DANGER AND USE OF PROVISIONAL APPLICATIONS

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DANGER AND USE OF PROVISIONAL APPLICATIONS
AIPLA ADVANCED PATENT PROSECUTION SEMINAR

• 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 beginning
  on the date on which the patent issues and ending
  20 years from the date on 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, 121, or 365(c) of this title,
  from the date on which the earliest such
  application was filed.

Domestic continuing cases
Earlier filed PCT application designating the U.S.
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PROVISIONAL AS A PRIORITY FILING

• 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
NON-PROVISIONAL

• 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, inventors oath or
  declaration.
• No information disclosure statement is required.
• It provides the means to establish an earlier
  effective filing date in a later filed
  non-provisional 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

• 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

• 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

• 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

• 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

• The problem is an imminent disclosure for
  example, a publication or a lecture
• There is no time to prepare a 112-compliant
  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

• Client is about to meet with another entity,
  perhaps pursuant to a non-disclosure 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

• 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 RD or
  collaboration situations)

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Benefits of Filing Provisional Applications

• 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 happens to that filing later
in time. Right to priority survives the filing
itself)
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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 the subsequent application.
He MAY claim priority from a later case, but he
DOESNT HAVE TO.
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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 subsequent case, he merely has
  an option to do so if he wishes.

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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)
• 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.
• 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.
• WHERE DOES THIS COME FROM? IS THERE ANY SUPPORT
  FOR 2?

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Lisbon Revision of the Paris Convention1958,
Minutes Of The Plenary MeetingReport 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 dont lose any priority date, and you can
  pick later dates, if you
• want. (the discussion relates to the same subject
  matter disclosed in P1
• and P2)

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Foreign
P1 US provisional
T1 1 year
T1
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 filing under
4(A)(3).
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Foreign
P1 US provisional
P2 US provisional
T1 1 year
T2
T1
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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Foreign
P1 US provisional
P2 US provisional
T1 1 year
T2
T1
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. (dont
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 T21 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 T21 year.
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P3- Paris Convention filing
P1 US provisional
P2 German application
T1 1 year
T2
T1
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 of the Union and
is not applicable to this scenario.
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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 reference to the provisional
application. . .
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P2 - 111(a)
P1 US provisional
T1 1 year
T1
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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111(a)
111(a)
P1 US provisional
P2 US provisional
T1 1 year
T2
T2 1 year
T1
P1 expressly abandoned after filing. P2 filed
after abandonment. At T1 1 year a US
non-provisional 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 doesnt care about
copendency, so the fact that P1 was abandoned
doesnt 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 T21 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
abandoned.
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PCT
P1 US provisional
P2 US provisional
T1 1 year
T2
T1
T21 year
P1 never abandoned, but convention year T11 is
missed. Can a PCT be filed at T21, 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 T11 is missed, P2
doesnt become the application on which a
priority claim can be based. What about 111(a)
at T21? It is not under Paris, and there is no
requirement to claim priority from P1. At T21
P1 is dead, and P2 is still within 12 months, so
it seems that 111(a) filed a T21 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
  maria_at_patentbar.com