Friday, April 15, 2005

Myths in provisional patent applications

from Intellectual Property Today, Dec. 2002, Provisional Patent Application, Reality and Myth:

The lack of a requirement for a claim in a provisional application might appear more significant, at least on the surface. Nevertheless, even if one does not formally submit a set of claims, it is difficult to imagine being able to satisfy the written description and enablement requirements of § 112 without
knowing precisely what one intends to claim up to twelve months later upon filing a non-provisional application. n5 In this regard, the Court of Appeals for the Federal Circuit (CAFC) has stated the following in regard to satisfaction of the written description requirement of § 112:

. . . the applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description and
inquiry' whatever is now claimed.


The USPTO's depiction of the provisional application as being
"quick" and "inexpensive" appears to have addressed concerns among many small businesses and academic institutions. Perhaps as a result, many applicants may have been lured
into believing that a minimal invention disclosure could secure the
filing date of a provisional application in a later-filed non-provisional application.

In fact, an article by Kowalski et al. published shortly after the
legislation leading to provisional applications took effect stated that universities believed the provisional application procedure would enable an inventor to submit a draft manuscript prior to publication. n36 According to these authors: "The provisional application, however has not proved to be the answer." n37

One of the comments expressed doubts that a provisional application
filed without a claim could ever contain a sufficient disclosure to provide the basis for a foreign or U.S. priority date. The response of the USPTO was that claims were not required, but could be filed in a provisional application if so desired, and be considered as part of the disclosure.


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