Page 7 - Intellectual Property

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Intellectual Property | MONDAY, MARCH 27, 2017 | S7
the prior art. Ideally, a patent prosecutor diligently reviews the prior art and drafts claims as broadly as possible in view of the prior art. But time and budget constraints often do not allow this. A back-up strategy is to draft both broad and narrow claims to hedge one’s bets: broader claims to capture a wider range of infringers, narrower claims more likely to be valid in light of prior art.
Where a patent prosecutor files a non- provisional application that expands upon and/or modi es the text of the provisional application, the resulting differences can lead to ambiguities about whether the documents are consistent, and if so, which controls later issues of construction. This became a major issue in the MPHJ case.
The ‘MPHJ’ Case
MPHJ owned a patent that teaches a pro- cess for combining copying and scanning technologies. It asserted the patent against large players in the copier industry; in turn they petitioned the Patent Of ce to review the validity of the patent, claiming it was anticipated by prior art. A central issue was interpreting the patent claims—speci cally whether two of the steps should be construed to be required to be performed in a single step or whether the single-step construction was optional.
In order to preserve the patent’s validity, the patent owner argued for the narrower
construction that contained such a require- ment; the challengers sought a broader con- struction. (Note how, because the issue was validity, the parties took the opposite posi- tion of that usually taken when considering infringement.) The limitation of there being a single step was described in two statements in the provisional, but omitted from the nal application, which also included broadening language in the Abstract of the patent where the single-step operation was described as optional.
The Federal Circuit upheld the Patent Of ce’s construction that the omission from the non-provisional would be interpreted as an abandonment of that claim limitation— even in the absence of an express disclaimer of statements in the provisional. That meant that the broader construction was adopted, and the patent was held invalid!
The opposite sometimes results when infringement is the issue—limitations from the provisional can end up narrowing the con- struction of the patent claims, which then can lead to a nding of non-infringement.
Takeaways
Provisional patent applications, includ- ing their Abstracts, need to be drafted with the recognition that they may be carefully scrutinized during claim construction in later proceedings. Here are some recommended steps to avoid these landmines:
• Provisional applications should be drafted with the same considerations one would bring to drafting a non-provisional. Best practices include carrying out a prior art search, reviewing the prior art, draft-
The ‘MPHJ’ case demon- strates that great care must be brought to the task of considering the potential interplay between the con- tents of the provisional and non-provisional applications.
ing claims for inclusion in the provisional, assuring that the claims enable the inven- tion, and that the claims cover what the speci cation indicates the inventor intend- ed to cover. Do the best possible job on the provisional. Ideally this means writing a thorough speci cation and researching the prior art. If budget and time do not allow this, do the best job practicable under the circumstances and consider follow up pro- visional applications before ling a non- provisional application.
• When drafting and ling a non-provision- al patent application, think carefully about what you want to keep and what you want
to discard, if anything. The MPHJ case dem- onstrates that great care must be brought to the task of considering the potential interplay between the contents of the provisional and non-provisional applications, since changes in the text of the application can be used to construe the claims, notwithstanding the fact that the provisional is incorporated by reference in the non-provisional.
• Consider hedging your bets—if you want to adopt broader claims that do not have all the restrictions in the provisional, then con- sider making alternative, narrower claims to rely upon in case of an invalidity challenge.
• Consider making explicit statements about the provisional. The common prac- tice is to incorporate the whole provisional application into the non-provisional. We rec- ommend instead explicitly disclaiming con- tradictory and/or inconsistent statements, or any other aspect of the provisional that the applicant does not want to be included in the non-provisional application. Conversely, if it is important that something in the provisional be incorporated, then say so explicitly.
• The claim construction decision in MPHJ considered, among other sources, the pat- ent’s Abstract. Like provisional applications, Abstracts often get short shrift in the atten- tion of patent application drafters. It is impor- tant to carefully consider the language used in the Abstract and its potential impact on the scope of the patent claims.
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