Friday, February 18, 2005

Advice as to provisional applications

Some individual inventors ask about the option of filing a provisional application. If that option is taken, the disclosure must support relevant claims.

from Intellectual Property Today, September 2002:

The case of NEW RAILHEAD MANUFACTURING, L.L.C. v. VERMEER MANUFACTURING COMPANY, 2002 U.S. App. LEXIS 15287 (CAFC), should serve as a wake-up call to those who sought to reduce costs of patent application by filing abbreviated provisional applications. To be effective as a priority document, the specification of the provisional must "contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms," 35 U.S.C. ยง 112 P 1, to enable an ordinarily skilled artisan to practice the invention CLAIMED in the non-provisional application. Unconventional provisionals, such as photocopies of journal articles or sales brochures, are unlikely to get the job done. Placing an article on sale, in the belief that such activity is protected by the filing of such a provisional, can lead to the inventor-created invalidation of the patent based on the later filed non-provisional. The NEW RAILHEAD case cited the Supreme Court FESTO decision (122 S. Ct. 1831, 1840 (2002)), and an underlying issue of both cases is how to deal with the inability of many inventive entities (including corporations, both large and small) to muster resources for drafting of patent applications sufficient to withstand later legal scrutiny. The problem is not so much a failure of language as it is an inability to allocate optimal funds to adequately describe inventions which later prove economically viable. Separately, the article "Festo Schmesto" [IPT, pp. 6-10, Aug. 2002] is one of at least three articles on Festo including the word Schmesto in the title, and one of many to indicate that we are still on uncertain terrain as to the doctrine of equivalents.


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