Transcript DANGER AND USE OF PROVISIONAL APPLICATIONS

AIPLA ADVANCED PATENT PROSECUTION SEMINAR
DANGER AND USE OF
PROVISIONAL APPLICATIONS
Maria Eliseeva
HOUSTON ELISEEVA LLP
Boston, MA
June 9, 2005, San Francisco
June 16, 2005, Chicago
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PROVISIONAL AS A PRIORITY
FILING

Since June 8, 1995, the option of filing
a provisional application for patent has
become available. Provisional practice
was designed to provide a lower-cost
first filing in the United States. It gives
U.S. applicants parity with foreign
applicants under the GATT Uruguay
Round Agreements.
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PROVISIONAL AS A PRIORITY
FILING


What parity with non-U.S. applicants
was missing?
35 U.S.C. §154(a)(2) says the following:
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PROVISIONAL AS A PRIORITY
FILING
TERM.—Subject to the payment of fees under
this title, such grant shall be for a term
Domestic
beginning on the date on which the patent
continuing
issues and ending 20 years from the date on
cases
which the application for the patent was filed
in the United States or, if the application
contains a specific reference to an earlier filed
application or applications under section 120,
Earlier
filed PCT
121, or 365(c) of this title, from the date on
application
designating which the earliest such application was filed.

the U.S.
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PROVISIONAL AS A PRIORITY
FILING
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Filing a foreign, non-U.S. application as a
priority filing does not start the patent term.
Filing a U.S. provisional patent application as
a priority filing does not start the patent term
either.
A later filed non-provisional domestic or PCT
application claiming the benefit an earlier
filing date of the provisional starts the patent
term.
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PROVISIONAL AS A PRIORITY
FILING - A LATER FILED NONPROVISIONAL

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A provisional application is a U. S. national
application for patent filed in the USPTO under
35 U.S.C. §111(b).
It allows receiving a filing date without a formal
patent claim, inventor’s oath or declaration.
No information disclosure statement is required.
It provides the means to establish an earlier
effective filing date in a later filed nonprovisional patent application filed under 35
U.S.C. §111(a).
The invention disclosed in the provisional can be
marked as "Patent Pending“.
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PROVISIONAL AS A PRIORITY
FILING – §112 Compliance


The later-filed nonprovisional application claiming the
benefit of the provisional application must include at
least one claim particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as the invention. §112, 2nd paragraph.
Although a claim is not required in a provisional
application, the written description and any
drawing(s) of the provisional application must
adequately support the subject matter claimed in the
later filed nonprovisional application in order to
benefit from the provisional application filing date.
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PROVISIONAL AS A PRIORITY
FILING - PECULIARITIES
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Provisional applications are not examined on
their merits.
The benefits of the provisional application
cannot be claimed if the one-year deadline for
filing a non-provisional application has
expired.
Provisional applications cannot claim the
benefit of a previously-filed application, either
foreign or domestic.
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PROVISIONAL AS A PRIORITY
FILING- PECULIARITIES

The disclosure of the invention in the
provisional application should be as
complete as possible. To obtain the
benefit of the filing date of a provisional
application, the claimed subject matter
in the later filed non-provisional
application must have support in the
provisional application.
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PROVISIONAL AS A PRIORITY
FILING - DANGER

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Danger of false sense of security from
the Provisional Application's one-year
duration.
Best practice is to commence work on a
utility application soon after filing the
Provisional Application.
This minimizes the amount of lost filing
date if the provisional is wanting.
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PROVISIONAL AS A PRIORITY
FILING - DANGER
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New Railhead Mfg. LLC v. Vermeer Mfg.
Co. et al., 298 F.3d 1290; 63 U.S.P.Q.2d
1843 (Fed. Cir. 2002)
Patent invalidated because provisional
application lacked written description
Federal Circuit requires strict compliance
with 35 USC section 112
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PROVISIONAL STRATEGIES

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One approach is a provisional that is
intended to be 112-compliant.
Another approach is the “shovel”
provisional.
A third approach is the “lab notebook”
provisional.
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PROVISIONAL STRATEGIES –
112-compliant provisional



This kind of provisional must satisfy best
mode, enablement, and written
description.
Best practice is to draft claims even if
they will not be listed as “claims.”
Such text can be inserted into the
specification.
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PROVISIONAL STRATEGIES –
“shovel” provisional

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The problem is an imminent disclosure –
for example, a publication or a lecture
There is no time to prepare a 112compliant patent application
The imminent disclosure is simply
“shoveled” into an envelope and sent to
the USPTO with a provisional cover sheet
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PROVISIONAL STRATEGIES –
“lab notebook” provisional

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Client is about to meet with another
entity, perhaps pursuant to a nondisclosure agreement
Client can file a provisional containing
everything that is intended to be
disclosed
Certified copy will be better than a dated
lab notebook
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Benefits of Filing Provisional
Applications


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Cheapest means of securing global
priority for Paris Convention purposes
Effectively extends patent term by one
year
Not subject to information disclosure
statement requirements
Automatically defers replies to official
office actions on the merits
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Benefits of Filing Provisional
Applications


Streamlined filing (claims not required)
Few formalities (cover sheet)
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Benefits of Filing Provisional
Applications



enables immediate commercial
promotion of the invention with greater
security against having the invention
stolen;
preserves application in confidence
without publication in accordance with
35 U.S.C. 122(b);
permits applicant to obtain USPTO
certified copies (could be very
important in joint R&D or collaboration
situations);
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Benefits of Filing Provisional
Applications

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allows for the filing of multiple provisional
applications and for consolidating them in a
single domestic non-provisional or PCT
application (rolling provisionals);
provides for submission of additional inventor
names by petition if omission occurred
without deceptive intent (deletions are also
possible by petition);
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Benefits of Filing Provisional
Applications - Removal of Copendency
Requirement


Permits intentional abandonment of
provisional application leaving no rights
outstanding;
Would permit second provisional
application to serve as basis for Paris
Convention priority claim (Art. 4(C)(4)).
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Paris Convention: Article 4(A)
A.—(1) Any person who has duly filed an application for a patent, or for the
registration of a utility model, or of an industrial design, or of a trademark, in one of
the countries of the Union, or his successor in title, shall enjoy, for the purpose of
filing in the other countries, a right of priority during the periods hereinafter fixed.
(establishes the right to priority)
(2) Any filing that is equivalent to a regular national filing under the domestic
legislation of any country of the Union or under bilateral or multilateral treaties
concluded between countries of the Union shall be recognized as giving rise to
the right of priority.
(a regular national filing starts the clock, that filing gives rise to right of
priority)
(3) By a regular national filing is meant any filing that is adequate to establish
the date on which the application was filed in the country concerned, whatever
may be the subsequent fate of the application.
(right to be claimed priority from attaches to the filing regardless of what 21
happens to that filing later in time. Right to priority survives the filing itself)
Paris Convention: Article 4(C)
(4) A subsequent application concerning the same subject as a previous first
application within the meaning of paragraph (2), above, filed in the same country
of the Union shall be considered as the first application, of which the filing date
shall be the starting point of the period of priority,
-1- if, at the time of filing the subsequent application, the said previous
application has been withdrawn, abandoned, or refused, without having been laid
open to public inspection and without leaving any rights outstanding, and
-2- if it has not yet served as a basis for claiming a right of priority.
-3- The previous application may not thereafter serve as a basis for claiming a
right of priority.
this section says that IF an applicant wishes to consider his subsequent
application to be the first for the convention period counting purpose, he
can have the opportunity to do so, if -1-, -2-, -3- are met. But nothing in this
section makes it MANDATORY for the application to claim priority from
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the subsequent application. He MAY claim priority from a later case, but he
DOESN’T HAVE TO.
Reading 4(A) and 4(C) together:
 4(A) defines the right of priority. Where: in the filing giving rise to the
claim of priority
 4(A)(3) clarifies that any national filing sufficient to assign a filing date to
an application is good enough, that the subsequent fate of the application
does not disqualify that application from being a regular national filing and
serving as a basis for a later priority claim.
 In 4(A)(3) "the subsequent fate" clause pertains to the definition of what
a regular national filing is for the convention priority purposes, which is
separate from the inquiry of whether that first good enough national filing
must always serve as the basis for claiming priority at some later time.
Section 4(C)(4) defines the circumstances under which the convention
priority year can be counted from a later filed application, if the applicant
chooses to do so. If the applicant meets conditions 1,2,3 of 4(c)(A) before
filing the subsequent case, he is not obligated to claim priority from that 23
subsequent case, he merely has an option to do so if he wishes.
Reading 4(A) and 4(C) together:
So there are arguably two readings of section 4(C)(4) regarding what happens
to the first application after it is abandoned per 4(C)(4):
1. Once abandoned with no rights outstanding before the subsequent
application is filed – it can never serve as a basis for a priority claim, so
only the subsequently filed case can serve as a priority application.
2. Once abandoned with no rights outstanding before the subsequent case is
filed – an applicant has an option to use the 2nd case as the first
convention application and count the 1-year period from that 2nd case. If
the application chooses this option, then the 1st case can not be used for
priority purposes. BUT the first application can still serve as a basis for
priority, regardless abandonment, because if the applicant chooses not to
use the 2nd case as the priority document, then the status of the 1st case
under 4(A) remains intact and it is mandatory to use it as a basis for a
priority claim.
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WHERE DOES THIS COME FROM? IS THERE ANY SUPPORT FOR #2?
Lisbon Revision of the Paris Convention
1958, Minutes Of The Plenary Meeting
Report of the Second Commission, pp 523-524
With regard to Art. 4(C)(4):
“ At the time the second application is filed, the first application:
-shall have been withdrawn, abandoned or denied;
-shall not have been submitted to public inspection;
-shall allow no subsisting rights;
-shall not have served as the basis for a right of priority;
It is essential that the first application can no longer be
invoked to serve as the basis for a right of priority if the
second application is invoked for the same purpose. “
Clearly, if the second application is not invoked, then
the first application can and must remain the basis for
a priority claim.
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SO WHAT???
• If the interpretation provided here is correct, what is the practical
consequence? I never abandoned a case in my entire professional
life….Why would I suddenly think about it and how do I explain it to
my clients?
• The practical consequence is, arguably, the following:
If you file a 1st US provisional P1 and abandon it within the
meaning of 4(C)(4) before filing 2nd US provisional P2, you
can still use P1 as a basis for a priority claim at the end of
P1-defined year, or you can claim priority from P2 at the end of the P1
defined year (it becomes “the first application” under 4(C)(4), or you can
claim priority from P2 at the end of P2-defined year.
You don’t lose any priority date, and you can pick later dates, if you
want. (the discussion relates to the same subject matter disclosed in P1
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and P2)
P1 – US provisional
T1
Foreign
T1 + 1
year
P1 expressly abandoned after filing. One year later a foreign case is
ready to be filed. Is there a valid priority claim based on P1?
Yes.
Under Art. 4(A)(3) a provisional filing is a good enough national
filing to start the clock.
Abandonment of P1 did not disqualify it from being a good national
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filing under 4(A)(3).
P1 – US provisional P2 – US provisional
T1
T2
Foreign
T1 + 1
year
P1 expressly abandoned after filing. P2 filed after abandonment. At
T1 + 1 year a foreign case is ready to be filed. Is there a valid
priority claim based on P1?
YES.
If the applicant wishes to use P1, nothing in the Paris Convention
prevents him from doing so. P1 continues to be “the first
application”. P2 can be used as “the first application” as well. If P2
is used as the “first application”, then conditions of 4(C)(4) must be
satisfied, including NOT using P1 as a basis for priority.
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P1 – US provisional P2 – US provisional
T1
T2
Foreign
T1 + 1
year
P1 filed at T1. P2 filed after P1 at T2. At T1 + 1 year a foreign case is ready to be
filed. Is there a valid priority claim based solely on P2 for the subject matter
common to P1 and P2?
Under the Paris Convention - No. (don’t forget multiple priority claims)
A valid priority claim should be made from the first application P1. P2 is not the
first application and can not alone support a valid priority claim. (with regard to
the same invention disclosed in P1 and P2).
Can a foreign application claim priority from P2 at T2+1 year? No, because P2
can not be considered “the first application” under 4(C)(4) and no valid priority
claim can be made either to P1 or to P2 at T2+1 year.
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P1 – US provisional P2 – German application
T1
T2
P3- Paris
Convention filing
T1 + 1 year
P1 expressly abandoned after filing. A German application filed after
abandonment. At T1 + 1 year a PCT is ready to be filed. Is there a valid priority
claim based on P1?
Yes. (Same as Slide 9)
!! Keep in mind that if P3 is a PCT, then PCT Art. 8(b)(2) is important for
determining national priority rights (if there is a US priority document – US
provisional - then US law (35 USC 365) governs priority rights in the US, if there is
a German priority document – P2 - German law governs priority rights in
Germany etc.)
If P3 claims priority from P2, can priority be claimed from P1 as well?
I think Yes. Section 4(C)(4) refers to a subsequent application in the same country
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of the Union and is not applicable to this scenario.
Domestic priority claims under
119(e)
35 U.S.C. § 119 (e)(1) provides in part:
An application for patent
filed under section 111(a) or section 363 of this title
for an invention disclosed in the manner provided by the first paragraph of
section 112 of this title in a provisional application filed under ..111(b)…
by an inventor or inventors named in the provisional application,
shall have the same effect, as to such invention, as though filed on the date
of the provisional application filed under section111(b) of this title,
if the application for patent filed under section 111(a) or section 363…
is filed not later than 12 months after the date on which the provisional
application was filed and if it contains or is amended to contain a specific
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reference to the provisional application. . .
P1 – US provisional
T1
P2 - 111(a)
T1 + 1
year
P1 expressly abandoned after filing. One year later a US non-provisional 111(a) is ready to
be filed. Is there a valid priority claim based on P1?
I think Yes.
Under 35 USC 119(e), a 111(a) application is entitled to the benefit of a filing date of P1 if
111(a) is filed within a year of P2. No copendency is required, as long as the provisional
application filing fee was duly paid. All the statutory requirements of 35 U.S.C. 119(e) are
satisfied. Paris Convention is irrelevant for the domestic scenario.
Why would anyone do that?
For example, if the case is to be foreign filed, as discussed in the previous slides. If foreign
filing is contemplated, then serial abandonment, arguably, gives an applicant an
opportunity to select which subsequent provisional application will be “the first
application” for counting the 1-year convention period.
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P1 – US provisionalP2 – US provisional
T1
T2
111(a)
T1 + 1 year
111(a)
T2 + 1 year
P1 expressly abandoned after filing. P2 filed after abandonment. At T1 + 1 year a US nonprovisional 111(a) is ready to be filed. Is there a valid priority claim based on P1? I think
Yes.
119(e) is the relevant section for this scenario.
119(e)(1) requires a 111(a) filing within 12 month of P1. 119 doesn’t care about
copendency, so the fact that P1 was abandoned doesn’t matter. If the fee for P1 was paid,
then at T1+ 1 a 111(a) application can claim priority from P1. Moreover, nothing in 119
requires the applicant to claim priority from *the first* application.
If priority is claimed under 35 USC 120, the copendency is required and priority can be
claimed only from T2. Note that claiming priority under 35 USC 120 makes the patent
term run from T2, not the date of 111(a) filing, according to 35 USC 154(2).So this is quite
senseless.
At T2+1 year a 111(a) can claim priority from P2 regardless what had happened to P1,
since there is no domestic requirement about “the first application” even if P1 was not
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abandoned.
P1 – US provisional P2 – US provisional
T1
T2
T1 + 1
year
PCT
T2+1 year
P1 never abandoned, but convention year T1+1 is missed. Can a PCT be filed
at T2+1, claiming priority from T2?
No. (for non US designations)
Art. 4(A)(3) says that a national filing P1 starts the clock at T1. At the time T2 of
subsequent filing P2, P1 has not been abandoned within the meaning of Art. (C)(4), and
the clock has not been restarted. P1 remains the first application for the convention
priority purposes. Art. 4(C)(2) says that the convention period runs from *the first
application*, so if priority can be claimed at all, it should be claimed from P1. Even after
T1+1 is missed, P2 doesn’t become the application on which a priority claim can be based.
What about 111(a) at T2+1? It is not under Paris, and there is no requirement to claim
priority from P1. At T2+1 P1 is dead, and P2 is still within 12 months, so it seems that
111(a) filed a T2+1 can claim priority from P2.
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Rule 37 CFR 1.138 , MPEP 711
• When you send in the express
abandonment papers, a PTO official has
to act on them for the abandonment to be
effective.
• Express abandonment will become
effective as of the filing date of the
abandonment papers.
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We will always have Paris!
Thank you for your attention.
To get a copy of the slides, please
e-mail at [email protected]
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