1 DANGER AND USE OF PROVISIONAL APPLICATIONS Maria Eliseeva HOUSTON ELISEEVA LLP Boston, MA June 9, 2005, San Francisco June 16, 2005, Chicago AIPLA ADVANCED.

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DANGER AND USE OF PROVISIONAL APPLICATIONS

Maria EliseevaHOUSTON ELISEEVA LLP

Boston, MAJune 9, 2005, San Francisco

June 16, 2005, Chicago

AIPLA ADVANCED PATENT PROSECUTION SEMINAR

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PROVISIONAL AS A PRIORITY FILING

Since June 8, 1995, the option of filing a provisional application for patent has become available. Provisional practice was designed to provide a lower-cost first filing in the United States. It gives U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

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PROVISIONAL AS A PRIORITY FILING

What parity with non-U.S. applicants was missing?

35 U.S.C. §154(a)(2) says the following:

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PROVISIONAL AS A PRIORITY FILING TERM.—Subject to the payment of fees

under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

Domesticcontinuingcases

Earlierfiled PCTapplicationdesignatingthe U.S.

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PROVISIONAL AS A PRIORITY FILING Filing a foreign, non-U.S. application as a

priority filing does not start the patent term.

Filing a U.S. provisional patent application as a priority filing does not start the patent term either.

A later filed non-provisional domestic or PCT application claiming the benefit an earlier filing date of the provisional starts the patent term.

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PROVISIONAL AS A PRIORITY FILING - A LATER FILED NON-PROVISIONAL

A provisional application is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b).

It allows receiving a filing date without a formal patent claim, inventor’s oath or declaration.

No information disclosure statement is required.

It provides the means to establish an earlier effective filing date in a later filed non-provisional patent application filed under 35 U.S.C. §111(a).

The invention disclosed in the provisional can be marked as "Patent Pending“.

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PROVISIONAL AS A PRIORITY FILING – §112 Compliance

The later-filed nonprovisional application claiming the benefit of the provisional application must include at least one claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. §112, 2nd paragraph.

Although a claim is not required in a provisional application, the written description and any drawing(s) of the provisional application must adequately support the subject matter claimed in the later filed nonprovisional application in order to benefit from the provisional application filing date.

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PROVISIONAL AS A PRIORITY FILING - PECULIARITIES Provisional applications are not

examined on their merits.

The benefits of the provisional application cannot be claimed if the one-year deadline for filing a non-provisional application has expired.

Provisional applications cannot claim the benefit of a previously-filed application, either foreign or domestic.

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PROVISIONAL AS A PRIORITY FILING- PECULIARITIES The disclosure of the invention in

the provisional application should be as complete as possible. To obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.

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PROVISIONAL AS A PRIORITY FILING - DANGER Danger of false sense of security from

the Provisional Application's one-year duration.

Best practice is to commence work on a utility application soon after filing the Provisional Application.

This minimizes the amount of lost filing date if the provisional is wanting.

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PROVISIONAL AS A PRIORITY FILING - DANGER New Railhead Mfg. LLC v. Vermeer

Mfg. Co. et al., 298 F.3d 1290; 63 U.S.P.Q.2d 1843 (Fed. Cir. 2002)

Patent invalidated because provisional application lacked written description

Federal Circuit requires strict compliance with 35 USC section 112

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PROVISIONAL STRATEGIES One approach is a provisional that

is intended to be 112-compliant. Another approach is the “shovel”

provisional. A third approach is the “lab

notebook” provisional.

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PROVISIONAL STRATEGIES – 112-compliant provisional This kind of provisional must satisfy

best mode, enablement, and written description.

Best practice is to draft claims even if they will not be listed as “claims.”

Such text can be inserted into the specification.

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PROVISIONAL STRATEGIES – “shovel” provisional The problem is an imminent disclosure

– for example, a publication or a lecture

There is no time to prepare a 112-compliant patent application

The imminent disclosure is simply “shoveled” into an envelope and sent to the USPTO with a provisional cover sheet

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PROVISIONAL STRATEGIES – “lab notebook” provisional Client is about to meet with another

entity, perhaps pursuant to a non-disclosure agreement

Client can file a provisional containing everything that is intended to be disclosed

Certified copy will be better than a dated lab notebook

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Benefits of Filing Provisional Applications Cheapest means of securing global

priority for Paris Convention purposes

Effectively extends patent term by one year

Not subject to information disclosure statement requirements

Automatically defers replies to official office actions on the merits

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Benefits of Filing Provisional Applications

Streamlined filing (claims not required)

Few formalities (cover sheet)

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Benefits of Filing Provisional Applications enables immediate commercial

promotion of the invention with greater security against having the invention stolen;

preserves application in confidence without publication in accordance with 35 U.S.C. 122(b);

permits applicant to obtain USPTO certified copies (could be very important in joint R&D or collaboration situations);

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Benefits of Filing Provisional Applications allows for the filing of multiple

provisional applications and for consolidating them in a single domestic non-provisional or PCT application (rolling provisionals);

provides for submission of additional inventor names by petition if omission occurred without deceptive intent (deletions are also possible by petition);

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Benefits of Filing Provisional Applications - Removal of Copendency Requirement

Permits intentional abandonment of provisional application leaving no rights outstanding;

Would permit second provisional application to serve as basis for Paris Convention priority claim (Art. 4(C)(4)).

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Paris Convention: Article 4(A)A.—(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

(establishes the right to priority)

(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.(a regular national filing starts the clock, that filing gives rise to right of priority)

(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.(right to be claimed priority from attaches to the filing regardless of what happens to that filing later in time. Right to priority survives the filing itself)

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Paris Convention: Article 4(C)(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority,

-1- if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and

-2- if it has not yet served as a basis for claiming a right of priority.

-3- The previous application may not thereafter serve as a basis for claiming a right of priority.this section says that IF an applicant wishes to consider his subsequent application to be the first for the convention period counting purpose, he can have the opportunity to do so, if -1-, -2-, -3- are met. But nothing in this section makes it MANDATORY for the application to claim priority from the subsequent application. He MAY claim priority from a later case, but he DOESN’T HAVE TO.

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Reading 4(A) and 4(C) together: 4(A) defines the right of priority. Where: in the filing giving rise to the claim of priority

4(A)(3) clarifies that any national filing sufficient to assign a filing date to an application is good enough, that the subsequent fate of the application does not disqualify that application from being a regular national filing and serving as a basis for a later priority claim.

In 4(A)(3) "the subsequent fate" clause pertains to the definition of what a regular national filing is for the convention priority purposes, which is separate from the inquiry of whether that first good enough national filing must always serve as the basis for claiming priority at some later time.

Section 4(C)(4) defines the circumstances under which the convention priority year can be counted from a later filed application, if the applicant chooses to do so. If the applicant meets conditions 1,2,3 of 4(c)(A) before filing the subsequent case, he is not obligated to claim priority from that subsequent case, he merely has an option to do so if he wishes.

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Reading 4(A) and 4(C) together:

So there are arguably two readings of section 4(C)(4) regarding what happens to the first application after it is abandoned per 4(C)(4):

1. Once abandoned with no rights outstanding before the subsequent application is filed – it can never serve as a basis for a priority claim, so only the subsequently filed case can serve as a priority application.

2. Once abandoned with no rights outstanding before the subsequent case is filed – an applicant has an option to use the 2nd case as the first convention application and count the 1-year period from that 2nd case. If the application chooses this option, then the 1st case can not be used for priority purposes. BUT the first application can still serve as a basis for priority, regardless abandonment, because if the applicant chooses not to use the 2nd case as the priority document, then the status of the 1st case under 4(A) remains intact and it is mandatory to use it as a basis for a priority claim.

WHERE DOES THIS COME FROM? IS THERE ANY SUPPORT FOR #2?

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Lisbon Revision of the Paris Convention1958, Minutes Of The Plenary Meeting

Report of the Second Commission, pp 523-524

With regard to Art. 4(C)(4):“ At the time the second application is filed, the first application:-shall have been withdrawn, abandoned or denied;-shall not have been submitted to public inspection;-shall allow no subsisting rights;-shall not have served as the basis for a right of priority;

It is essential that the first application can no longer beinvoked to serve as the basis for a right of priority if thesecond application is invoked for the same purpose. “

Clearly, if the second application is not invoked, thenthe first application can and must remain the basis fora priority claim.

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SO WHAT???• If the interpretation provided here is correct, what is the practical

consequence? I never abandoned a case in my entire professional life….Why would I suddenly think about it and how do I explain it to my clients?

• The practical consequence is, arguably, the following:

If you file a 1st US provisional P1 and abandon it within themeaning of 4(C)(4) before filing 2nd US provisional P2, youcan still use P1 as a basis for a priority claim at the end ofP1-defined year, or you can claim priority from P2 at the end of the P1defined year (it becomes “the first application” under 4(C)(4), or you canclaim priority from P2 at the end of P2-defined year.

You don’t lose any priority date, and you can pick later dates, if youwant. (the discussion relates to the same subject matter disclosed in P1and P2)

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P1 – US provisional

T1 T1 + 1 year

P1 expressly abandoned after filing. One year later a foreign case is ready to be filed. Is there a valid priority claim based on P1?

Yes.

Under Art. 4(A)(3) a provisional filing is a good enough national filing to start the clock.

Abandonment of P1 did not disqualify it from being a good national filing under 4(A)(3).

Foreign

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P1 – US provisional

T1 T1 + 1 year

P1 expressly abandoned after filing. P2 filed after abandonment. At T1 + 1 year a foreign case is ready to be filed. Is there a valid priority claim based on P1?

YES.

If the applicant wishes to use P1, nothing in the Paris Convention prevents him from doing so. P1 continues to be “the first application”. P2 can be used as “the first application” as well. If P2 is used as the “first application”, then conditions of 4(C)(4) must be satisfied, including NOT using P1 as a basis for priority.

P2 – US provisional

T2

Foreign

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P1 – US provisional

T1 T1 + 1 year

P1 filed at T1. P2 filed after P1 at T2. At T1 + 1 year a foreign case is ready to be filed. Is there a valid priority claim based solely on P2 for the subject matter common to P1 and P2?

Under the Paris Convention - No. (don’t forget multiple priority claims)

A valid priority claim should be made from the first application P1. P2 is not the first application and can not alone support a valid priority claim. (with regard to the same invention disclosed in P1 and P2).

Can a foreign application claim priority from P2 at T2+1 year? No, because P2 can not be considered “the first application” under 4(C)(4) and no valid priority claim can be made either to P1 or to P2 at T2+1 year.

P2 – US provisional

T2

Foreign

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P1 – US provisional

T1 T1 + 1 yearP1 expressly abandoned after filing. A German application filed after abandonment. At T1 + 1 year a PCT is ready to be filed. Is there a valid priority claim based on P1?

Yes. (Same as Slide 9)

!! Keep in mind that if P3 is a PCT, then PCT Art. 8(b)(2) is important for determining national priority rights (if there is a US priority document – US provisional - then US law (35 USC 365) governs priority rights in the US, if there is a German priority document – P2 - German law governs priority rights in Germany etc.)

If P3 claims priority from P2, can priority be claimed from P1 as well?

I think Yes. Section 4(C)(4) refers to a subsequent application in the same country of the Union and is not applicable to this scenario.

P2 – German application

T2

P3- Paris Convention filing

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Domestic priority claims under 119(e)

35 U.S.C. § 119 (e)(1) provides in part:

An application for patent

filed under section 111(a) or section 363 of this title

for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under ..111(b)…

by an inventor or inventors named in the provisional application,

shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section111(b) of this title,

if the application for patent filed under section 111(a) or section 363… is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specificreference to the provisional application. . .

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P1 – US provisional

T1 T1 + 1 year

P1 expressly abandoned after filing. One year later a US non-provisional 111(a) is ready to be filed. Is there a valid priority claim based on P1?

I think Yes.

Under 35 USC 119(e), a 111(a) application is entitled to the benefit of a filing date of P1 if 111(a) is filed within a year of P2. No copendency is required, as long as the provisional application filing fee was duly paid. All the statutory requirements of 35 U.S.C. 119(e) are satisfied. Paris Convention is irrelevant for the domestic scenario.

Why would anyone do that? For example, if the case is to be foreign filed, as discussed in the previous slides. If foreign filing is contemplated, then serial abandonment, arguably, gives an applicant an opportunity to select which subsequent provisional application will be “the first application” for counting the 1-year convention period.

P2 - 111(a)

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P1 – US provisional

T1 T1 + 1 yearP1 expressly abandoned after filing. P2 filed after abandonment. At T1 + 1 year a US non-provisional 111(a) is ready to be filed. Is there a valid priority claim based on P1? I think Yes.

119(e) is the relevant section for this scenario.

119(e)(1) requires a 111(a) filing within 12 month of P1. 119 doesn’t care about copendency, so the fact that P1 was abandoned doesn’t matter. If the fee for P1 was paid, then at T1+ 1 a 111(a) application can claim priority from P1. Moreover, nothing in 119 requires the applicant to claim priority from *the first* application.

If priority is claimed under 35 USC 120, the copendency is required and priority can be claimed only from T2. Note that claiming priority under 35 USC 120 makes the patent term run from T2, not the date of 111(a) filing, according to 35 USC 154(2).So this is quite senseless.

At T2+1 year a 111(a) can claim priority from P2 regardless what had happened to P1, since there is no domestic requirement about “the first application” even if P1 was not abandoned.

P2 – US provisional

T2 T2 + 1 year

111(a) 111(a)

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P1 – US provisional

T1 T1 + 1 year

P2 – US provisional

T2 T2+1 year

P1 never abandoned, but convention year T1+1 is missed. Can a PCT be filed at T2+1, claiming priority from T2?

No. (for non US designations)

Art. 4(A)(3) says that a national filing P1 starts the clock at T1. At the time T2 of subsequent filing P2, P1 has not been abandoned within the meaning of Art. (C)(4), and the clock has not been restarted. P1 remains the first application for the convention priority purposes. Art. 4(C)(2) says that the convention period runs from *the first application*, so if priority can be claimed at all, it should be claimed from P1. Even after T1+1 is missed, P2 doesn’t become the application on which a priority claim can be based.

What about 111(a) at T2+1? It is not under Paris, and there is no requirement to claim priority from P1. At T2+1 P1 is dead, and P2 is still within 12 months, so it seems that 111(a) filed a T2+1 can claim priority from P2.

PCT

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Rule 37 CFR 1.138 , MPEP 711

• When you send in the express abandonment papers, a PTO official has to act on them for the abandonment to be effective.

• Express abandonment will become effective as of the filing date of the abandonment papers.

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We will always have Paris!

Thank you for your attention.

To get a copy of the slides, please e-mail at [email protected]