Thursday, April 14, 2005

Provisionals without claims?

As a matter of ensuring support under 35 USC 112 P1 (written description), I file provisional applications with claims. As a philosophical matter, this exercise forces the inventor to think about what really is different in the present invention and write down the invention that the inventor possesses that did not exist before.

Recently, I learned that some attorneys, particularly at universities, believe that filing provisionals without claims is preferable.

For example, at,
we have text by Howard M. Eisenberg:

Some patent attorneys suggest, however, that the provisional application contain at least one claim. One reason for this is because the decision to file a continuation regular application is often made at the last moment, very close to the one year anniversary of the provisional application filing date. There is always the possibility that the applicant may neglect to add claims for the regular application. If the regular application is filed without any claims, it will not be entitled to a filing date. On the other hand, if the provisional application contains at least one claim, even if it is not a very good claim, the regular application will be entitled to its filing date. A set of new claims may always be added at some time in the future before the application is examined.
[LBE note: filing a nonprovisional application claiming priority to a provisional application is probably best not viewed as filing a continuation application under 35 USC 120. The above paragraph is simply wrong.]

Other patent attorneys believe that it is best to avoid having any claims in the provisional application. The reason for this is that usually any claim that exists in the provisional patent application will be changed when the application is filed as a regular, non-provisional application. There is concern that this changing of the claims when filing the regular application might be construed by a court as an amendment of the claims which, according to the recent ruling in Festo Corp. v. Shoketsu Kinzoku, 187 F.3d 1381, 56 U.S.P.Q.2d 1865 (2000), would severely limit the extent to which the claims could be broadened under the doctrine of equivalents.

Because the issue has not yet been litigated in a court, it is not at all certain that changing the claims during the filing of a regular from a provisional application would indeed be considered an amendment that would limit the scope of the doctrine of equivalents. However, until the issue has been cleared up, I concur that provisional applications are best filed without claims.

[LBE note: as of 2005, I don't believe anyone has ever asserted Festo estoppel because of a narrowing amendment between a nonprovisional and an earlier provisional. I doubt this will ever happen. "Claims" in a provisional are not claims presented for consideration to the USPTO and are never examined. How can one have narrowing for a reason related to patentability when the patentability of the initial "claim" is never assessed?]

Does anyone believe filing a provisional without claims is preferable to one with claims?

****UPDATE. 14 Sept 2005***

from eejd, 7 Sept 2005-->

The IP Counsel Blog discusses whether provisional patent applications should include claims:
In Claims in Provisionals, Russ [Krajec] advocates that provisional patent applications should be filed without claims. Russ' reasoning is that provisional applications filed with claims can only have a negative effect in view of prosecution history estoppel. . . .

I feel that it is prudent to include the broadest claims in the original application. If the validity of the patent is ever attacked, there is a record of the broadest claim in the application with the earliest filing date or priority date. At the risk of establishing a record for prosecution history estoppel, it is necessary to preserve a record for claim interpretation and to satisfy written description requirements.

LBE note. Krajec's reasoning is not persuasive. Hard to believe there would be estoppel arising from a provisional. If the use of the word "claims" bothers anyone, have a numbered list preceded by "I disclose." In a case wherein a provisional comes into play, the PTO is looking for written description support for priority. They are not looking for estoppel on claims.


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