Filing claims with provisional patent applications?
In a post on 16 Sept 2005 titled Including Claims in Provisional Patent Applications?, Patently-O suggested including claims in provisionals was advisable because of the CAFC decision in Phillips v. AWH. The thinking here is that terms in a claim have to be defined, and one doesn't know what to define until the words in the claim are written.
There was a reference to Russ Krajec. The relevant post is titled Claims in Provisionals and the relevant text is:
Many people, myself included, draft claims before drafting the specification of a patent application. For me, this exercise allows me to completely define the invention in the claims, then draft the specification and figures to match. I make sure that every limitation included in the claims is discussed in the spec and shown on the drawings.
This serves two purposes. The first is that it creates a thorough and enabling disclosure. The second purpose is that it only includes enough information to support the claims. There is usually no need to disclose extra material, which would otherwise be a trade secret.
However, I never include claims when I file a provisional application. I do this because only bad things can happen: prosecution history estoppel Festo-style may come to haunt you. There is no upside.
IPBiz makes a query: can there be prosecution history estoppel based on something termed a "claim" in a provisional? As Bill Clinton might say, it depends on what you mean by the word "claim."
We all know that claims are not required in provisional patent applications.
35 USC 111 (b) [Provisional application] states in (2): CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.
So a claim is not required, but if one puts something called a "claim" in a provisional application, is it a claim for purposes of establishing estoppel? Very likely not.
35 USC 111 (b)(1)(a) is about "a specification as prescribed by the first paragraph of section 112 of this title."
37 CFR 1.75, which applies to nonprovisionals, states the specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
There is no statute or rule saying there must be a a claim in a provisional particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The specification required by 35 USC 111 (b)(1)(a) must support claims in the later-filed nonprovisional. If there is material in the specification broader in scope than later filed claims, or even irrelevant to later filed claims, who cares?
There is later assertion of prosecution history estoppel issues from claims in provisional applications. Some of this is discussed in the IPBiz post
Factors influencing the decision to file a provisional application; the issue of claims in a provisional . As a legal matter, there has never been a case on this topic. If there were, the likely conclusion would be: there is no estoppel created by amending from a "claim" in a provisional application, because there is no such thing as a claim defining the subject matter of an invention in a provisional patent application.
Other IPBiz posts on provisional applications
Low cost provisional applications?
Presumptions about provisionals
***Background on provisional applications
from MARGO A. BAGLEY, ACADEMIC DISCOURSE AND PROPRIETARY RIGHTS: PUTTING PATENTS IN THEIR PROPER PLACE. 47 B.C. L. Rev 217 (2006):
Introduced into U.S. law in 1995, provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular non-provisional application for a patent. n133 Provisional applications also protect an applicant's right to file in other countries as long as the provisional application is filed before the invention is disclosed to the public. n134 The provisional application is not examined by the USPTO and simply lapses after twelve months, with no further effect unless a regular non-provisional application is filed before that time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions. Funding and staffing are perpetual problems for most university TTOs, and provisional applications provide benefits in both areas. For a university, the filing fee for a provisional application is $ 100, while com-bined filing, search, and examination fees of $ 500 are required for non-provisional patent applications. n135 Moreover, since the provisional application will not be examined, TTOs may choose to spend less time and money on the drafting of the provisional application based on an understanding that in a year's time, many will lapse because the covered tech-nology ultimately will not justify the cost of filing a further non-provisional application.
Although the USPTO does not report the number of provisional applications filed by type of entity in its statistical reports, the AUTM now provides provisional application filing data in its annual survey. n136 According to the survey, in fiscal year 2004, of the 8286 new U.S. utility applications filed by U.S. universities, hospitals, and research institutes, 75% were provisional applications. n137 Conversely, the USPTO reports that provisional application filings for fiscal year 2004 only accounted for approximately 30% of total utility application filings across all applicants. n138 This suggests that universities may indeed rely much more heavily on provisional applications than other types of patent applicants.
from Margo A. Bagley, The Need for Speed (and Grace): Issues in a First-Inventor-to-File World, 23 Berkeley Tech. L.J. 1035 (2008)
footnote 81: Provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular nonprovisional application for a patent. Provisional applications also protect an applicant's right to file in other countries as long as the provisional is filed before the invention is disclosed to the public. Also, the provisional application is not examined by the USPTO, will simply lapse after twelve months, and will have no further effect unless a regular nonprovisional application is filed in time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions.
from the conclusion, on first inventor to file ["FITF"]: As discussed above, a move by the United States to a FITF system will likely have negative ramifications for small entity inventors. Delaying a move to FITF until it can be used to facilitate the adoption of a one-year grace period in other countries will allow the United States to make the bitter pill of the race to the patent office considerably easier for many researchers and entrepreneurs to swallow by providing them with something very useful in return. The adage "haste makes waste" surely applies here: a hasty move to FITF may waste our best hope for obtaining from other countries the grace period that is so critical for small entity innovation, academic discourse, and prompt dissemination of information.
There was a reference to Russ Krajec. The relevant post is titled Claims in Provisionals and the relevant text is:
Many people, myself included, draft claims before drafting the specification of a patent application. For me, this exercise allows me to completely define the invention in the claims, then draft the specification and figures to match. I make sure that every limitation included in the claims is discussed in the spec and shown on the drawings.
This serves two purposes. The first is that it creates a thorough and enabling disclosure. The second purpose is that it only includes enough information to support the claims. There is usually no need to disclose extra material, which would otherwise be a trade secret.
However, I never include claims when I file a provisional application. I do this because only bad things can happen: prosecution history estoppel Festo-style may come to haunt you. There is no upside.
IPBiz makes a query: can there be prosecution history estoppel based on something termed a "claim" in a provisional? As Bill Clinton might say, it depends on what you mean by the word "claim."
We all know that claims are not required in provisional patent applications.
35 USC 111 (b) [Provisional application] states in (2): CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.
So a claim is not required, but if one puts something called a "claim" in a provisional application, is it a claim for purposes of establishing estoppel? Very likely not.
35 USC 111 (b)(1)(a) is about "a specification as prescribed by the first paragraph of section 112 of this title."
37 CFR 1.75, which applies to nonprovisionals, states the specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.
There is no statute or rule saying there must be a a claim in a provisional particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The specification required by 35 USC 111 (b)(1)(a) must support claims in the later-filed nonprovisional. If there is material in the specification broader in scope than later filed claims, or even irrelevant to later filed claims, who cares?
There is later assertion of prosecution history estoppel issues from claims in provisional applications. Some of this is discussed in the IPBiz post
Factors influencing the decision to file a provisional application; the issue of claims in a provisional . As a legal matter, there has never been a case on this topic. If there were, the likely conclusion would be: there is no estoppel created by amending from a "claim" in a provisional application, because there is no such thing as a claim defining the subject matter of an invention in a provisional patent application.
Other IPBiz posts on provisional applications
Low cost provisional applications?
Presumptions about provisionals
***Background on provisional applications
from MARGO A. BAGLEY, ACADEMIC DISCOURSE AND PROPRIETARY RIGHTS: PUTTING PATENTS IN THEIR PROPER PLACE. 47 B.C. L. Rev 217 (2006):
Introduced into U.S. law in 1995, provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular non-provisional application for a patent. n133 Provisional applications also protect an applicant's right to file in other countries as long as the provisional application is filed before the invention is disclosed to the public. n134 The provisional application is not examined by the USPTO and simply lapses after twelve months, with no further effect unless a regular non-provisional application is filed before that time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions. Funding and staffing are perpetual problems for most university TTOs, and provisional applications provide benefits in both areas. For a university, the filing fee for a provisional application is $ 100, while com-bined filing, search, and examination fees of $ 500 are required for non-provisional patent applications. n135 Moreover, since the provisional application will not be examined, TTOs may choose to spend less time and money on the drafting of the provisional application based on an understanding that in a year's time, many will lapse because the covered tech-nology ultimately will not justify the cost of filing a further non-provisional application.
Although the USPTO does not report the number of provisional applications filed by type of entity in its statistical reports, the AUTM now provides provisional application filing data in its annual survey. n136 According to the survey, in fiscal year 2004, of the 8286 new U.S. utility applications filed by U.S. universities, hospitals, and research institutes, 75% were provisional applications. n137 Conversely, the USPTO reports that provisional application filings for fiscal year 2004 only accounted for approximately 30% of total utility application filings across all applicants. n138 This suggests that universities may indeed rely much more heavily on provisional applications than other types of patent applicants.
from Margo A. Bagley, The Need for Speed (and Grace): Issues in a First-Inventor-to-File World, 23 Berkeley Tech. L.J. 1035 (2008)
footnote 81: Provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular nonprovisional application for a patent. Provisional applications also protect an applicant's right to file in other countries as long as the provisional is filed before the invention is disclosed to the public. Also, the provisional application is not examined by the USPTO, will simply lapse after twelve months, and will have no further effect unless a regular nonprovisional application is filed in time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions.
from the conclusion, on first inventor to file ["FITF"]: As discussed above, a move by the United States to a FITF system will likely have negative ramifications for small entity inventors. Delaying a move to FITF until it can be used to facilitate the adoption of a one-year grace period in other countries will allow the United States to make the bitter pill of the race to the patent office considerably easier for many researchers and entrepreneurs to swallow by providing them with something very useful in return. The adage "haste makes waste" surely applies here: a hasty move to FITF may waste our best hope for obtaining from other countries the grace period that is so critical for small entity innovation, academic discourse, and prompt dissemination of information.
posted by Lawrence B. Ebert at 5:14 AM
1 Comments:
I think the conclusion that FITF is bad for small entities is an exaggeration or extrapolation from a few individual cases.
While large entities arguably have the resources to file it is also true that they have, generally, a multi-gated process for making the decision to file.
A small entity can get everyone in the company to decide in a day about filing and work with focused intent to make it happen, whereas large entities will:
1) have the inventor file an invention disclosure - often asking for economic justifications and almost certainly asking the inventor to explain how the invention is going to fit into the company's business;
2) require the inventor's manager to sign off on the disclosure;
3) schedule the disclosure to be reviewed at a review meeting - perhaps quarterly, perhaps semi-annually;
4) at the review meeting, people who have a siloed view will evaluate the disclosure;
5) the disclosure will be considered competitively in light of the IP budget and other disclosures;
6) If the disclosure is approved, a meeting with the patent attorney, often outside counsel, gets scheduled;
7) The outside counsel goes off and drafts [the claims and] the spec. Sends them to the inventor for review;
8) The inventor either rubber stamps (bad quality control) or eventually gets around to reading the draft (tick-tock, tick-tock);
9) the attorney files the application.
Of course, this too is an exaggeration, but I contend that a small entity is much more likely to identify and act quickly on important IP matters than a large entity will...if for no other reason that this one patent is much more important to the survival of the small entity than it is to the large entity.
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