Monday, March 21, 2011

Factors influencing the decision to file a provisional application; the issue of claims in a provisional

In 2007, Robert A. Migliorini wrote an article in JPTOS concerning provisional applications titled Twelve Years Later: Provisional Patent Application Filing Revisited [89 JPTOS 437] which presented fact patterns which supported the filing of a provisional patent application:

1. An emergency filing is needed due to a rapidly approaching statutory bar date.

2. Flexibility is needed to investigate and resolve issues, and possibly amend the application over the next year.

3. The technology area is rapidly evolving with significant research and development planned over the next year.

4. There is the potential for related applications to be filed over the next year.

5. Uncertainty exists as to the prior art, which necessitates more detailed searching and analysis.

6. Uncertainty exists as to the continued viability of the project.

7. It is desirable to delay costs associated with application examination by up to 1-year.

8. The backend of the patent term may be important due to a commercial product or a licensing arrangement, and hence desirable to shift the active patent term 1-year into the future.

9. Competitors are also working in the technology area and an earlier filing date may be critical to obtaining patent rights.

In contrast, a nonprovisional filing was indicated in the following situations:

1. There is a need to obtain a patent at the earliest possible date.

2. There is no additional work planned in technology area over the next year.

3. There is a need to minimize costs.

4. The backend of the patent term is most likely not important.

5. A lead inventor may be likely unavailable 1-year later.

Of the matter of claims in a provisional, Migliorini wrote:

Another disadvantage is the risk of inadequate disclosure in the provisional application to support the claims in the later filed related non-provisional application. n51 As previously described, the provisional application requires the full and complete disclosure of the invention to be claimed to satisfy the written description, enablement and best mode requirements of ß 112-1st paragraph. n52 If the provisional application is filed without claims and the claims in the related non-provisional application are not supported by the provisional disclosure, the claims are not entitled to the priority filing date of the provisional application. In addition, if there is public disclosure or use between provisional filing date and non-provisional filing date, this circumstance may result in the loss of patent rights in foreign countries with an absolute novelty requirement. The "inadequate disclosure" risk may be minimized by disclosing a full range of embodiments, from broad to narrow, in the provisional specification, and also filing the provisional application with at least one broad claim supported by the specification. Avoid filing scanty disclosures (sales and marketing brochures, invention disclosures, technical reports, field sales reports, etc.) as provisional patent applications, unless an emergency filing situation so necessitates.

Two years after the Migliorini article , Professor Christopher A. Cotropia published an article titled The Folly of Early Filing in Patent Law , which said of provisional applications:

In turn, a provisional application, by giving a patent application as much as a year-earlier filing date, de facto adds up to one additional year to the twenty-year patent term. n72 That is, the nonprovisional patent application's filing date starts the twenty-year term clock ticking, but if a provisional is filed, the effective filing date is a year earlier without starting the term clock. n73
Provisional applications remove additional barriers to early filing. The fees for filing a provisional application are lower than filing a normal application. n74 This removes some of the cost of filing early. In addition, a provisional application does not need to include any patent claims. n75 Claims need only be added when the provisional is converted to an application for examination within the one-year window. This lowers the costs of filing early even more by removing the need to pay a patent attorney to get the patent application completely "in order" and draft patent claims. n76 The inventor also gets a year to gather the additional resources needed to file the actual patent application.
While facilitating early filing, the information in a provisional is still important. In order to enjoy the provisional's filing date, the provisional application must fully support the claims included in the nonprovisional patent application. n77 The claims must be described and enabled by the provisional application. Accordingly, the inventor must put some thought and time into the drafting of a provisional application for the early filing to be worthwhile. But the availability of an early placeholder - which gives an inventor another year to both decide whether she wants to devote the full resources to filing a patent application and obtain the resources needed to file - adds another way the patent system removes potential barriers to filing early.

Cotropia concluded:

The basic goal of the patent system is the production of socially beneficial technology. That is, technology that society can actually use. The current early-filing doctrine clearly does not facilitate such production. And given the focus of recent scholarship and pending first-to-file legislation, such a solution appears unlikely. While this Article might not propose a perfect solution, the proposed modified actual reduction to practice requirement is a step in the right direction.

One might question Cotropia's statement of the basic goal. The patent system provides for public disclosure of information. There is no requirement that the invention disclosed be economically valuable. There is no requirement that the invention be an innovation. The invention need not be socially beneficial, and, in fact, most patented inventions are not socially beneficial. The objective is to make the information publicly available so everyone has the knowledge disclosed within the patent/patent application.

In passing, Cotropia quotes Mark Lemley: Furthermore, as Lemley points out, "creators are often terrible managers" and "frequently misunderstand the significance of their own invention and the uses to which it can be put." n118
with footnote 118 being Mark A. Lemley, Ex Ante Versus Ex Post Justifications for Intellectual Property, 71 U. Chi. L. Rev. 129, 137 . Cotropia does not note that Lemley's conclusion about transistors relies on a non-existent article. see 8 JMRIPL 80 (2008).

See also Cotropia, Invention, Creation, & Public Policy Symposium: Patent Reform & Innovation Incentive: Describing Patents as Real Options, 34 Iowa J. Corp. L. 1127 (2009). Footnote 131: Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Continuations, 84 B.U. L. Rev. 63, 67-69 (2004) (explaining the continuation process).

***William B. Slate wrote an article titled In Defense of the Misunderstood Provisional Application> (85 JPTOS 219 (2002 ), which included the text:

The absence of substantive examination of provisional applications removes the key reason to require applicants to include claims. As will be discussed below, the lack of a claim requirement does not necessarily negate the reasons for applicants to include claims. The lack of a requirement for a claim in provisional applications has contributed greatly to poor use of provisional applications and in turn to the resulting disrepute in which they are held. The disrepute has contributed to the underuse of provisional applications in circumstances where their proper use could be of extreme benefit to patent applicants.

Many provisional applications, even those filed on behalf of large corporations, educational institutions, and the like, are filed without the substantive input of a competent patent practitioner. It is thus not uncommon to see a provisional
application take the form of a cover sheet attached to an existing document such as an invention disclosure form prepared by the inventor, a bid or other proposal, or a draft of an article being submitted for publication. Although such filings are often done in-house, they may also be done by outside patent counsel provided with the document and instructed to file it "as is."

Such a filing strategy suffers from many drawbacks. The provisional application may not provide adequate support for the ultimately desired claims for a variety of reasons. The description in the provisional application may be limited to a particular embodiment or set of experiments. In the simplest of examples, where a numerical parameter such as a dimension is relevant, the application may identify only a particular value associated with the illustrated embodiment. It is desirable that the corresponding nonprovisional application and resulting patent include a number of different claims with different ranges of such a parameter (e.g., one or more series or chains of progressively narrower dependent claims). It is unlikely that, in the absence of attorney input, the provisional application will recite such alternate ranges.

Similarly, in describing a given element, the application will rarely use different generic terms of varying degrees of specificity which advantageously provide the basis for a chain of dependent claims. Additionally, such a provisional application will rarely provide the broad alternative examples necessary for broad claim interpretation under the Doctrine of Equivalents and of "means-plus-function" elements under 35 U.S.C. ß 112(6).

**Of prosecution history estoppel:

There are also ways to reduce the potential implications of prosecution history estoppel. One way is to write fairly narrow claims that in any subsequent nonprovisional application are likely to be broadened. This strategy may be used more for compactness and ease than for avoiding prosecution history estoppel. Because the key function of such claims in a provisional application is to provide claim-friendly language for various elements that might appear in the ultimate nonprovisional application, one particular kind of narrowness may be appropriate. That narrowness is the narrowness provided by the combination of many individually broad elements. In claim 1, the individual elements may not be nar-row but the claim may be narrow in terms of having many elements of different types. The subsequent dependent claims may primarily narrow the characterizations of the individual elements already mentioned. Such a strategy forces the practitioner to think through how he or she would alternatively characterize each potentially relevant aspect of the in-vention or the apparatus, method, etc. embodying the invention. It is likely that some of the broad claims of the corre-sponding nonprovisional application may be subcombinations of the elements of the independent claim of the provi-sional application.


Patent Myth 3: Provisional patents

which includes a link to Be Careful with Provisional Patent Applications [by Michael Lechter in 2007 ] with sub-title There are reasons why you might want to file a provisional application, but saving money is not one of them. and with text in the initial paragraph:

You are much more likely to interest an investor if you clearly show the basis for a sustainable competitive advantage. On the other hand if your communications with a sophisticated investor demonstrate your lack of understanding of intellectual property and the mechanisms available to protect it, you may well crash and burn.

and, within the final paragraph,

A provisional application can be a useful tool, in the right circumstances, but like any tool you must know how to use it. This is particularly true when you are talking about intellectual property protection with sophisticated potential investors. Inappropriate use of provisional patent applications will tend to put them off.

Of the "saving money" part, Michael Lechter writes

There are reasons why you might want to file a provisional application, but saving money is not one of them. Contrary to popular myth, in the long run you rarely, if ever, save money by filing a provisional application. While you can delay a portion of the expense of preparing a regular application (the cost of preparing a full set of claims), the only time that you save money by filing a provisional application is if you ultimately decide not to pursue patent protection before you file the corresponding regular application.

This rationale is a rather simplistic ex post view: I only save money with a provisional if I don't later file a nonprovisional, and, in such case, I save the differential in cost.

At the time of the provisional/nonprovisional decision, one faces uncertainty as to "what" is going to be prior art. There is an 18 month gap between when someone files a patent application and when said application is published. Filing the lower cost provisional is an insurance policy that protects one against disclosures filed AFTER one's own. It does not protect one against (then) unknown disclosures from the previous 18 months. And, this area is not like life insurance for which there are actuarial tables. (refer also to Frank Knight). Filing a provisional application establishes a placeholder against what might happen later AND separately is a lower cost gambit as to what might already have happened. Merely talking about "saving money" ignores the bigger picture. To some extent, one may have an idea of "where" competitors are going [ex-ante probability distributions ] but sometimes one doesn't even know who the competitors are. The issue is one of managing risk.


DR. PAUL M. SWAMIDASS wrote in 9 J. Marshall Rev. Intell. Prop. L. 880 (2010)

On the one hand, Mark Lemley recommends that the society accept "rational ignorance" (the result of less than serious examination of patent applications) at the United States Patent and Trademark Office ("USPTO") for cost containment reasons while allowing many invalid patents to go through. n4 On the other hand, the reasoning and evidence in this study shows, less than serious examination of pro se applications is resulting in "irrational rejection" of worthy pro se applications. An important implication being, the experiences of patent attorneys and pro se applicants prosecuting a patent application could be polar opposites. Therefore, all the USPTO-published data about patent applications prosecuted by attorneys are not relevant or helpful to our understanding of the plight of the pro se patent applicant. The examination process awaiting the pro se inventor-applicant at the USPTO seems to discourage pro se applicants, and encourages the premature abandonment of valid applications.


Published papers on patent prosecution in law journals and reviews are invariably written by law-school professors, practicing patent attorneys/agents, or patent-law students, who collectively tend to focus on the issues of relevance to patent attorneys representing inventors at the USPTO. n7 The pro se applicant does not seem to appear on their radar screen for obvious reasons; attorneys do not serve the pro se community, and they are not exposed to the problems faced by the pro se patent applicant. Thus, there is a void in patent law journals on the issues faced by the pro se inven-tor-applicant. This paper attempts to fill this void in the legal literature.


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