Eric Sutton is a senior patent counsel at Oracle and an adjunct professor at Chicago-Kent College of Law. Any views or opinions expressed by him in this article are solely his own and do not necessarily represent those of Oracle Corporation, its subsidiaries or affiliates.
As known to most patent practitioners,[i] a parent provisional does not lock in a priority date for a child non-provisional unless the parent provisional provides a written description and enablement of an invention that is claimed in the child non-provisional. This assessment is conducted on a claim-by-claim basis[ii] to see if the parent provisional adequately supports and enables the precise subject matter of each child non-provisional claim for which priority is desired. If none of the claims in the child non-provisional are fully supported and enabled by the parent provisional, then the priority date for all of the claims is the later filing date of the non-provisional. In this scenario, the provisional has no clear value.
Under our first-inventor-to-file system, references that are published or patent applications that are filed between an applicant’s parent provisional filing and the applicant’s child non-provisional filing open the door for prior art to the claims of the child non-provisional filing, if those claims are not fully supported and enabled by the parent provisional.
Patent applicants, especially for software-related technologies, often file provisionals just before product releases, presentations at conferences, or publications of white papers or marketing materials. In-house patent portfolio managers frequently reassure business leaders that the technologies are protected by the provisionals, and outside patent counsel often similarly reassure in-house patent portfolio managers. However, due to time and budget pressures that often impact provisionals, relying on a provisional for priority may be significantly riskier than relying on a non-provisional.
Consider the hypothetical example below:
In the example, suppose your company files many provisionals and, on average, files many non-provisionals — each about ten months after its corresponding provisional. You file the provisionals ahead of product releases, and your competitor follows up with very similar product releases within a few months. The competitor’s product releases and several publications about the underlying technology occur during the ten-month span between provisional and non-provisional filings. Any aspects of these publications that were not completely derived from your product would serve as potentially invalidating prior art to your non-provisional filings unless your provisional filings satisfy the written description and enablement requirements with respect to your non-provisional claims. This scenario could happen over and over again, and negative effects from this scenario could even be baked into your provisional and non-provisional filing strategies in a fast-paced product development environment.
In a big data analysis of provisional application quality, focused on comparing provisional application content to non-provisional claims using Innography®, LexisNexis® PatentAdvisor®, and self-developed software, I found that many patent attorneys seemingly do rely rather extensively on their provisionals.[iii] On average, applicants rely extensively on their provisionals by allowing an average of ten months of risk for intervening prior art by filing the first-filed child non-provisional ten months after the corresponding provisional. Whether or not that intervening prior art actually shows up is beyond their control, particularly if they have already let the cat out of the bag by sharing their technology with others.
How can we know, with high probability for a large set of provisionals, whether those provisionals provide support for their child non-provisional claims? While there are many approaches available, some are more or less time-consuming, more or less subjective, more or less scalable, and more or less reproducible. I chose to analyze a large chunk of application pairs[iv] to see whether word stems present in the non-provisional claims[v] were also present in the corresponding parent provisionals.[vi] I then further excluded word stems that often appear in patent claims to produce even more interesting results that focus in on the less common word stems that theoretically would be more troubling if missing from the provisionals. The results are objective for what they show, i.e., that provisionals are, on average, missing several word stems from the broadest independent claims of the non-provisionals.
The study does not conclude missing word stems or even missing uncommon word stems necessarily mean that there is no support or enablement in the provisional. On the contrary, the conclusion of this study depends on your personal experience and judgment. Suppose you know nothing about a large set of provisionals in your portfolio other than how many unique word stems and, more specifically, how many uncommon unique word stems from the broadest child non-provisional claims were missing from the provisionals.
My guess is that most people would be very comfortable if all of the word stems or uncommon word stems were present in the provisional (0% miss rate) even though it is still possible they have not supported or enabled the claims in particular scenarios. On the other hand, I think most people would be very uncomfortable if all of the word stems or uncommon word stems were absent from the provisional (100% miss rate) even though it is still possible that they have supported or enabled the claims. Different people will have different comfort levels between 0% and 100% depending on their own experiences and understanding, but at higher percentages one would likely begin to bet against priority rather than for it.
The study evaluated 1905 pairs of parent provisionals and non-provisionals, filed between March 2012 and July 2013.[vii] In the sample, there were 16,739 unique word stems in the first claims of the 1905 non-provisionals. For the parent provisional / child non-provisional pairs, an average of 7.0 unique word stems from claim 1 were missing from the parent provisionals out of an average of 49.8 unique word stems per claim, for a 13.3% unique word-stem miss rate. As mentioned above, applicants waited an average of 10 months between filing the first-filed non-provisional from the provisionals, which means applicants relied on these provisionals by taking on unnecessary risk, despite the significant average miss rates.
The chart below shows percentages of cases at different levels of word stem miss rates.
As shown, about 19.3% of cases were missing 25% or more of the unique word stems, a point that is likely beyond the comfort level of most patent practitioners. That said, 21.5% of cases had a 0% miss rate, indicating that a large group of patent practitioners is avoiding the written description and enablement risk that comes with varied language.
After a careful analysis of stems at different thresholds, it turned out that the top 3% of stems (516 stems) occurred 30 or more times in the sample and included stems that, for the most part, would likely not be considered relevant to a written description analysis, whether or not a synonym was present in the provisional. The choice of a cutoff level was subjective, but the cutoff itself was objectively applied in the sense that all terms above the cutoff were removed from the study and all terms below the cutoff remained in the study. The rationale used for the subjective cutoff level was to pick a level that was just beyond any level including the most common terms occurring in computer-related claims. Although the sample of cases was not limited to computer-related cases, computer-related terms excluded as being part of the top 3% were, for example:
comput, store, storage, devic, service, server, system, machin, network, send, receiv, transmit, communic, provid, transit, instruct, engine, modul, configur, process.
Using the list above as a proxy for familiar common terms was helpful in picking a cutoff point even though a significant portion of the sample did not involve computer-related innovation. Stems beyond the top 3% boundary remained in the study. These less common stems occurred 29 or fewer times in the sample of 1905 claims.
Should the miss rates go up or down after removing the common stems? My hypothesis was that miss rates would go down because terminology such as “compris” (excluded as within the top 3%) might often be added by attorneys down the road as claims are solidified. At a minimum, more cases would have a 0% miss rate when fewer stems are searched. Others predicted that the miss rates would go up for other buckets because common terminology is usually present in the provisional, at least as boilerplate. Therefore, removing the common terminology would reveal the true incompatibility between provisionals and non-provisional claims.
I was not willing to tolerate the same miss rates as I did in the analysis for all stems. Because we are focusing on only the stems that occur relatively infrequently (in 29 or fewer out of 1905 claims), it is significantly more likely (though not certain) that these stems would reflect content that could be relevant to written description or enablement issues.
Others were right to think the results would get worse. Removing the top 3% of stems reduced the average number of unique stems per claim by 27 stems (45.8%) to 22.8 stems. Out of those 22.8 uncommon unique stems remaining, on average, provisionals were missing 5.3 for an average miss rate of 17.7%, up by 4.4%. Personally, I was shocked at this result and felt uncomfortable on behalf of the patent bar.
The chart below shows percentages of cases at different levels of uncommon word stem miss rates.
As shown, about 26.7% of cases were missing 25% or more of the unique word stems. The 26.7% uncommon stems mark is up from the 19.3% mark for all stems, reflecting a delta of 7.4%. If having 25% or more uncommon stems missing is beyond the comfort level of most patent practitioners, then practitioners should be uncomfortable with at least 26.7% of the provisionals being filed. I was equally as shocked to see that 9.8% (up by 5.5%) of cases were missing 50% or more of the uncommon stems. The largest cluster was 24.1% (up by 2.6%) having a miss rate of 0%, although there were a few miss rates even at 100%.
Due to the skewed distribution with miss rates falling at both ends of the spectrum, statistical metrics such as standard deviation did not provide much insight into the dataset beyond the charts shown. Nevertheless:
- a miss rate of 21% (30% of the sample) was greater than one standard deviation away from the peak of 0%,
- a miss rate of 34% (19% of the sample) was 1.645 times the standard deviation away from the peak (considered significantly different than the peak of 0% for a right-tailed distribution, p = .05, if the peak miss rate of 0% is considered to be the target). Note this analysis incorrectly treats the 100% miss rates as deviating from the target, when at least these cases clearly have a different target. This unnecessarily inflates the miss rate required to qualify as significantly different.
- a miss rate of 42% (14% of the sample) was greater than two standard deviations away from the peak.
U.S. ISSUES
It turns out that, in the U.S., the patent office does not even check for provisional application priority unless there is intervening prior art. That said, priority issues do come up in courts where litigants are equipped with discovery and additional resources.[viii] Based on the results of this study, it seems that there is some low hanging fruit where the patent office could object to a priority claim that is extremely unlikely to be accurate and, after patent office review, turns out to be inaccurate regardless of whether the patent office has found intervening prior art.
INTERNATIONAL ISSUES
Although I am not qualified to opine on the laws of specific other countries, I do know that many other countries generally have a stricter view on specification support for the purposes of preserving priority. According to Heather McCann, a European Patent Attorney at EIP: “Having a mismatch in the literal terminology of the U.S. provisional and a child PCT application or a child European direct national filing could significantly reduce the possibility of obtaining patent protection and successfully defending a validity challenge, post-grant, if the contents of the U.S. provisional application were published (even by the applicant) prior to the child PCT or child direct national filing.”[ix]
Unfortunately for U.S. applicants, unless they are keen on priority issues, non-U.S. patent offices might be able to reject cases from U.S. applicants more frequently based on a difference between common U.S. practice and foreign written description and enablement laws.
INEQUITABLE CONDUCT
Because inequitable conduct involves intent, which is fact-specific, this article does not delve any deeper into this potential issue. That said, it would be interesting to hear an argument and supporting explanation against such a finding if the applicant incorrectly claimed priority even though 100% of the uncommon word stems were missing from the provisional.
GENERAL CONCLUSIONS
The study is an objective report of terminology disagreement between provisionals and non-provisionals. Individual attorneys will vary on how much terminology disagreement they find comfortable in light of their understanding of 35 U.S.C. 112(a).
With 27% of the provisionals missing a quarter or more of the broadest non-provisional claim’s uncommon unique word stems, there is much room for the patent bar to either improve provisional application quality or avoid inaccurate priority claims. Perhaps this could also be accomplished by prioritizing the conversion to a non-provisional or filing incremental provisionals as more details become available, rather than waiting 10 months for the conversion.
[i] For more information on the written description and enablement requirements, particularly as they apply to software-related innovation, see Sutton, E. Software Patents: A Practical Perspective (ver. 2.2, Sept. 2017), available on Amazon at http://a.co/9xcPNr9 (a software patents textbook in support of a law course offered at Chicago-Kent College of Law).
[ii] Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Company, 849 F.3d 1049 (Fed. Cir. 2017) (inadequate written description in provisional); Phigenix, Inc. v. Genentech Inc., 238 F.Supp.3d 1177 (N.D. Cal. 2017) (inadequate written description in provisional); See Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017) (provisional not enabling); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (“priority claims are not examined by the PTO as a matter of course, and consequently are not entitled to a presumption of adequate written description support in the provisional application,” and “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent . . . .”).
[iii] N=1905, down from an original sample of 2341 after excluding: (a) unparseable provisionals, (b) clearly incomplete claims (for example, a method claim ending at the colon), and (c) later-filed provisionals that paired with the same first-filed non-provisional; provisionals filed Mar. 2012 to July 2013 across all companies, spanning the AIA transition; raw provisional pdfs available from PAIR, provided by Innography® in Jan. 2017; filing dates provided by Innography® directly and through use of their excellent patent portfolio analytics tool; sample spread over TC 1600, 1700, 2100, 2400, 2600, 2800, 3600, and 3700.
[iv] N=1905, same sample as above, comparing claim 1 of the non-provisional to the entire contents of the provisional application pdf, drawings included, based on Official Character Recognition (OCR) performed in batch by Adobe® Acrobat® 9 Standard, version 9.0.0. Provisionals were paired up with their first-filed non-provisionals based on data provided by Innography®. The claims of the non-provisionals were downloaded from Innography®.
[v] The first claims of the first-filed non-provisionals were stemmed using a popular word stemming library to result in unique word stems.
[vi] The text of the corresponding provisionals, as a result of the Adobe® Acrobat® 9 Standard OCR (see above), was searched for any text that would match the unique word stems. Spacing issues and formatting issues were corrected before performing the comparison.
[vii] The provisionals involved were filed between March 2012 and July 2013, bridging the AIA transition. If attorneys changed practice from pre-AIA to post-AIA, those changes were not sufficiently detectable in this sample. Although I personally believe that attorneys have not changed practice post-AIA; to fully test that hypothesis, I would need a sample significantly earlier than the AIA and a separate sample significantly later than the AIA. These samples simply were not available to me when I started the study.
[viii] Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Company, 849 F.3d 1049 (Fed. Cir. 2017) (inadequate written description in provisional); Phigenix, Inc. v. Genentech Inc., 238 F.Supp.3d 1177 (N.D. Cal. 2017) (inadequate written description in provisional); See Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017) (provisional not enabling); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (“priority claims are not examined by the PTO as a matter of course, and consequently are not entitled to a presumption of adequate written description support in the provisional application,” and “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent . . . .”).
[ix] See, for example, European decision T 1983/14 “Purchase of mobile top-up/JANUARY PATENTS LTD.” (Nov. 23, 2015) (“The case law of the Boards of Appeal requires that the subject matter be directly and unambiguously derivable by the skilled person from the disclosure as a whole. The expressions ‘invoiced together’ and ‘charged for together’ . . . disclosed no more than that transactions could take place on the same machine[, not] multiple products being invoiced as one transaction.”); European decision T 2061/13 (June 20, 2017) (“subject-matter of claim 1 is . . . not directly and unambiguously derivable by the skilled person . . . such that . . . claim 1 does not have a right to priority from P1.”).
Is any one, or more, of you prepared to offer rules, in the simplest possible terms (and perhaps that in itself is impossible) to the simple baseline practitioner
(1) what rules to follow in the filing of a US provisional application, and/or
(2) what rules to follow in the (perhaps simultaneous) filing of a first application in Europe?
Thank you! Great article which uses big data analysis to support the main takeaway – a surprisingly large percentage of provisionals do not provide support for claims in a later filed non-provisional. Applicants should take note and revise provisional filing practice to be more robust, investing more upfront to generate a useful product which can actually be relied upon later. Even the USPTO can take note and better scrutinize support for each claim in the provisional, to evaluate the unsupported claims based on the later filing date of the non-provisional. Evaluating claims on a larger prior art set will also likely result in issuance of narrower, focused claims, rather than overreaching broad claims ripe for troll abuse.
You had me along with you every step of the way until your last comment in which you indulged in the fallacy of “Tr011 abuse.”
Readers please see IPMan at 6321 below, on the continuing failure of the USA in Section 119(a) to implement what it signed up to, long years ago, in Paris Convention 4A1. on the right of priority.
Here in Germany, there is a great tradition of “setting a good example” in public. If you want children to refrain from jaywalking, you should not yourself jaywalk flagrantly, when children are watching.
Likewise, countries who shout loudest about “the Rule of Law” and would like to see it emerge in underdeveloped countries should be fastidious about obeying it, in their own jurisdiction.
I’m not saying the USA is any more at fault than other developed countries. Take Germany, for example. Lectures others about CO2 global warming but then shuts down its nuclear power stations and compensates with lignite burning to make electricity. Disgraceful!
The Paris Convention aims to make a “level playing field”. Before America criticises other States for tilting the field in their favour, it should level up its own field. If only out of self-interest, to help its own corporate globally-active Applicants win priority contests with other corporate Applicants.
“Likewise, countries who shout loudest about “the Rule of Law” and would like to see it emerge in underdeveloped countries should be fastidious about obeying it, in their own jurisdiction.”
You rather missed the fact there MaxDrei (in your hurry to throw out raspberries) that treaties are generally NOT self-enacting for our sovereign.
Your “rule of law” speech needs to be set back on the shelf for a little while longer.
We know that treaties are not self-enacting. They require Congress to enact corresponding laws. It should do so.
There’s nothing special about the USA in this. It’s the same in the UK and many other countries. The Government signs treaties, but Parliament enacts the corresponding laws.
Apparently, IPMan, YOU may know – but if you read what MaxDrei posted, HE does not.
Fastidious IPMan likes to use the word “enact”. For what Congress does, I think it is more apt than the word which you and I used, namely “implement”.
Perhaps it was that word “implement” in the first para of my #7 above, which confused you into thinking I was referring to the executive rather than the legislative power?
But then again, at 64211, you yourself wrote:
“The actual obligation ONLY inures upon completing BOTH the signing of the treaty AND the implementation into our law.”
As I pointed out to IPMan, MaxDrei, your understanding is underwhelming.
Hint: “implement” is not the correct word, as the legislative branch is entirely within their power to enact into law the treaty or variants as they may choose.
It’s part of our separation of powers structure that our sovereign has chosen.
It’s also not that difficult to understand (even as some seem to have a difficult time accepting).
…as an example of “variant,” take the Berne convention, of which our legislature decided (as is their right) to enact in portions and thus only partially at any one time.
All of the feelings of “should” need to remember the actual structure (and choices thereof) of the Sovereign.
Nobody doubts that the legislative branch has the power to enact a variant rather than following the treaty exactly. The same is true in many, many other sovereign countries. Separation of powers is far from being a uniquely American thing. We get it. It’s pointless banging on about something on which there is no dispute.
The questions are whether the legislative branch intended to enact a variant rather than following the treaty, whether that was a good idea or a mistake, and what they should now do about it.
With 54 comments thus far, I write (inspired by the thread thus far) with a question that arises from the priority contests between corporate competitors, as envisaged by the professor, and bearing in mind that the USA is a signed up member of the Paris Convention.
Suppose each of J&J and Medtronic invest in an invention made by a surgeon, a nifty new surgical instrument. They (J&J and Medtronic) each file a respective non-pro at the USPTO, each exactly 360 days after “their” doctor filed a pro in her own name, and then approached the corporation for investment.
The two doctor inventors conceived and devised, independently, more or less the same instrument, and their respective pro applications each had a sufficient enabling disclosure and were filed within a few days of each other. Each corporation did a lot of development work during the priority year and filed a non-pro in the name of the corporation, disclosing multiple embodiments and naming several employees as inventors, in addition to “their” doctor inventor. Let us say that doctor A is an American working in Boston MA and that Dr B is a Brit working in Boston Lincolnshire England.
A filed her pro at the USPTO, of course. B filed his at the UK’s PTO, of course. Would that difference be decisive, as to whether J&J or Medtronic wins the priority contest under the AIA?
But if that isn’t spicy enough, let’s suppose that each doctor (perhaps as a precaution) filed their own non-pro at the USPTO, in their own name, with claims and specification identical to their original respective pro, 364 days after their respective priority date. Thus, they each filed non-pro on a date a few days later than their respective corporate investor.
At 18 months, all four A publications emerge, much to the consternation of all involved. Who wins the priority contest under US law, and (assuming their are four corresponding PCT WO publications) who wins in every other sovereign jurisdiction within the Paris Convention?
Assume the doctor inventor is not an employee but, rather, a self-employed consultant surgeon.
You might think all this is far-fetched but I assure you it isn’t.
Does not compute. What rights have A and B assigned to the respective companies during the priority year?
Are the companies filing their respective non-provisionals without having any rights to do so, and without the right to claim priority either? Or are A and B filing their own US non-provisionals (and claiming priority) despite having assigned the rights to do so to the companies?
you did not give enough facts.
You “hint” that provisionals were not filed on the same day (“were filed within a few days of each other. “), but do not say which provisional was first.
Also, you need to provide details as to any employment agreement and the terms under which inventions are to be handled.
Thanks both. Not enough facts? Well, what I’m trying to do is see if the answer under the AIA is different from under Paris. So choose your own circumstances.
So, under Paris, it goes one way if A and B have granted an exclusive licence, but the other way if, during the priority year, they assigned all rights to their corporate investor. Ned, I know what an assignee is but I’m not sure what a “privy” is. In England it used to be an outdoor lavatory. Is an exclusive licensee a privy?
Max, a privy is a successor/predecessor.
MaxDrei,
See the exchange with IPMan below: Paris throws things back to the individual sovereigns (through the Patent Law Treaty).
The choice of “your own circumstances” may run the gamut of outcomes, thus, your hypothetical cannot reach the end results that you want it to (other than, the answer as I have provided below – an answer that you seemed just unwilling to accept, for whatever reason: your “in the door” depends on the sovereign, and for the sovereign of the US, no inventor means not in the door).
IPMan DOES provide the scenario of an interesting outcome that a different sovereign may choose to do with an initial incomplete US starting basis, that of allowing the US non-inventor named defective first filing to serve as a sanctioned priority basis. An oddity no doubt, but I have always held that other sovereigns may choose to do with their patent laws what they will, so such an oddity does not bother me.
The Patent Law Treaty has nothing to do with Max’s scenarios. It just simplifies and harmonises certain formalities and introduces safety features when you are filing patent applications in multiple countries.
Nor does Paris throw things back to the individual sovereign nations. The fact is that the USA has agreed to implement Paris Article 4A(1), but section 119(a) fails to do so properly.
Paris 4A(1) says that the right of priority shall be enjoyed by the applicant who filed the first application in the foreign country, or his successor in title.
Section 119(a) (confirmed by Vogel v. Jones and Boston Scimed) instead makes this right personal to the subsequent US applicant, if the earlier foreign application was filed by him or his legal representatives or assigns.
That gives rise to problems when the US applicant is not the same person as the foreign applicant, and the foreign applicant was not his legal representative or assign.
In Max’s scenario, Medtronic is the successor in title to the UK inventor Dr B. Under Paris, they should enjoy B’s priority.
Under section 119(a), Dr B wasn’t the legal representative or assign of Medtronic when she filed the UK provisional. It’s the other way round – Medtronic is the (later) assign of Dr B.
So Medtronic don’t enjoy the priority, contrary to what’s required by Paris.
“The fact is that the USA has agreed to implement Paris Article 4A(1), but section 119(a) fails to do so properly.”
See below.
“The Patent Law Treaty has nothing to do with Max’s scenarios.”
Not so – ironic as well as you being the one to provide the link TO that treaty and all.
“That gives rise to problems when the US applicant is not the same person as the foreign applicant, and the foreign applicant was not his legal representative or assign.”
THAT problem inures for a different reason: see Stanford v. Roche. Other sovereigns have chosen differently as to how to treat patent rights and their necessary origins. Such is their right. But such does not – nor should not – change OUR sovereign’s choice on the matter.
Are you saying that the USA has a sovereign right to ignore the provisions of the Paris Convention?
Yes, of course it does. But the way to exercise that right is not to join in the first place.
The USA chose to join in 1887, and has benefited hugely from its membership ever since. The rest of the world has benefited too. We just wish you’d comply fully with what you agreed to, then everyone would benefit even more. Including US companies like Medtronic in Max’s hypothetical.
The US has a sovereign right to process treaties into actual US laws as it has set up its system to do.
Nothing more than that. Nothing less.
According to Boston Scimed, Medtronic, the purported assignee of the UK doctor, has no claim to priority to the earlier UK provisional filed by its doctor. The assumption here is that the doctor filed before assigning to Medtronic.
Now, according to the wording of 119 (e), the non-provisional must be filed “by an inventor or inventors named in the provisional.” So if J & J files the non-provisional as the applicant, apparently they have no right to claim priority to the provisional.
Both parties, Medtronic and J & J, seemed to have screwed up just a bit. They should have filed the U. S. non-provisional with their respective doctors as the applicant, and then received assignment of the filed application.
Ned,
See the link provided by IPMan – the screwup is the AIA.
Certainly not the only fault in what has to be regarded as the single worst piece of patent legislation ever.
The more fundamental screwups are in section 119 (a) and (e). The AIA has brought them to light but failed to correct them.
I cannot concur with your view here IPMan. Those sections of law were NOT “screwups” prior to the AIA and merely reflected a different state of US law (and consistently so).
The screw up IS with the AIA that introduced a LACK of consistency.
I’m pretty sure that the intention of Congress all those years ago was that Section 119(a) would implement Paris 4A(1).
Yet it produced a different result prior to the AIA (see Boston Scimed). And it still produces a different result in the same way after the AIA (see Max’s hypothetical).
The AIA changes mean that those different results will surface more frequently, because priority is now more important. But it’s not the AIA which causes them.
You are on firmer ground when you say that the problem under 119(e) results from the AIA. The AIA should have included a consequential amendment to 119(e).
“I’m pretty sure that the intention of Congress all those years ago was that Section 119(a) would implement Paris 4A(1).”
You would be very incorrect in that assumption.
So, Ned, IPMan, I wonder. The defective implementation by Congress of Paris 4A1 back in the 19th century. Was it deliberate, to set a trap for the unwary? Or was it unintended?
The fact that Boston Scimed, a US national champion, got caught by the trap suggests it was not intended.
But wait. Was it deliberately written as it was, somehow to reflect the primacy (even back then) notion of rights accruing to the “First Inventor to File”, the Congress wishfully thinking that its text was nevertheless compliant with the “inventor or their successor in title” language of Paris 4A1?
The issue is not going to go away. Priority contests between rival Applicants are set to be just as prominent a feature of the patent landscape under the AIA from now on as they ever-increasingly are in any of the other First to File jurisdictions around the world.
I’ve no reason to suppose it was deliberate.
By the way, Paris 4A(1) doesn’t refer to the inventor.
Thanks for pointing that out, IPMan. My bad. Inventor vs Applicant! Indeed! Only on this blog could I come to write such nonsense.
Don’t put limits on yourself MaxDrei, your nonsense has been noted on other blogs as well.
I agree with Ned as to the problems in Max’s hypothetical scenario.
Medtronic’s problem is the effect of the very long-standing drafting error in 119 (a) – it doesn’t correctly implement the USA’s obligations under the Paris Convention, and never has. Previously the courts have fudged it to make it work (Vogel v. Jones), with only partial success as shown by Boston Scimed. But under the AIA even that fudge falls apart.
J&J’s problem is the effect of the failure to make a consequential amendment in 119 (e) when the AIA was passed.
I also agree that the short-term solution is to file the US non-provisionals in the inventors’ names in the first instance. Of course, one of the intentions of the AIA was to avoid the need for that.
The only long-term solution is legislation to correct the errors in section 119 (a) and (e).
“ it doesn’t correctly implement the USA’s obligations under the Paris Convention, and never has”
Again, IPMan, I must take exception to your view.
In the US Sovereign, treaties are rarely self-enacting (and for good reason, related to our Separation of Powers).
Just because treaty says so, does NOT mean that US law says so. We require more.
The actual obligation ONLY inures upon completing BOTH the signing of the treaty AND the implementation into our law.
Perfectly true, but the answer would be not to sign treaties if you are not able to enact them into your own law.
However, in the case of section 119(a), I believe there’s nothing in the US Constitution, and nothing in Stanford v Roche, that would prevent Congress enacting the Paris Convention. It’s just that they made an error when they tried to do so.
“but the answer would be not to sign treaties if you are not able to enact them into your own law.”
Sounds great – except for the fact that such has never been the case for the US.
Ever.
(that’s not a position that you can really argue about [leastwise with me] – that is just as it has been)
Accepting that Congress has the constitutional power to enact the Paris Convention incorrectly, do you suppose it did so deliberately?
If so, why? What benefit does that bring to the USA?
If not, why is Congress incapable of correcting its error?
Remember that Max’s hypothetical shows that the error causes US companies lose out too.
No one has ever said that Congress is not capable of making changes (error or otherwise).
That’s yet another strawman that you have erected.
I agree entirely. You need to do more.
Don’t be pedantic just because I am correct here. That “we” was obviously the royal “We” as exemplified in other posts in our dialogue (for example, 6.4.2.1.1 immediately following the comment that you choose to be snide about).
You are taking what the US Sovereign has chosen to do a bit personally there, IPMan.
Max, who is supposed to win a priority contest under the AIA is the “first inventor to file.” A foreign parent application filing date should have the same priority benefit as a competing provisional filing date, but with both having the same 112 support requirement for respective final claims.
Whether that was fully accomplished by the present statutory language and Fed. Cir. decisions seems to be debated below, at least as to prior art date benefit. Prior art benefit before the AIA was always different from claim priority benefit, but was clearly intended by the AIA to be expanded to include foreign prior art including foreign priority parent application filing dates. And note IPMan’s questions and others here as to whether the priority claims are valid?
As you say, Paul. The message I’m getting from this thread is that the USA signed up to the Paris Convention during the 19th century but has still not enacted domestic legislation to implement Article 4 A (1) of the Convention.
Of course, the pre-AIA prior art 102(e) point, (whether that provision is Paris-compliant) is a separate issue. If I remember right, the AIA removed that issue at least.
As I recall, the answer to the pre-AIA Hilmer doctrine was that 102(e) was perfectly compliant, since it treated everybody equally. US inventors who filed in the USA first were treated exactly the same as foreign inventors who filed in the USA first. (Yeah, right.)
This is water under the bridge and not worth worrying about.
As to the articles question about inequitable conduct, which as the author notes involves intent, which is fact-specific, an applicant merely incorrectly claiming priority to a divisional which does not support all of the final claims would not normally have committed a “but for” offense because examiners are supposed to search for, and apply, intervening prior art dated between the provisional and formal filing dates.
However, if such prior art is found, and is material, and is cited by the examiner, the applicant then makes false assertions about adequate claim support, OR the applicant had know of such intervening prior art that has become material and did not disclose it, that may be a different matter.
As known to most patent practitioners,[i] a parent provisional does not lock in a priority date for a child non-provisional unless the parent provisional provides a written description and enablement of an invention that is claimed in the child non-provisional.
The opening sentence is plainly wrong unless I am missing something. A child application as a whole does not have a priority date entitling every claim in the child the effective priority of the parent if one claim in the child has priority. Each claim that seeks priority must itself be fully supported in the parent.
Is there anything in the AIA that changed the law on this?
However, for prior art purposes, it does appear that the new statute does make the entire contents of the provisional application available as prior art as of the date of its filing if there is a non-provisional filed that is entitled to claim priority to it regardless of whether such a priority claim was actually made. To entitle one to make a priority claim to a provisional, the non-provisional must be filed within the year, it must name an inventor in the provisional, and some disclosure that appears in the non-provisional must also appear in the provisional. It is linking common subject matter that gives one the right to claim priority.
Thus even if the provisional does not provide priority for the claims in the non-provisional due to lack of support, the entire contents of the provisional becomes prior art if there is common subject matter in both, and there is a common inventor. Thus of a prior art point of view, the filing of the provisional may be sufficient to invalidate later filed subject matter of others.
You still confuse yourself over this Ned – it’s been a few years since I last tried to teach you the “provisional as prior art” subtlety.
My bad, to be prior art, the application must be published or deemed published under 122.
Another potential problem with the AIA is that the priority benefit the claim is limited to the situation where the claim is fully supported in the provisional. However the prior art aspects of the AIA make the whole contents of the provisional available as prior art against the claim in the non-provisional regardless of any effective priority claim on the condition that the provisional name an inventor not named on the non-provisional.
In the world outside the USA, people file a provisional, with the company as Applicant, and no mention of any inventor. What does US law say about that, if done at the USPTO (as opposed to any other Patent Office anywhere else in the world).
In particular, is such a provisional, filed at the USPTO, any use to man or dog? Can it (for example) be relied upon by Applicant, as a priority-date setting event?
Or is it deemed under the patent law of the USA never to have happened?
Max, we are at a very sad situation post-AIA for any number of reasons. The original argument for going to first file was to harmonize was the rest of the world. But somehow, rather than adopting the systems of the rest the world, we created something brand-new that is inconsistent with the rest of world and sui generis. Whether the new system is better or not, it is completely different. But it was sold, like I said, to Congress as harmonization. Whether Congress would’ve passed it in the first place had they known the truth is highly questionable.
Regarding your question, the statute (119, 120 and 365) requires a common inventor for “claim” priority purposes, but nevertheless states, 102(a)(2), that if the inventor ship is different between the two that the earlier (upon publication or patenting) is prior art to the second. Now go figure that one out.
Crazy stuff. It’s a shame that there aren’t any exceptions to 35 usc 102(a)(2) in the statute.
Ned, Paris and the PCT see Convention priority as something that only the same inventorship entity can enjoy, or the “successor in title” of that entity. This vision focusses on ownership of the Invention rather than inventorship, and captures the standard situation, where the priority application is filed in the name of an employee inventor, and the follow-up non-pro PCT is filed in the name of the corporate employer.
Standard also is that the follow-up non-pro contains more disclosure (illustrated embodiments or worked Examples). So there could well be more people correctly named as Inventor in the follow-up than in the priority application. Thus, the question whether any given claim of the non-pro is entitled to priority date of the pro might be quite a challenge to resolve under the AIA.
And all the more challenging when you and I file our respective pro (unknown to each other) around the same date and then, one year later, we both file non-pro and then, 6 months later, we each get to see the other’s A publication of the non-pro as filed.
And you thought priority contests would be simpler under the AIA than under FtInvent. With harmonisation with the EPC scheme of patentability, it would have been, but under the AIA, I’m not so sure.
Max, irrespective of whether an application based on a foreign application is filed PCT with U.S. designation or U.S. directly, before you get any U.S. patent it must identify the inventors.
Ned: “Regarding your question, the statute (119, 120 and 365) requires a common inventor for “claim” priority purposes”
I think that’s true for priority from US provisionals under 119(e), but for foreign priority 119(a) requires a common applicant rather than a common inventor.
However, 119(a) still doesn’t comply with Article 4A(1) of the Paris Convention, which says that the right of priority is personal to the foreign applicant, if they later file a corresponding US application. Instead, 119(a) makes it personal to the US applicant, if they previously filed a corresponding foreign application. See our previous discussion in the comments at link to patentlyo.com for the resulting problem.
Interesting point there, IPMan. Do you see it as I do, that one can focus on inventorship of patentable matter (an “invention”) , or one can focus on ownership of that patentable matter. Paris concentrates on ownership. The inventor or the successor in “title” enjoys Convention priority, and nobody else.
Take the case of a hospital surgeon Dr A, who invents a cracking good new surgical instrument and files a pro in her own name. Within the next few months, J&J (or Medtronic, or Boston Sci) steps in, reaches a business agreement with A, and finances development of the instrument.
A PCT is filed, declaring the priority of the pro, including lots of nice drawings of multiple embodiments and naming two company employees B and C as well as Dr A as inventor.
The PCT is filed (of course) in the name of the company.
Question: Country by country, can the company benefit from the priority filing date of the pro?
Answer: it depends (of course), but on what?
Max, the first point (as you say) is that Paris Article 4A(1) doesn’t focus on inventorship. The right to claim priority stems entirely from the act of filing the priority application (the “first” application in Paris terminology). In the first instance it belongs to the individual or corporate entity which filed that first application, irrespective of whether they were the inventor.
That person can then assign the priority right. Typically she might do so in conjunction with an assignment of the first application itself, and perhaps of all rights in the invention, but it is a separate right so it’s good practice to mention it explicitly.
EPO case law says that this assignment of the priority right must be in place at the time the PCT application is filed. A retroactive assignment signed subsequently is not recognised.
For foreign priority, US s.119(a) complicates this, by giving the priority right to the person who filed the subsequent US application, rather than to the person who filed the initial foreign application.
Then the Boston Scimed case complicated it further. It said that “a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed“ (emphasis in original).
In your scenario, if Dr A filed the priority application in (say) Europe at a time prior to the agreement with the US applicant company, this condition wouldn’t be fulfilled. But might the situation be saved by another statement in Boston Scimed, requiring a nexus between the inventor and the foreign applicant at the time of filing the foreign application?
Boston Scimed was pre-AIA. At the time the US applicant was always the inventor, so these two conditions came to the same thing. Post-AIA, however, the US applicant may not be the inventor. Now the two conditions give different results. Which one governs? Especially if the European application was filed not by Dr A, but in the name of her hospital employer?
You may say that of course there was a nexus between the inventor Dr A and the hospital at the time of filing the European application. But take a look at s.119(a). It doesn’t mention the inventor. It gives the priority right to the US applicant company, if the hospital was acting as the legal representative or assign of that US applicant company when it filed the European application. But in your scenario it wasn’t.
Boston Scimed’s first condition quoted above is based on s.119(a) and means that the priority is not valid in the US. It seems that is true even if there was a nexus between Dr A and the hospital.
As far as I can see, the only safe way round this is to file the PCT application with Dr A named not only as as inventor, but also as an applicant for the USA. This negates the AIA simplification of filing applications directly in the name of the assignee.
Thanks for that, IPMan. It inspired me to re-work my hypo and post it at #6, to set up a priority contest between two US corporations and to try to tease out whether the AIA is compatible with membership of the Paris Convention.
But my post has attracted an “Awaiting Moderation” flag, so goodness knows when it will appear.
“What does US law say about that, if done at the USPTO”
One of the changes of the AIA was to allow a more liberal use of the juristic person of the corporation.
That being said, here in the States, our sovereign maintains the primacy of the actual inventor (Stanford v Roche still is controlling law).
You want to file something with no hint of inventor? Won’t get in the door.
If anything, the voices of the juristic person have been artificially amplified in our system by the likes of Citizens United and need to be re-calibrated so as to lessen the out-sized impact of well-moneyed established entities via the voice of their dollar contributions.
Not sure what you mean, anon, by getting a foot in “the door”. Suppose I file a pro at the USPTO but leave blank the name of the inventor. Will the USPTO nevertheless take my money and notify me of a filing date and serial number?
Or in the alternative, will the man at the USPTO “door” simply refuse to accept my money and service of my documents?
You will be asked to complete the application as filed.
If you do not, then YES – you will not be let in the door.
But I’m already in the door if I am the owner of an “application as filed”.
And anyway, I had thought that, at the USPTO, nobody examines the substantive content of a pro.
No. You are not in the door by the mere filing.
Substantive content of the pro is NOR examined. But the processing, vis a vis paperwork, including the identification of the inventor IS processed. Here in the States, the intake process is not done by the examination group, but is done nonetheless.
You seem to be trying really really hard to NOT understand something that is really really simple.
I think Max is assuming that when priority from a US provisional is claimed in a US non-provisional, it works the same way as required under the Paris Convention. Paris Article 4A(3) says that you are entitled to priority whatever may be the subsequent fate of the initial priority application.
However, it does also say that the initial provisional has to be “adequate to establish the date on which the application was filed in the country concerned”. So even under Paris, there could be a problem if the failure to name the inventor results in no filing date being accorded.
Is that actually what happens? The article at link to tinyurl.com suggests that it is in fact possible to file a provisional without naming the inventor (but points out a different problem which might potentially arise).
Anyway, the USA has no obligation to follow Paris in the case of domestic priority from a US provisional to a US non-provisional. Though treating domestic priority and foreign priority differently is not very sensible. Note that the USA does (usually) allow priority from foreign applications that don’t name the inventors.
To answer my own question: “… there could be a problem if the failure to name the inventor results in no filing date being accorded. Is that actually what happens? “
Rule 1.51(c) prescribes the contents of a provisional application, including a cover sheet, a specification, drawings when necessary, and the prescribed fees.
The cover sheet has to identify (amongst other things) the name or names of the inventor or inventors.
But Rule 1.53(c) provides that the filing date of a provisional application is the date on which a specification and any drawing are filed. So you can get a filing date without a cover sheet naming the inventor, and without paying the fees. (This is to meet the minimum requirements for a filing date under the Patent Law Treaty.)
So you can get your “foot in the door” without naming the inventors.
However, of course, the cover sheet and the fees have to be filed subsequently, with a surcharge, in order to avoid abandonment. Under Rule 1.53(g)(1), the USPTO should set a time limit for this. I assume they send a Notice to File Missing Parts.
It seems to me that if you still don’t name the inventors at this stage, your provisional application is liable to be deemed abandoned and you wouldn’t be able to claim its priority in a subsequent US non-provisional.
However, you do have a filing date. Since the Paris Convention says that’s all you need, whatever the subsequent fate of your US provisional, I would have thought that’s enough to claim priority in another country.
(There might be a practical problem if you don’t pay the filing fee either. The USPTO may dispose of your application under Rule 1.53(g)(4), so you may have difficulty getting a priority certificate to support a subsequent foreign application.)
IPMan,
That was a great link – many thanks!
Article I of the Patent Law Treaty includes (emphasis added):
(viii) “applicant” means the person whom the records of the Office show, pursuant to the applicable law, as the person who is applying for the patent, or as another person who is filing or prosecuting the application;
Also (emphasis added):
Article 5 (4)(b) A Contracting Party may provide that, where one or more of the requirements referred to in subparagraph (a) are not complied with within the time limit prescribed in the Regulations, the application shall be deemed not to have been filed. Where the application is deemed not to have been filed, the Office shall notify the applicant accordingly, indicating the reasons therefor.