still be claimed. As suggested above, I my guess is that few if any attorneys are improperly claiming full priority. Although not sufficient to claim statistical significance, my perusal of a handful of applications support these conclusions in that applications that claimed full priority were extremely similar to the associated provisional while the new matter was fairly quickly identifiable for those applications who admitted to new matter.
There are two important caveats to using this study to reflect more fully on the practice of provisional patent applications. First, the AIA changeover has likely impacted applicant behavior – making them potentially more careful than they would be in the ordinary situation. In particular, in the AIA changeover situation, adding new matter to the non-provisional claims does more than simply shift the effective filing date. Rather, it also alters the rules applied when judging novelty and obviousness. As I wrote in a prior post, depending upon their situation some applicants may prefer the old rule while others prefer the new. See Dennis Crouch, Should you Transform Your Pre-AIA Application to an AIA Application? (November 2013).
In addition, we also have a general data problem in that a substantial number of provisional patent applications expire without ever being claimed as a priority document. In a prior post, I wrote that: “48% of provisional applications filed in FY2011 were abandoned without being relied upon as a priority document.” Crouch, Abandoning Provisional Applications (January 2013). The point here is that we have no information regarding whether these abandoned provisionals applications are substantially more sloppy and poorly drafted – I suspect that they are.
What are the odds that this will be yet another thread in which Ned fails to follow through on the discussion to its logical end, leaving my view of the law unanswered (but somehow not agreed to)?
Some old thoughts worth repeating here (from an embedded link to an earlier discussion on provisionals -sans the dustkicking that ensued):
November 26, 2012 at 8:25 am
POINT ONE
“For most, 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.”
This is precisely the WRONG way to view provisionals. I cannot tell you how much effort must be spent to educate people on this point. If cheap and dirty is what you put forth, then cheap and dirty is what you get and your tie to the non-provisional will always be suspect. The writing of a provisional should be taken with the same level of care a the writing of a non-provisional in almost ALL circumstances (there are a few emergency-type circumstances, but these should be the rare exception).
POINT TWO
“Although the information may still be useful for the applicant as a trade secret, the abandonment most likely means that the idea has been shelved and likely lost.”
Or not – one new way of looking at this is the use of the provisional to establish a PUR. File. Abandon. Keep as Trade Secret. If someone else comes along, let them do all the heavy lifting of prosecuting a patent and clearing the field for you – you and your customers are inoculated, and the best part is that the other party has no clue that you have this PUR until after they have expended the time, money and effort to obtain a patent and have then gone to the pains of enforcing their rights, and then – and only then – discover that you (and your customers) are immune to their exclusivity.
It’s a great way to force competitors to spend their resources for your benefit.
Once again I have scanned the complete 51 pages in the Armitage article available at the link provided by Reed and I find no support (under any context) for the notion that a purposefully abandoned provisional P1 (abandoned prior to its natural expiry) can somehow serve as a priority date for an after-abandoned-but prior-to-P1-defined-convention-year bar date additional filing of any type of application.
The word abandoned still means every bit of what that word means.
I again extend the invitation to Reed and Ned to either provide a definition of “abandon” that would appropriately allow them something the definitions I provided do not (this is the direct inherent meaning of the word in the statute having the meaning that I have indicated), or find a specific part of the Armitage explanation that supports the desired view.
Currently, neither support what Ned has proposed.
That being said, I still recommend the link – especially to MaxDrei, as detailed discussions abound, keeping in mind that some of the intricate details will be constrained to non-AIA examination bound applications and patents.
I will further note that the propaganda offered with the promise of the AIA (this will make all patent related items simpler) will NOT reach that promise land until AFTER another seventeen plus years has passed. Until all applications/patents that can claim pre-AIA status (including those that earn the additional Patent Term Adjustments) pass out the limited time of protection, the simplicity promised under the AIA is a mirage as BOTH legal realms are in play, and much to the scriveners delight, patent law is MORE (not less) complex.
Anon, can’t you get it through your thick skull that the repeal of the copendency requirement in the AIPA was intended to permit claiming priority to an abandoned provisional application?
You have shown no support for this proposition.
None.
You keep on saying it without providing any support. The definition itself does not support what you say. There is no support in the Armitage article – under ANY context – to support what you say.
Ned, you need to do more.
anon, except I do not. Fulfill the statutory requirements and priority is good. It makes no difference that the provisional is non co-pendent. It does make a difference if it is a more than a year old.
What definition of “abandon” are you using?
Have you read the Armitage article provided by Reed?
Anon, of course I have. I have also discussed the issue with Bob directly, and was on the board of directors of both the IPO and the AIPLA at the time we got the AIPA passed.
The whole point is that we needed to end co-pendency simply to comply with the Paris Convention so that we could still claim priority to provisional applications within the convention year even where there was an earlier filed provisional outside the convention year disclosing the same invention. The only way to do that was to abandon P1 before filing P2. But if P1 was within the convention year, we still wanted to be able to claim priority to it.
Anon, this is NOT rocket science. The problem you are having is that you are unfamiliar with the Paris Convention and its requirements.
Trust me, patent counsel of major corporations such as Bob Armitage needed to know the Paris Convention backwards and forwards as their bread and butter was non US filing.
“even where there was an earlier filed provisional outside the convention year disclosing the same invention.”
Funny that Ned – that is expressly NOT pictured as one of the contexts in the linked Armitage article.
I do not think that your memory is serving your well on this point.
Sorry Ned if you feel that I am “not familiar.” Unfortunately for you in this exchange – even though you are so much more familiar – you have not supplied any support for your position.
Still.
You will have to excuse me that I simply do not take your word alone.
Not exactly, anon. I have pointed out to you that 119 does not require co-pendency, and in fact that requirement was repealed.
There is no basis in the law to not accord priority to provisional that is not co-pendent but nevertheless is within 1 year.
“There is no basis in the law to not accord priority to provisional that is not co-pendent but nevertheless is within 1 year.”
Except for the fact that the word in the statute does not allow it.
You still have not provided a definition of the word.
You still (also) have not provided any example from the Armitage article, in any context to support what you think the law ought to be.
The problem Ned is that what you think is simply NOT what the law states.
I do understand that you want it to be different, and that your wanting it to be different is blinding you from the plain words. But there is simply no getting around the plain words. Not unless you can provide a suitable definition (which you have not even bothered to try to do).
anon, “word in the statute that prevents it?”
What word?
(sigh) – Ned, the word that I have asked you repeatedly to provide a definition for: abandon.
(you might want to look in a different part of the statute, but hey, you were the one that volunteered the use of that word)
anon, perhaps this will help:
119(c)
“(c)
In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.”
That is a codification of the Paris Convention requirements. Note, it suggests that an abandoned application may still be the subject of a priority claim, in which case, it remains “first” despite having been abandoned.
Ned,
What would help are the two very simple things I have laid out for you – and neither of which you have provided.
Why are you resisting this so fiercely?
Let me spit that quote right back at you, highlighting the phrases you seem to be missing:
119(c)
“(c)
In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a SUBSEQUENT regularly filed application [that would be P2] in the same foreign country INSTEAD OF of the first filed foreign application [that would be P1], provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and WITHOUT leaving ANY rights outstanding, and has not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority.”
What part of cannot serve as a basis for claiming a right of priority do you not understand?
Again, P1 abandoned is gone – you cannot reach back to the abandoned P1 for P1’s priority date. P2 – a provisional – cannot chain backwards to another provisional.
No one is saying that you cannot file P2 and use the priority date of filed P2.
Check again every context discussed by Armitage in the linked report. There is not a single solitary context in which priority date of abandoned P1 survives.
Not one.
So again, let me rub your nose in your own snide quote: “So, you cite an unidentified definition from some unidentified source and claim victory in this discussion. That is quite persuasive.“
The Armitage statement from page 8:
“Since the ‘right of priority’ upon filing a U.S. patent application is NOT a ‘priority right’ under U.S. patent law, but a ‘right’ WHOLLY under foreign patent laws, it is unclear how the disclaimer would be given its intended effect.” (emphasis added)
Ned – clearly Armitage is noting the difference between US and foreign patent laws. You are not giving full and proper weight to what is actually being said by Armitage who is directly admitting that US law is different than foreign law. Instead you are (once again) trying to import foreign law into the the US patent law system.
How many times does it take me busting you for this tactic in order for you to stop trying to do this?
Will you (finally) give me something more than your mere word that you want the law to be something other than what it is plainly written to be? (the appeal that Congress would simply act again to change the meaning is a bit of an admission that the law says what I indicate, right?)
anon, may I suggest you stand alone in your thinking. Given the whole purpose of provisionals and of eliminating the copendency requirement, it would be odd to have a judicial decision that would simply ignore all this and throw a monkey wrench into the law that is not required that can cause very serious damage to US inventors seeking to comply with the Paris Convention.
Also, see slide 32.
link to patentbar.com
Ned,
You continue to miss the point.
I already addressed that slide by noting that “I think so” is hardly conclusive of anything.
Further, you continue to merely “say so” and you have yet backed up your position, while I have utterly destroyed that position with the very words of the law as written.
Your hubris is amazing. I certainly hope that you do not bank any legal arguments you make on this notion that you must be right therefore you can ignore the plain words of the statute.
Once again, then (and yes to rub your nose in it): what part of “as not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority.” do you not understand?
Try reading it objectively, without the pre-conceived notion that your stance must be correct.
Let me know when you find any independent support for the notion that something abandoned means something other than what the definition of abandoned entails. In any context.
If that is correct (which I doubt) then the strategy you refer to at 2.3.1.2 will not work since there are still outstanding rights from the abandoned provisional.
Abstraction, if P1 is outside the convention year, there are no rights outstanding. So long as P1 is in the convention year, one can still claim priority to it, both for a 111(a) non provisional in the US, and for Paris Convention priority.
Again, sorry Ned but mere words is not enough.
What definition of “abandon” are you using?
This is in reply to NH at 9.1.1.1.4.1.
The problem is that under your view, P1 still has rights outstanding when P2 is filed.
Oddly,
Ned refuses to do either thing I ask of him.
He refuses to tell anyone what definition of “abandon” he is using, and
He refuses to provide any context to his claim in light of the Armitage link.
He continues to merely insist that “his word” is enough – even given all of the objective evidence to the contrary.
And oddly he wants to make a big stink of “professionalism” when it is clear that his unsupported view can be considered rather reckless.
Abstraction, well that might be the technical case. But the whole point is of eliminating the copendency requirement is to allow abandonment of P1 before filing P2 and still allow one to claim priority to P1.
If this is STILL not sufficient for the Europeans, we should let them tell us. I am very sure Bob and the folks at the PTO who were behind this legislation got it cleared through the EPO before it was enacted.
“well that might be the technical case”
Add another log onto the fire.
Ned, all that I still have from you is your mere statement…
Not to rub your nose in it (ok, to rub your nose in it):
“So, you cite an unidentified definition from some unidentified source and claim victory in this discussion. That is quite persuasive.“
anon, you still have to consider that Armitage was dealing with a P1 that was outside the convention year as an assumption — such that one could not for THAT reason claim priority to it.
There is nothing inconsistent with claiming priority to the abandoned application within the convention year. Armitage never said that at all.
As I explained Ned (and clearly you have not read the Armitage article), example 2 was not dealing with P1 that was outside the convention year as an assumption.
You are wrong.
Again.
Will you finally comply with either of the two very simple things I have asked of you, or will you (yet again) run away from a discussion with me when it is clear that you are wrong?
We’ve discussed the statute and the statutory interpretation argument based on Congress’ amending 35 usc 119(e) to remove the co-pendency requirement, so I won’t rehash the statutory issues.
The Federal Circuit has interpreted post-AIPA Sec. 119(e) and has articulated the four requirements that must be met for a non-provisional application to claim priority to a provisional application in Dupont v. MacDermid Printing Solutions, 525 F.3d 1353 (Fed. Cir. 2008):
(1) the provisional must comply with the requirements of section 112, first paragraph, and the non-provisional must be for the same invention; (2) the non-provisional must be filed within twelve months of the provisional; (3) there must be an overlap of inventorship; and (4) the non-provisional must include a specific reference to the provisional. Id at 1358.
Consistent with the statutory interpretation discussed before, the Dupont court does not articulate a co-pendency requirement or a requirement that the provisional not be abandoned.
You may make the argument that express abandonment may call into question the efficacy of a priority claim under Sec. 119(e), but you have not cited statutory or case law authority that might give that argument any weight. Continuing to assert to Ned that he “needs to do more: is not the same thing.
Thank you for your provocative insights, but I believe that further discussion that is not based in the law would not be fruitful.
You still fail to account for the meaning of the word Reed.
You are supplying some great collateral items, but failing in the first instance.
Whether or not the requirement of co-pendency is articulated does not – cannot – override what the word “abandon” means. You asy I have cited no statutory law or case law – but I have provided you the meaning of the word and used your own Armitage reference to negate what you and Ned claim to be.
You want to assume that your view is based in the law and you simply have not yet established that.
Further, your new reference to Dupont is inapposite as that case does not deal with the fact pattern we are discussing.
What is your definition of the word “abandon?”
Let me return the favor of a positive source contribution regarding the Dupont case:
link to fyiplaw.com
Thanks for the link to the case.
Express abandonment under 37 CFR 1.138 is abandonment of the application, rather than the invention. (See words of Rule and MPEP 711.) To understand the distinction, consider the following hypothetical under 35 USC 120 practice:
Day 1 – Application A is filed, disclosing and fulfilling Sec. 112 requirements for Invention X.
Day 2 – Application B is filed as a continuation of Application A, also disclosing and fulfilling Sec. 112 requirements for Invention X.
Day 3 – Application A is expressly abandoned under 37 CFR 1.138.
Day 4 – Application C is filed as a continuation of Application B, also disclosing and fulfilling Sec. 112 requirements for Invention X, and also claiming Invention X.
If we were to interpret the abandonment of Application A on Day 3 as abandoning all rights to Invention X, then the claims in Application C would not have the priority right to the Day 1 filing date of Application A. But that is not the case — only Application A was abandoned and not the rights in Invention X.
Because provisional applications are abandoned under the same Rule as utility applications, which explicitly indicates that the application is being abandoned, the distinction between abandoning the application and abandoning the invention must be maintained.
You might want to look at the source you yourself provided and note that Armitage wrote (care in just how “abandonment” is effected).
Reed – I have already addressed these things.
And I still do not have a definition of the word from you (Rule 1.138 does not say what you think it says) – I do understand the distinction, but apparently you and Ned still do not. Again – note that in Armitage’s several different contextual examples, the invention is ‘kept alive’ but only in P2 (and critically, only with P2’s priority date). NONE of his examples even hint that the priority date of P1 survives abandonment.
Not one.
Your instant hypothetical again misses the point, since you are again introducing a different fact pattern – you have a maintained chain – and once again not addressing the point under discussion – P1 abandoned prior to any chain to P2 (P2 cannot chain to P1).
One of the things you should notice, anon, is that in Armitage’s examples, all the provisional applications are abandoned after they are filed
Ned – that is a meaningless point – did you want them abandoned before they were filed?
Still waiting on you to address the points I have provided to you Ned.
What is your definition of “abandon?”
Have you found any context in the Armitage article to support your view?
Look at his examples. Every one of them has a vertical line after filing. It is Bob’s recommendation to abandon all provisional applications immediately after they are filed. This preserves the right claim priority to them even if they fall outside the convention year.
Ned,
I concede what you are saying in relation to foreign filings – but I already made clear that I was talking about US law. See 2.3.1.1.1.4.
Also see Page 8 of the Armitage write-up.
What you say does NOT pertain to US patent law as I have been trying to tell you.
See how I have ripped apart your 119 quote?
anon, on page 8 homages is talking about the distinction between the banning the right to a patent and not abandoning the right to claim priority. While one can abandon the right to obtain a patent by abandoning the provisional application, one does not he contends surrender the right to claim priority to it.
This bolsters the argument that he understood and still contended that abandoning the provisional does not affect the right to claim priority to it provided the claim is made within one year. That is why he recommends abandoning provisionals after they are filed so that if they go out of the convention year, one might still be able to claim priority to a later provisional within the convention year and comply with the Paris convention. But if one had to sacrifice the right to claim priority to provisionals in United States while preserving Paris convention rights, I would think that Armitage would make that point that there would be a trade-off. But it is clear to do not make that point in believed that one could pursue the practice he recommended and still preserve the right the claim priority to abandoned provisional applications both for Paris convention purposes and for US non-provisional purposes. Nothing else makes sense. To read the statute the way you suggest, one would have to hamstring US rights if one were to comply with the Paris convention for foreign-filing purposes. But no one at the time or even today thinks that. If the US courts would to hold that the abandonment of a provisional application would preclude one from claiming priority to it even though there is nothing in section 119 to prevent it, I think there be such a hue and cry that Congress would immediately overrule such a decision.
anon, please forgive all the typos in my last response. “homages” should be Armitage’s, “banning” should be “abandoning;” “it is clear that he did not make that point”….
You cannot bolster the argument for US law as once again all you are doing is descending to a type of “the law should say X, while the law still says Y.”
Focus Ned on US law and how you have not yest provided actual support for your position.
Page 8 admits that what Armitage said about FOREIGN FILINGS does not have an analogue in US law. He in fact is not just silent about the difference in US law – he admits it.
You have not commented on the destruction to your view as rendered in 119 – did you miss that post?
(and don’t sweat typos – this is a blog and typos really are not a big thing)
Ned, see 9.1.1.1.2.9
anon, will homages is wrong about 119 not having an analog to for law, because it did in section “(c)”. [I don’t recall when section “(c)” was added. Perhaps it was not in the statute when Armitage made his remarks.]
On US law, there is nothing in US law that prevents a claim to priority to abandon application. The only thing that would prevent that, the requirement for codependency, was removed from section 119 in 1999.
You still have the support your position by some statute or case law that actually states that one cannot claim 119 priority to it and abandon application. I guarantee you that such case law does not exist. Further, there is nothing that I know of in the statutory framework that would prevent such a priority claim under 119.
Ned,
Once again you are ignoring the destruction of 119(c) that I have already posted.
Please catch up.
You need to recognize that the law you wish to lean on to support your position does exactly the opposite.
You keep on saying “nothing in US law” when it is quite evident that US law is not only “nothing,” but is conclusively “something” (and that something is fatal to your view).
I do not think case law will exist as the clear impact of the language is not something that will likely even make it to court.
Read my comment with the bold emphasis – 9.1.1.1.2.9.
anon, since 119(c) is a codification of the Paris convention, and because the USPTO cleared its procedures involving provisional applications through the EPO and WIPO before the amendments of section 119 were made in 1999, your interpretation does not hold water. The abandonment of a provisional application abandons its right to a patent. It can no longer be converted into a patent application and therefore it fulfills the requirements of the Paris convention that a patent application be abandoned and leave no outstanding rights. The Paris convention does not prohibit a priority claim to such an abandoned application, but it still requires that the priority claim still be made within one year of the filing of the abandoned application. That is all that is required.
“your interpretation does not hold water”
LOL – WRONG Ned.
My “interpretation” is nothing more than the plain words of the statute itself.
You need to deal with those plain words.
Sorry Ned, but all that you are doing is wanting to the law to say something other than what the law clearly says.
As I have already told you – the Paris Convention is a treaty that is NOT self-enacting, and just because you see something in the treaty does NOT mean that it automatically translated into the enacting law.
I ripped you apart directly on 119 using only the very words of the law.
You have to live with what those plain words say. You cannot revert to any words in the Paris Convention that are not in the US law – and I clearly showed you what that US law says.
What part of “and has not served, NOR THEREAFTER SHALL SERVE, as a basis for claiming a right of priority” do you not understand?
anon, all I can say is that even though you have an argument, the consensus is against you. If the abandoned provisional application falls outside the convention year, it cannot serve as the basis for priority. I think that is what was intended.
Regardless, I am very sure that if a court were to rule as you suggest they could, that court case would be quickly overturned by Congress because it flies in the face of the intent of the drafters who obviously included Bob Armitage.
“anon, all I can say is that even though you have an argument, the consensus is against you”
What consensus, Ned? You have shown nothing to back you up except your word.
Sorry, as I have already stated, that is simply not good enough.
The plain words of the law itself support me fully. You may wish there was a different law, but that will not help you.
I am not sure why you would even bring up: “If the abandoned provisional application falls outside the convention year” as that has not been a part of our conversation.
“because it flies in the face of the intent of the drafters who obviously included Bob Armitage” You have not even shown this – as I have shown you that on page 8 of the Armitage article, Armitage himself openly admits that US law does not cover what you say US law covers. You continue to confuse what may lie as intent in a treaty with what Congress actually chose to do in enacting that treaty. You seem very much stuck on the Ned-IMHO law factor.
When all is said and done, you have made no case for your position concerning US law.. Personally, I would be truly embarrassed to stand up in a court and attempt to convince the court with what you have shown here (which is to say, nothing much at all).
(Ned – read that again – you are mistaken)
Dennis writes “the Patent Office simply asks the applicant whether the new claims are fully supported by the priority document” and I have been asking how (in a case where the priority document is not identical with the pending application that contains the claim) shall I know whether my claim is “fully supported” by the priority document.
Looking at 35 USC 112, I see the requirement for a written description and an enabling disclosure but no mention of the concept of “support”, in the specification, for the claim. How is it then that, when the PTO poses its question “Does your application contain even a single claim that lacks full support in the priority application?” everybody understands the question well enough to answer it truthfully?
Take for example the typical situation in chemistry, where the priority document (provisional) claims a generic chemical formula and the prosecuted claim in the successor non-pro is identical. In the pro are but two worked examples of chemical compounds within the ambit of the claim, but in the successor non-pro there are those two Examples plus 18 more. Does the non-pro claim enjoy a level of “support” in the provisional that is “full”? Yes or No?
Max, the issue of course is whether the application filed after March 16, 2013 has any claim that is not supported in an application filed before that date.
Take your example of a claim to a genus. The pro has two examples. The non pro 18 more. The non pro is filed after March 16, the pro before.
No matter how you argue your case, the addition of the new matter in the later specification with claims that cover these new examples is going to result in the new application having a claim that is not fully supported in the provisional such that one cannot make the require affidavit without committing fraud.
At least, that is my opinion.
Note, provisionals do not require claims. Claims in the provisional should be given little or no weight in the answer to this question.
Ned thank you so much, for an answer that both reassured me and surprised me. Yes, I confirm that my pro was filed before March 16 and my non-pro just under a year later, after March 16.
OK, let’s assume the pro has no claims. For me, that makes no difference. As you say, claims are not a required element of a pro.
Now let’s set aside any thought of claims directed to the specific subject matter of one of the 18 new Examples. Can we just focus on the generic claim, of a text found verbatim in the “Summary” section of the claim-free pro? Does that text in the pro, and those two Examples in the pro, suffice to provide “full” support in the pro for that generic claim in the non-pro?
Max, if a claim covers new matter, I would suggest that it is irrelevant that the claim also covers matter in the priority case.
It is the addition of new matter that causes the problem.
Compare MUNCIE GEAR INC. v. Outboard Co., 315 U.S. 759, 62 S. Ct. 865, 86 L. Ed. 1171 (1942). The applicant added new matter in an amendment. Some of the claims arguably were fully supported without the new matter. Nevertheless, the Supreme Court was not going to get into that fine a detail, and simply declared all claims invalid, essentially holding the filing date of the patent to be the date of the amendment, which was more than the statutory bar period beyond the date the claimed motor was in public use.
The best bet is file two cases, one without the 18 new examples. There make the affidavit. In the other, do not.
Ned, in These columns, sometimes it happens that I get a great new insight into the differences of understanding across the North Atlantic, when each side finds some aspect of its respective patent law so self-evident as to need no mention, and the two aspects clash.
This was such a Moment for me. Many thanks.
Now I see, why some Americans are so terrified of adding matter, during the Paris Convention priority year, when moving forward from pro to non-pro (so to speak). Now I see why some Americans find it so difficult to comprehend, how issues of entitlement to Paris Convention priority are addressed under the EPC. Thanks again.
MaxDrei,
In your wonderful “Now I see” eureka moment, do you see where an abandoned first provisional can be relied on for priority prior to a year’s time from that provisional’s filing date?
Under US law?
What definition of “abandon” are you using?
Simple question: can someone detail how one claims priority
aside from filling in the normal USPTO form PTO/A1A/14 ADS to effectively declare that “all claims are fully supported by the priority document.” I include the following statement in my application preambles that states: “This application claims the benefit of filing priority under 35 U.S.C. §119 and 37 C.F.R. §1.78 of the co-pending U.S. Provisional Application Serial No. 61/xxx,xxx
filed March xx, 201x, for a . . . ” What else am I supposed to do? If this is incorrect, how would I correct it in an application that is still pending? Is there another form that everyone uses to accomplish this? What if I only wanted to claim that some are fully supported. How would I indicate that? And, how in the heck did Dennis go through 2000 provisional applications? Is he a robot?
Regards, C3PO
Russell, I am looking at what you call:
“the normal USPTO form PTO/A1A/14 ADS”
but on it see no hint of a suggestion that I:
“declare that “all claims are fully supported by the priority document.”
Conversely, in 35 USC 119, I see the exact same Paris Convention test namely “same invention”. Also in 35 USC 120 I see the same notion repeated “an invention……such invention”.
This all suggests to me that “fully supported” is in fact unsupported by the statute and rules, and that the statute has instead enacted the Paris formula, plain and simple.
May I ask, from what source are you deriving your “fully supported” test?
Max, The Application Data Sheet includes the following statement/checkbox:
[Check Yes or No] This application (1) claims priority to or the benefit of an application filed before March 16, 2013 and (2) also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
NOTE: By providing this statement under 37 CFR 1.55 or 1.78, this application, with a filing date on or after March 16, 2013, will be examined under the first inventor to file provisions of the AIA.
I wrote about this here: link to patentlyo.com and the USPTO discusses the issue here: link to uspto.gov
Thanks Dennis. Very helpful.
Got it–thanks Professor!
Max, in reading the Professor Crouch’s article I had the impression that a special statement had to be made now using some magic words like “fully supported” to claim priority. Apparently, you just make the claim like we did before AIA, except in the situation where someone wants to be examined under the AIA but wishes to still claim priority back to a provisional filed before March 16, 2013. That’s when one check the box on the ADS.
Professor, I still have the question as to what does one do if some claims are supported by the pre AIA provisional and some are not, but you want pre-AIA examination for those claims eligible. Do you file a separate statement naming which claims should be examined how? Seems like your prior article indicated it was left up to the courts to figure that out in a contest. It’s claim by claim, right?
Thanks Russell, sorry for the confusion created by my original article.
You asked in a follow-up: I still have the question as to what does one do if some claims are supported by the pre AIA provisional and some are not, but you want pre-AIA examination for those claims eligible. Do you file a separate statement naming which claims should be examined how? Seems like your prior article indicated it was left up to the courts to figure that out in a contest. It’s claim by claim, right?
Answer: The USPTO has announced that they are treating patent applications as a whole with regard to AIA applicability and have applied a one-drop rule. The basic rule is that the first-to-file rules of the AIA apply to any application with at least one claim whose priority date is on or after March 16, 2013. The only solution then would be to file two separate applications.
Somewhat confusing. AIA or not-AIA is decided patent-by-patent. But, the actual priority date can still be claim-by-claim.
Take a hypothetical example of a CIP that has one claim with an effective filing date of 1/1/2010 and another with an effective filing date of 1/1/2014 (because of new matter added). Because one claim is Post-AIA then the first-to-file rules apply. However, when applying those rules, the first claim will be deemed filed as of 1/1/2010.
A note of warning might be added: do file separate applications. Do not file one application and then rescind claims that make the application fall into the post-AIA examination domain. Even if you make the application be as if you never had those claims, your removal will not move the application back into the pre-AIA examination bucket.
(thanks again to the poster who noticed that claims to new matter would not be entered in the first instance and clarifying my understanding on that point)
Guys, thanks for the tips and comments. This type of info really helps us practitioners to avoid hidden pits and snares, ultimately helping our clients.
“the statute has instead enacted the Paris formula, plain and simple”
Now that is some fanciful wishful thinking…
anon, if the US did not treat domestic priority the same way as Paris Convention priority, that might be a treaty violation. I am sure the US courts, if ever presented the issue, would not intentionally do this.
That being said, we have the notorious Rich and the Hilmer doctrine that rankled.
…still not seeing a post from you that supports what you claim Ned.
As to “treaty violation,” bah – that’s an empty point given that in US law these treaties are not self-enacting (you seem to draw a blind eye to this -either that or you are insisting – yet again – on ignoring actual US law in our discussions).
well that post evaporated…
Anywho, Ned you still have not supported your claim. As to ‘treaty violation,’ you do recognize that these IP treaties are not self-enacting, right? Please tell me that you at least recognize this aspect of US law (and are not trying to create Ned-IMHO law in this discussion).
anon, all I am suggesting is that where there are two possible interpretations of 119, one that accords with a treaty and one that violates the treaty, which one do you think the courts will choose?
We no longer have Rich on the court, who could be guaranteed not to keep the big picture in mind. He would rule that unless Congress expressly prohibited patenting X, that X could be patented — no need to look to the Supreme Court for guidance.
Ned,
All I am saying is that you cannot use a word that violates a basic portion of meaning for that word.
Please feel free to join Reed in finding a definition that fits what you want to do.
…and your anti-Judge Rich comment is completely out of line here.
There are plenty of places for you to stop running away, turn around, and engage me in meaningful conversation.