Page 6 - Intellectual Property

S6 | MONDAY, MARCH 27, 2017 | Intellectual Property
| NYLJ.COM
Federal Circuit Decision
Highlights Traps in Provisional
Application Practice
BY MILTON SPRINGUT
Since 1995, U.S. patent law has allowed inventors to le a “Provisional Patent Application,” to establish a priority date. A provisional patent application is less expen- sive because it has fewer requirements, is not examined by the Patent Of ce, and has lower ling fees than non-provisional applica- tions. With the passage in 2011 of the America Invents Act, which adopted the “ rst inventor to le” rule in U.S. practice, provisional patent applications have become more popular as applicants rush to get early priority dates. Applicants have been lulled by the reduced requirements into believing that they can le a “half-baked” provisional application to secure a priority date, expecting to le a later, more complete application in which they x any errors or inconsistencies in the rst led provisional. A recent Federal Cir- cuit decision—MPHJ Technology Investment v. Ricoh Americas, 847 F.3d 1363 (Fed. Cir. 2017)—highlights some of the traps that can arise from employing this strategy. We discuss the legal requirements of provisional practice, the implications of this new case, and best practices for such applications.
Statutory Requirements
Provisional patent applications require only a speci cation and drawing. 35 U.S.C. §111(b). To claim priority to a provisional patent application, a later non-provisional pat- ent application (either international and/or U.S. national), must be led within 12 months of the ling of the provisional application. The non-provisional application may aug- ment the disclosure in the provisional with additional data, information, gures, or text, which describe additional embodiments and aspects of the invention.
After adoption of the “first inventor to file” rule in 2011, applicants realized that they should get provisional applications on le as early as possible to win the race to the Patent Of ce. Some applicants quickly le a provisional application and then le a series of additional provisional applications as data or information about the invention become available within the year before a non-provisional application needs to be led.
Provisional applications, by statute, do have to contain a speci cation and drawings. That itself has legal requirements. A speci ca-
MILTON SPRINGUT is a partner at Springut Law PC. TAL S. BENSCHAR and FRANKLIN S. ABRAMS, partners at the rm, assisted in the preparation of this article.
tion must “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, con- cise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” 35 U.S.C. 112(a). In other words, the speci- cation has to be suf ciently detailed
to enable a skilled artisan to make and use the invention. One or more draw- ings are required “where necessary for the understanding of the subject mat- ter sought to be patented.” 35 U.S.C. 113. These requirements are expressly incorporated into the requirements for
a provisional application. 35 U.S.C. 111(b).
Since the Patent Of ce allows an applicant to expand the speci cation
in a later, non-provisional applica-
tion, many applicants cut short their
efforts to carefully draft a complete disclosure for the provisional. This
is a mistake. A provisional applica-
tion that does not meet the statu-
tory requirements, or is inconsistent
with the later speci cation, will not
be afforded a priority date, defeating
a major advantage of the provisional application option. Inventors are often surprised when they are advised to pre-
pare relatively complete provisional pat-
ent applications, including drafting initial claims, and making sure the application led enables those claims. But ling an incom- plete provisional application could lead to loss of the early date. Thus, an important trap to avoid is ling an incomplete provisional application.
Another problem that can arise is when a later, non-provisional application expands the content of the written speci cation. This can often lead to inconsistencies and contradic- tions, which then create fertile ground for challenges in later proceedings.
Broad vs. Narrow—Competing Impulses
Patent prosecution (the process of draft- ing and shepherding the application through the Patent Of ce) implicates two opposite impulses. On the one hand, an inventor would like to obtain as broad claim cov- erage as possible, the better to capture would-be infringers. On the other hand, an over-broad patent runs the danger of being held invalid by reason of anticipation by prior art—broader claims are more likely to encroach on what was already known in
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