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Enjoying the Benefits of Provisional Patent Applications
January 8, 2016

By: Anthony S. Volpe (Originally Published in the January 6, 2016 Legal Intelligencer) – (John M. Bollinger, a staff attorney at Volpe and Koenig, and Meghan A. Mills, a law clerk at the firm, assisted with research for this article)

As part of the effort to harmonize global patent systems, the United States introduced the provisional patent application in 1995 as part of the GATT Uruguay Round agreement. The provisional patent application has many of the same features as the U.S. Patent and Trademark Office (USPTO) disclosure document program the USPTO discontinued in early 2007. Two specific advantages of the provisional application are the issuance of an application filing date by the USPTO and the ability to identify the invention as “patent pending.” In order to take advantage of this early filing date, a nonprovisional application claim priority to the provisional application must be filed within one year of the provisional filing date. If a nonprovisional application is not filed within the one year, the early ­provisional filing date is lost.

A provisional application typically has a format that is much less formal than a nonprovisional application and may, but is not required to, meet the formal claim requirements of a nonprovisional application. In addition, the inventor is not required to submit an oath or declaration. As might be suspected, the more informal nature of the provisional application can mislead the drafter into forgetting or leaving out critical details that may be needed to support the claims of a nonprovisional application. Since the inception of provisional applications in June 8, 1995, the patent statute, 35 U.S.C. Section 119(e), has required the provisional application to have support for any subsequent nonprovisional claims, or the nonsupported claims will not be entitled to the earlier filing date of the provisional application.

As a general matter, the patent law, 35 U.S.C. Section 112, requires every patent application to provide a sufficiently detailed written description that discloses the invention so that a person of skill in the relevant art is able to practice the invention and secure the benefits of the invention. To meet these requirements in provisional applications, applicants should emphasize important details over a specific form of disclosure. These requirements should not be understood to require a specific format or discourage the use of provisional applications. In cases where there is going to be an imminent disclosure, such as a paper at a seminar or a disclosure in a related technical publication, we have filed the possible disclosure document as a provisional application with a set of claims that broadly recite the invention. However, before following this course, it is important to confirm the inventorship of the invention disclosed in the document and be sure the disclosure sufficiently discloses the invention in enough detail to support the nonprovisional application claims. Even in rushed circumstances, it is important to keep in mind the ultimate goal of preserving the earliest possible filing date.

If the earlier filing date is lost, at least two major issues result for the subsequent nonprovisional application. One, the lost filing date of the provisional application means that nonprovisional claims will have a later filing date. Two, the later filing date of the nonprovisional application means that additional prior art that was not available against the earlier-filed provisional application will be available against the nonprovisional application. In crowded art fields or fast-moving technologies, the loss of even a couple of months’ priority can mean that an intervening application will have an earlier priority. This can cause two very commercially damaging results. One, the intervening prior art may prevent the issuance of commercially desirable patent claims. Two, the intervening inventor may be able to issue patent claims that cover the commercial product that the earlier applicant was not able to protect because of the ineffective provisional application.
An obvious danger of not filing a sufficient provisional application is the possibility that the applicant may not face the consequences of that deficient filing until years later. As the below representative cases exemplify, there are numerous ways that a provisional application can be held later to be deficient, and many resulting consequences for the enforceability of the issued patent claims. New Railhead Manufacturing v. Vermeer Manufacturing, 298 F.3d 1290 (Fed. Cir. 2002), held the provisional disclosure must show the inventor had invented each feature that is included as a claim limitation. The adequacy of the written description is measured from the face of the provisional application and the requirement is not satisfied if one of ordinary skill in the art must first make the patented invention before ascertaining the claimed features of that invention. “What is claimed by the patent application must be the same as what is disclosed in the specification,” as in Festo v. Shoketsu Kinzoku Kogyo Kabushiki, 535 U.S. 722 (2002). The description in the provisional application must meet this standard.

Star Scientific v. R.J. Reynolds Tobacco, 655 F.3d. 1364 (Fed. Cir. 2011), held the asserted claims deserved the priority date of the provisional application because the provisional application’s written description disclosed that the minimum air flow “may be about 28,000 CFM at 1” static pressure in a typical curing barn, but that the “minimum air may vary according to conditions and may be determined on a routine basis.” Because the provisional application teaches one of ordinary skill that a minimum air flow “may vary,” one of ordinary skill would know that the conditions in a curing barn could demand an air flow of 25,000 cubic feet per minute. The district court had relied on the specifically disclosed air flow rates and improperly narrowed the scope of the provisional application. Therefore, a process disclosing curing using an “air flow of approximately 25,000 CFM” was entitled to the provisional application priority date.

Trading Technologies International v. eSpeed, 595 F.3d 1340 (Fed. Cir. 2010), held that “disclosure of a species in this case provides sufficient written description support for a later filed claim directed to a very similar and understandable genus.” The provisional application in this case distinguished between order entries performed in a single action and multiple-step actions but did not distinguish a single click from other types of single actions. The court read the provisional application as encompassing any single action. The district court agreed with the jury by stating that a person of ordinary skill in the art when reading the provisional application, which explicitly called for “single click” user entry, would have known that the patentee had possession of a broader “single action of a user input device.” The U.S. Court of Appeals for the Federal Circuit held that the patent was entitled to the provisional application priority date.

Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336 (Fed. Cir. 2013), held that the provisional application provided formal textual support for each individual limitation recited in the claims, but it did not describe the actual functioning, thermostable alpha-amylase variants that those limitations define. The first claim of the issued patent recited an alpha-amylase variant that (1) has at least 90 percent sequence identity to BSG alpha-amylase, (2) includes an amino acid substitution at serine 239, and (3) has increased thermostability at pH 4.5, 90 degrees Celsius, and 5 ppm calcium. One of ordinary skill in the art reading the provisional patent application would have understood that Novozymes A/S had only predicted that at least some mutations at position 239 would yield variants with increased thermostability, but not that it possessed or had definitively identified any such mutations. In essence, the provisional patent application did not disclose which component would do a certain thing and without such a disclosure the claimed methods were not described.

There are some tips for preparing ­provisional applications with an eye to preventing undesirable consequences from a later effort to enforce the claims of an issued patent. First, make the provisional application as complete as possible so the later determination that the patent claims are unsupported becomes increasingly unlikely. Next, make every effort in an employment context to identify every employee inventor. While this is not a requirement for a provisional application, it is a practical requirement to confirm that the first effort at completeness was successful and to avoid being surprised by a previously unnamed inventor refusing to cooperate in the application process. Finally, get an assignment of the provisional ­application. This is important in part for the same reason as the second point. Employees are mobile and may not be available when the nonprovisional application is filed or the employee, for reasons that may never be known, may have decided to no longer cooperate with the application process.

In summary, it is best to treat provisional patent applications with the same attention to details that are applied to nonprovisional patent applications and avoid unpleasant surprises about the filing dates or claim support when attempting to enforce the issued patent.

Reprinted with permission from the January 6, 2016 edition of the Legal Intelligencer ©2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382 – reprints@alm.com or visit www.almreprints.com.