Guest Post by Eric Sutton: Do You Know What your Provisional Application Did Last Summer?

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:

image001

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.

Sutton 2As 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.

Sutton 3As 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.”).

106 thoughts on “Guest Post by Eric Sutton: Do You Know What your Provisional Application Did Last Summer?

  1. 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.

    1. 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.”

  2. 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.

    1. 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.

      1. 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.

        1. Apparently, IPMan, YOU may know – but if you read what MaxDrei posted, HE does not.

          1. 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.”

            1. 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).

  3. 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.

    1. 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?

    2. 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.

    3. 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?

      1. Max, a privy is a successor/predecessor.

      2. 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.

        1. 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.

          1. 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.

            1. 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.

              1. 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.

    4. 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.

      1. 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.

        1. The more fundamental screwups are in section 119 (a) and (e). The AIA has brought them to light but failed to correct them.

          1. 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.

            1. 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).

              1. 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.

              2. 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.

                1. Thanks for pointing that out, IPMan. My bad. Inventor vs Applicant! Indeed! Only on this blog could I come to write such nonsense.

      2. 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).

        1. 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.

          1. The actual obligation ONLY inures upon completing BOTH the signing of the treaty AND the implementation into our law.

          2. 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.

            1. 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)

              1. 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.

                1. 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.

            1. 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.

    5. 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?

      1. 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.

  4. 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.

  5. 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?

    1. 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.

      1. 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.

      2. My bad, to be prior art, the application must be published or deemed published under 122.

    2. 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.

      1. 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?

        1. 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.

          1. Crazy stuff. It’s a shame that there aren’t any exceptions to 35 usc 102(a)(2) in the statute.

          2. 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.

            1. 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.

          3. 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.

            1. 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?

              1. 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.

                1. 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.

        2. 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.

          1. 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?

            1. You will be asked to complete the application as filed.

              If you do not, then YES – you will not be let in the door.

              1. 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.

                1. 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.

                2. 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.

                3. 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.)

                4. 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;

                5. 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.

                6. also…

                  Article 6 (8) [Non-Compliance with Requirements]

                  (a) Where one or more of the requirements applied by the Contracting Party under paragraphs (1) to (6) are not complied with within the time limit prescribed in the Regulations, the Contracting Party may, subject to subparagraph (b) and Articles 5 and 10, apply such sanction as is provided for in its law.

                  (b) Where any requirement applied by the Contracting Party under paragraph (1), (5) or (6) in respect of a priority claim is not complied with within the time limit prescribed in the Regulations, the priority claim may, subject to Article 13, be deemed non-existent. Subject to Article 5(7)(b), no other sanctions may be applied.

                7. @anon

                  Article 5(1) and 5(2) PLT set out the minimum requirements for a filing date. If an application meets these minimum requirements, Contracting Parties (e.g. the United States) must give it a filing date.

                  Article 5 (4)(b) says that the application may be “deemed not to have been filed” if those minimum requirements for a filing date haven’t been met.

                  But take a look at those minimum filing requirements in 5(1) and 5(2). Significantly, failure to name the inventors is not one of them. Even if the inventors are not named, the application is deemed to be filed, and gets a filing date.

                  Under the Paris Convention, Article 4A(3), that’s good enough for priority in another country, whatever the subsequent fate of the US provisional. The applicant gets a foot in the door.

                  After a filing date is accorded, Article 6 sets out what other requirements can be made in addition – basically anything that could be required under the PCT. So yes, naming the inventors can be required subsequently.

                  And if that’s not forthcoming withing a prescribed time limit, a Contracting Party can apply the appropriate sanction in its own law. That can include abandonment of the application. But deeming the application not to have been filed in the first place, or removing the filing date, are not permissible sanctions because they would violate Article 5. The applicant retains his foot in the door for Paris priority purposes.

                  The USPTO rules I cited do exactly that. The application may subsequently go abandoned if the applicant still fails to name the inventors in response to a subsequent notification. But the application has been filed and retains its filing date. The applicant has got his foot in the door.

                  You also quote Article 6(8)(b), relating to a priority claim made in the application under consideration to some other, earlier application. That doesn’t apply to a US provisional, since a US provisional cannot make a priority claim to an earlier application. It would however apply to a US non-provisional which claimed a foreign priority.

                8. IPMan,

                  I am not sure that you are reading the “deemed non-existent” terminology correctly.

                  That does not mean “was there and is now abandoned.”
                  That means never was there.

                  The reliance on Article 5 needs to be read in light of the other articles – NOT as some overriding portion that the other articles “then violate.” That’s why I also posted the Article 1 portion.

                  The bottom line here is that the “in the door” is – and remains a highly sovereign-centric question.

                  As it should.

                9. Anon, “deemed non-existent” is in Article 6(8)(b) of the PLT. That’s not about whether the application under consideration is deemed to have been filed and has a filing date.

                  But if the application under consideration itself contains a priority claim to an earlier application, you have to fulfil certain formalities. Like giving the country, date and number of the earlier priority application, and filing a copy of it, and a translation if necessary.

                  Article 6(8)(b) says that if you fail to provide such things, then the possible sanction may be that the priority claim is deemed non-existent. The application under consideration then proceeds as normal, but without the benefit of any priority.

                  This is of course irrelevant when the application under consideration is a US provisional. You can’t make a priority claim in a US provisional. So there is no priority claim which could be deemed non-existent.

                  Article 1 defines the “applicant”. You’ve highlighted that the applicant is the person shown in the records of the Office pursuant to the applicable sovereign law.

                  May I draw your attention to the applicable sovereign law, namely the AIA. This says that the applicant need not be the same person as the inventor.

                  Article 5 gives a complete list of the possible requirements in order to obtain a filing date. One is “indications allowing the identity of the applicant to be established”.

                  The identity of the inventor is not the same thing, and does not need to be established in order to obtain a filing date.

                10. I am well aware of the AIA change – you should look more into that, as even that still needs to “perfect” the chain back to the inventor.

                  Then reread the Article 5 part about “ the application shall be deemed not to have been filed” (it should be easy to find – I put it in “bold

                  The law is as it is – it is just not as you would perhaps like it to be.

                  My original post to MaxDrei stand as absolutely correct.

                  Also, your last paragraph ends up being a bit of a strawman as you mistake what I have posted (nowhere do I ever indicate that a US provisional will be trying to claim priority to anything).

                11. Anon: “I am well aware of the AIA change – you should look more into that, as even that still needs to “perfect” the chain back to the inventor.”

                  However, providing the inventor information isn’t one of the application filing requirements under USPTO rule 1.53(c). Consequently, failure to provide it doesn’t result in loss of the filing date and termination of the application under rule 1.53(e).

                  Instead, if not provided up front, the inventor information is required for completion of the application subsequent to filing, under rule 1.53(g)(1) or (2). The eventual sanction for failure under those rules is abandonment of the application, but they specifically say that you have got your filing date.

                  The subtle difference is that even without the inventor information, you get your foot in the door. You should still be able to use your filing date to claim priority abroad, even if your application subsequently goes abandoned in the USA.

                  [The inventor information is required in the cover sheet under rule 1.51(c)(1). Notice that while 1.53(c)(1) says that the cover sheet must be provided, at that stage there’s an alternative: “or a cover letter identifying the application as a provisional application.” This gets you your filing date, and the cover sheet can follow under rule 1.53(g).]

                  “Then reread the Article 5 part about “the application shall be deemed not to have been filed” (it should be easy to find – I put it in bold”

                  Sure. Article 5 gives the minimum filing requirements, corresponding to US rule 1.53(c). It doesn’t require information to identify the inventor, just the applicant. You’ve confirmed that under the AIA the applicant may not be the inventor.

                  Identifying the inventor comes later in section 6, which allows Contracting Parties to require the same information as under the PCT. That corresponds to US rule 1.53(g)).

                  “Also, your last paragraph ends up being a bit of a strawman as you mistake what I have posted (nowhere do I ever indicate that a US provisional will be trying to claim priority to anything).”

                  Sorry if I misunderstood, but you were referring to Article 6(8)(b), which relates to priority claims.

                12. Anon: “I am well aware of the AIA change – you should look more into that, as even that still needs to “perfect” the chain back to the inventor.”

                  However, providing the inventor information isn’t one of the application filing requirements under USPTO rule 1.53(c). Consequently, failure to provide it doesn’t result in loss of the filing date and termination of the application under rule 1.53(e).

                  Instead, if not provided up front, the inventor information is required for completion of the application subsequent to filing, under rule 1.53(g)(1) or (2). The eventual sanction for failure under those rules is abandonment of the application, but they specifically say that you have got your filing date.

                  The subtle difference is that even without the inventor information, you get your foot in the door. You should still be able to use your filing date to claim priority abroad, even if your application subsequently goes abandoned in the USA.

                  [The inventor information is required in the cover sheet under rule 1.51(c)(1). Notice that while 1.53(c)(1) says that the cover sheet must be provided, at that stage there’s an alternative: “or a cover letter identifying the application as a provisional application.” This gets you your filing date, and the cover sheet can follow under rule 1.53(g).]

                  Anon: “Then reread the Article 5 part about “the application shall be deemed not to have been filed” (it should be easy to find – I put it in bold”

                  Sure. Article 5 gives the minimum filing requirements, corresponding to US rule 1.53(c). It doesn’t require information to identify the inventor, just the applicant. Your application isn’t deemed not to have been filed if you fail to identify the inventor.

                  Identifying the inventor comes later in section 6, which allows Contracting Parties to require the same information as under the PCT. That corresponds to US rule 1.53(g)).

                  “Also, your last paragraph ends up being a bit of a strawman as you mistake what I have posted (nowhere do I ever indicate that a US provisional will be trying to claim priority to anything).”

                  Sorry if I misunderstood, but you were referring to Article 6(8)(b), which relates to priority claims.

  6. 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.

    Why would we want the patent office to spend any effort at all on this? With the current approach, priority is looked at when it matters, i.e, when there is intervening art but no art preceding the provisional filing? I’m not sure I see the value to anyone of challenging a priority claim that doesn’t matter.

    1. Isn’t an examiner doing a prior art search already supposed to ignore the provisional filing date and search for any art before the formal application filing date?

      1. Yes, of course. And if she can apply art with a date before the provisional, then there’s no need to worry about whether the provisional supports the claims. So, earlier art is preferred, all other things being equal. Again, the only time the priority claim matters is if intervening art is actually essential to a rejection.

        That’s my point – the article suggests that there might be some value in “objecting” to bogus priority claims, but doing so would have no effect on search/examination procedures, and I don’t see how it would benefit the public, either.

        1. All info has value. It is questionable however whether its cost effective for the office to be determining “actual priority dates” for each claim, particularly in a complex priority claim when there’s no intervening art before the Examiner.

  7. > About 26.7% of cases were missing 25% or more of the unique word stems.

    This is insane.

    Look – nonprovisionals don’t take six months to prepare and file. Two, maybe three days of dedicated work. If an invention is worth filing on at all, it’s worth filing a completely-drafted application.

    If you really want to file it provisionally (at the expense of additional costs and fees, and losing a year of patent term due to delayed examination), then at least draft the complete nonprovisional application and file it provisionally. The value of a sloppy provisional – delaying drafting costs by a brief period of time – is massively outweighed by the risk that after investing $$$$$ to secure a nice patent and assert it in litigation, the patent will get invalidated.

    Uniloc just learned this lesson. Apple had several of its patents invalidated on the basis of unsupported priority claims. If these massive companies, with decades of experience and marquis patent representation, can be harmed by these risks – then it can happen to anyone.

    Sloppy provisionals are worthless. Stop filing them, and counsel your clients to avoid them in all but the most extreme cases.

    1. David, what are your thoughts on what seems to be a Fed. Cir. confused topic of the defensive [prior art date] benefit of a provisional’s [earlier] filing date?
      Is it really necessary for the formal application publication or final patent to have at least one claim that is fully 112 supported by the provisional’s specification for the patent to have a prior art date as of the provisional filing date? That never made any sense to me.

      1. Thanks for the link, Paul.

        The general point – that a patent should be counted as prior art as of the date of a parent application, if the parent adequately supports the patent – seems fair to me for the following reasons.

        We’ve long dealt with (rare but not impossible) situations of “secret prior art,” where an examiner could reject an application based on an earlier co-pending application by another applicant… but can’t, because the co-pending application hasn’t published. The examiner has to delay until the application publishes, and then can cite it as prior art. It’s inefficient, but this is the cost we pay for at least some degree of confidentiality.

        This scenario is just another example of secret prior art. The only reason that the provisional isn’t being directly cited as prior art is because it never published. Yes, other forms of unpublished material – knowledge that was kept secret as a trade secret, or out of neglect – are disqualified as prior art to prevent gamesmanship and promote disclosure. But here, the applicant of a provisional intends it to be published retroactively when the patent issues, or at least when a parent pending application publishes.

        However, Dynamic Drinkware and some other cases put a weird spin on this principle. These cases require earlier written description support not for the portion of the patent that’s cited as prior art, as you’d expect… but for the claims of the patent.

        Imagine an asserted patent P, which teaches element X, being challenged on prior art grounds using patent R1, which also teaches element X. R1 was filed after P and wouldn’t count as prior art – but R1 claims priority to earlier-filed application R2, which also teaches element X.

        There shouldn’t be a problem here. But under this line of cases, the prior art could be dismissed if it’s found that the claims in R1 do not have written description support in R2. That principle appears to apply even if none of the claims in R1 includes element X – which is the whole reason either reference is being cited.

        Who cares about the claims in a prior art reference? Claims should only matter as to whether a patent can be enforced as a patent – not as to whether the patent counts as prior art. For the purpose of prior art, the teaching of the reference should be respected, irrespective of which parts are then claimed.

        I can’t get too worked up over this kind of issue, because it’s a peculiar situation that probably arises no more than once a decade. But it is an interesting scenario. Good for a law-review paper or a “gotcha” question on a patent law exam (paging Prof. Dennis Crouch…)

        1. My understanding is that this is a direct consequence of 35 USC 102(d), which states that for prior art considerations, a patent or application is considered to be effectively filed as of its actual filing date, or if it is entitled to claim a right of priority…based upon 1 or more prior filed applications, as of the filing date of the earliest such application. However, MPEP 211.05 points out that an application is NOT entitled to the benefit of the filing date of the earlier filed application unless the later-filed application is “an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a)…”

          So if an application is not entitled to claim the benefit of an earlier filed provisional because the claims are not supported by the earlier filed provisional, then the effective filing date defaults back to the actual filing date. Because provisional applications are not published unless an application claims priority to them, the effective publication date of the provisional application is also the actual filing date of the non-provisional.

          1. mike,

            FYI, the Dynamic Drinkware case being referenced was decided under the old law, so 102(e) and not 102(d). The court made clear that “[b]ecause we refer to the pre-AIA version of § 102, we do not interpret here the AIA’s impact on Wertheim in newly designated § 102(d).” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015)

            That doesn’t change the fact that you offered some generally solid analysis. However, you may want to look at Application of Lund, 376 F.2d 982 (CCPA 1967) with respect to your statement that “the effective publication date of the provisional application is also the actual filing date of the non-provisional”.

            In Lund, analyzing a similar situation, the court indicated that “we think the disclosure in Example 2 of the abandoned Margerison application becomes available as evidence of prior knowledge, if at all, only as of the issue date of the Margerison patent, as public access to the abandoned application is then provided” Lund, 376 F.2d at 991.

            JCD

            1. JCD – Thank you for the pre-AIA correction.

              As for the Lund analysis, it appears that case was also pre-forced publication. An abandoned patent application pre-2000 would not typically be published at all, unless a dependent application issued as a patent. By an analysis similar to the one concluding that the effective publication date of a provisional application would be the filing date of a dependent non-provisional application, so the publication date of an abandoned application (or pre-2000 provisional application) would be the issue date of a dependent non-provisional application.

              My point is that a published application is considered prior art as of its effective filing date not because that is when it is considered to be published, but because that is how the statute defines its prior art effect. An unpublished application, such as the provisional the published application depends on, is not covered by that statute, so is not considered prior art as of its effective filing date; it only becomes available to the public and available as prior art on the publication date of a dependent application.

              Example: non-provisional application A claims priority to provisional application B. When A publishes, A becomes prior art as of the filing date of B, if and only if it is entitled to the benefit of B. If no claims of A are supported by B, it becomes prior art only as of the actual filing date of A, rather than as of the filing date of B.

              In the meantime, B, as a non-published application, becomes prior art only when it becomes available to the public, which is the publication date of A, not the filing date of A or the filing date of B. It is NOT prior art as of its own filing date, because it was never published.

              Is that closer?

              1. Makes sense to me!

                FYI, with respect to the Lund analysis I referenced, the court was considering the prior art effect under old 102(a).

                I may be wrong on this, but I think you have a typo when you mention: “the effective publication date of a provisional application would be the filing date of a dependent non-provisional application”, and meant to indicate that “the effective publication date of a provisional application would be the PUBLICATION date of a dependent non-provisional application”.

          2. Mike, some bright dude might argue that the new statute allows subject matter disclosed in both a parent and child be entitled prior art status as of date of the filing of the parent after publication of the child on the basis of the a right to claim priority even if such a priority claim was not made and even if the subject matter that is common to both is not claimed. There might be some messiness if a named inventor in the child did not invent the subject matter of the parent.

            All the statute requires is that the child be “entitled” to claim priority.

            1. Great point Ned. That sounds not fun. I feel bad for any judge that has to address this issue.

        2. David, considering how many patents now claim provisional filing dates, and considering how often the most material prior art is the most recently filed applications of others, I do not see why you think this issue will arise so rarely?
          Also, re this and anther comment here, does it really make sense that whether or not a patent has a defensive prior art benefit as of its provisional filing date and provisional spec can be changed by changing a claim before issue, or afterwards in a reissue or reexamination, to have at least one claim 112 supported by the provisional spec?

          1. Yep. Also seems weird that the claims that are in a publication may matter.

          2. Further to how frequently the prior art date of a provisional being its filing date, or not, will be in dispute: A patent attorney just yesterday told me that an examiner has cited as prior art against him the filing date of a provisional cited in a published patent application, even though the attorney says he cannot access that cited provisional’s contents to check them because it is not linked.

        3. David, just a note: claims have priority, not patents.

      2. My brain gets a little warm just remembering the general contours of this topic.

        1. Likewise, which is why I raised this topic, which the subject blog article makes even more relevant by showing [in and interesting manner] how much variance there is between provisional contents and their formal application contents.

      3. Paul,

        To many patent practitioners, Dynamic Drinkware seems weird and unintuitive. One way to think about the decision is by asking:

        (1) What was the reference?; and
        (2) What priority date was the reference entitled to?

        With respect to (1), the reference being offered for a proposed rejection was an issued patent. The reference was not the provisional application that the patent claimed priority to.

        With respect to (2), the Board held that the petitioner had failed to establish that the patent is entitled to the benefit of the filing date of the provisional, and the CAFC affirmed.

        The court in Dynamic Drinkware was relying on In re Wertheim (646 F.2d 527 (CCPA 1981)) for the proposition that “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)).

        Viewed through this lens, the decision kind of makes sense on the grounds that the patent is the reference and so the petitioner had to establish that the patent is entitled to the priority date of the provisional or else it isn’t available as a reference.

        More generally, though, this obviously seems like a really strange result, where the question of whether disclosure from a provisional is available as prior art turns on the scope of the eventual CLAIMS of an issued patent.

        This entire line of cases can be traced back to Milburn Co. v. Davis etc. Co., 270 U.S. 390 (1926). It’s not entirely clear that these holdings are completely in accord with the Court’s original emphasis that “[t]he fundamental rule we repeat is that the patentee must be the first inventor.” Wertheim didn’t put a lot of emphasis on this statement, instead arguing that Milburn was decided on the basis that a filed patent application would have issued earlier “but-for” patent office delays, and thus should be available as prior art.

        There appears to have at times been argued a contrary theory focused on whether disclosure is carried over from an earlier application into a later application that issues. See, e.g., In re Klesper, 397 F.2d 882 (CCPA 1968); Application of Wertheim, 397 F.2d 882 (CCPA 1968). This theory probably makes more intuitive sense to many practitioners, but is not as directly supported in recent case law at the moment.

        On the other hand, the court in Dynamic Drinkware made clear that “[b]ecause we refer to the pre-AIA version of § 102, we do not interpret here the AIA’s impact on Wertheim in newly designated § 102(d).” Dynamic Drinkware, F.3d at 1382. That being said, to the extent that Milburn was based “[t]he fundamental rule … that the patentee must be the first inventor”, it’s relevance under the AIA could be questioned.

        JCD

        1. JCD, I absolutely agree with everything you said there especially the point that since the Milburn case was expressly based upon first-to-invent theories, that its relevance should strongly be questioned in a post-AIA environment.

          The new statute seems to make the entire contents of a provisional application prior art as of its date of filing when a non-provisional application that is entitled to claim priority to it is published. This seems to represent a significant change in the law where pre-AIA priority was based upon claimed subject matter and whether it was supported in a parent. In other words, the pre-AIA law required an effective claim to priority, not just an entitlement to claim priority.

          1. Ned,

            Thanks. Strangely, although the AIA definitely calls into question the relevance of Milburn, the change you noted could be argued to bring the law back into line with the spirit of Milburn, whereas the Wertheim/Dynamic Drinkware line could be argued to have diverged from it.

            In particular, Milburn could have been read as suggesting a preference that a patent application clearly disclosing an invention claimed in a patent application subsequently filed by another should be available as a reference to defeat the patentability of the claim in the later application, even if the earlier filed patent application wasn’t publicly available until after the later application was filed. (cf. secret prior art concerns)

            Of course, Milburn wasn’t read that broadly, but it is interesting that the new 102(d) does seem to be in accord with this broader reading.

            JCD

            1. JCD, not only is it very consistent with Milbert and the supposedly abrogated first-to-invent system, it is inconsistent with all first-to-file systems conducted in the rest of the world that do not recognize whole contents of a priority document for every “prior art” purpose, such as inventive step. The whole contents is recognized only for novelty-defeating purposes so that two different applications cannot claim the same subject matter. You don’t how many times that MaxDrei has brought this very point to our attention – with complaint.

              1. …and with the notion of not respecting what our sovereign has chosen to do.

              2. Max can blame Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965). In Hazeltine, the Court held “[w]e see no reason to read into § 103 a restricted definition of ‘prior art’ which would lower standards of patentability to such an extent that there might exist two patents where the Congress has plainly directed that there should be only one.” Hazeltine, 382 U.S. at 256.

                Notably, though, Hazeltine was based at least partially on Milburn, and indicated that “[t]he basic reasoning upon which the Court decided the Milburn case applies equally well here.” Hazeltine, 382 U.S. at 255-256.

                The petitioner in Hazeltine argued that “the term ‘prior art,’ as used in § 103, really means only art previously publicly known”, and supported this argument by “refer[ring] to a statement in the legislative history which indicates that prior art means ‘what was known before as described in section 102.'” Hazeltine, 382 U.S. at 254. The petitioner argued that “the use of the word ‘known’ indicates that Congress intended prior art to include only inventions or discoveries which were already publicly known at the time an invention was made.” Hazeltine, 382 U.S. at 254.

                The Court gave consideration to petitioner’s argument, but indicated that “[w]hile we think petitioners’ argument with regard to § 102 (e) is interesting, it provides no reason to depart from the plain holding and reasoning in the Milburn case.” Hazeltine, 382 U.S. at 255.

                The Court emphasized that “[w]hen Wallace filed his application, he had done what he could to add his disclosures to the prior art” (Hazeltine, 382 U.S. at 256), but obviously this is not necessarily true in the case of a provisional patent application or an application filed with a nonpublication request. The Court relied on Milburn, noting that “[h]ad the Patent Office acted faster, had it issued Wallace’s patent two months earlier, there would have been no question”, and cited Milburn’s statement that “‘[t]he delays of the patent office ought not to cut down the effect of what has been done.'” Hazeltine, 382 U.S. at 256 (citing Milburn Co. v. Davis etc. Co., 270 U.S. 390, 401 (1926)). This is not applicable in the context of a provisional patent application, but might be considered applicable in the context of an application filed with a nonpublication request.

                Is there an argument that Hazeltine should be revisited in these situations? This argument could potentially be reinforced by Congressional indications that the AIA is designed for harmonization with international law (although it may be at odds with other Congressional indications), but this would be a pretty sharp departure from understood convention, and it’s not clear that this argument would be very highly regarded.

                1. “The Court emphasized that “[w]hen Wallace filed his application, he had done what he could to add his disclosures to the prior art” (Hazeltine, 382 U.S. at 256), but obviously this is not necessarily true in the case of a provisional patent application. . . .”

                  JCD, I would say it’s “necessarily” not true because publication of a provisional depends on actions by the applicant, not the Patent Office (or its delays). Do you think Dynamic Drinkware is consistent with Hazeltine Research?

                2. JCD, Haseltine makes sense because the entire delay between the filing and issuing of the patent is caused by the patent office and its procedures making the disclosure effectively public knowledge type prior art as of the date of the filing. But when the application (or foreign priority document) is not publishable in the USPTO except by later actions of the applicant, the rationale of Haseltine no longer applies. This might be an opportunity to confine 103 type prior art to information that is actually in the public domain or to US patent applications whose publication is not delayed by any action of the applicant.

                3. This might be an opportunity to confine 103 type prior art to information that is actually in the public domain

                  That might be pertinent if the Person Having Ordinary Skill In The Art were a real person.

                  But PHOSITA is NOT a real person, and the “sense” of that person is what the “state of the art” is – which, under our sovereign’s choices, does include the so-called “secret prior art” situations.

                  THAT is what it is.

    2. One quibble: no loss of patent term, as the 20 year clock doesn’t start until nonprov filing.

      And one devil’s advocate point: sometimes the value of the provisional is to take a forthcoming publication off the table as prior art. Arguably the provisional is not enabling, but if not, then the carbon copy academic publication cannot render the claims obvious or anticipated. And vice versa. And post-AIA, this specific scenario still gets a grace period.

      I always prefer to avoid filing provisional applications that are not fully developed, but there can be value, much as I hate to admit it.

      1. Easwaran,

        Great point emphasizing that the clock doesn’t start on patent term.

        On your second point, I think in playing devil’s advocate you are right to point out that there can be fact patterns where a provisional might make sense, but I think your characterization goes a bit farther than you intended.

        Obviously, the enablement and obviousness standards are different (plus written description is a consideration as well), and while fact findings with respect to one may have some implications on the other, it seems clearly possible to have a fact pattern where a disclosure is insufficient to support a claim under 112 but is sufficient to render the claim obvious under 103 (arguably alone, but certainly in combination with other references). I’m sure you appreciate this yourself and were just meaning to emphasize the potential value in some fact patterns, but wanted to clarify for anyone else reading.

        JCD

        1. (To be clear – I still think it’s a great strategy to try when the situation arises and you have to deal with it, and well worth mentioning.)

      2. Re: “Arguably the provisional is not enabling, but if not, then the carbon copy academic publication cannot render the claims obvious or anticipated.” That is a common misunderstanding. The publication is a 103 reference as of its publication date for whatever it discloses unless it falls under a statutory grace period. It does not require enablement for 103 [versus 102] much less the full 112 enablement and invention description required for valid priority claiming. And it wipes out most foreign equivalent patents, which have no grace period.

    3. I certainly agree that provisionals shouldn’t be sloppily drafted. They have to fully support the non-provisional.

      But they don’t lose a year of patent term due to delayed examination. The year is added on to the end of the patent’s life. In some cases this may be extremely valuable. It also delays the expense of paying the issue fee and each maintenance fee. Though you have to balance these against the fact that the patent will issue a year later.

  8. The same kind of 112 priority-application failure* [creating fatal intervening-art] seems to have occurred in a patent sued on in 65 lawsuits in the October 23rd Federal Circuit decision [affirming an IPR decision] in Uniloc USA, Inc. et. al. v. Sega of America, Inc., et. al.
    *The only difference was it was an Australian parent application instead of a provisional parent application.

    There are of course, some good reasons for utilizing the up to one year time delay between the filing date of a provisional and the filing date of the formal application. The added patent term and/or the need to conduct experiments or testing to find alternative embodiments, define effective ranges, find prior art to distinguish, etc.

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