Application Drafting and Provisional Applications · •Suitable vehicle for foreign filing ... •Pitfalls to avoid in the background ... •Patent term measured from filing date

Dentons US LLP Document reference: 80489515v1

Application Drafting and Provisional Applications

Scott W. CummingsPartnerT +1 202 408 [email protected]


• To obtain a patent for the client by convincing the Patent Office (i.e., an Examiner) that the invention is patentable

• It is a form of sales – like a proposal

• Take some pointers from the advertising industry• People don’t buy when they:

• Don’t feel the need for what you are selling• Don’t trust the salesman or solution being offered; credibility is lacking.

What is the Goal of a Patent Application?

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• Application Drafting • Attributes of a well-written application• Filing Strategies• Legal Requirements • Drafting Ideas/Tips

• Provisional Applications• Filing Requirements• Strategic Uses/Basis for Priority• Pros and Cons

Outline

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• What attributes should a well-written patent application have?

• Describe the invention so one of ordinary skill can understand it• Disclose the best mode• Provide support for claims of unknown scope• Claims narrow enough to avoid prior art• Claims broad enough to hamper design around

The “well-written” patent application

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• Claims clear enough to provide notice• Factually accurate• Suitable vehicle for foreign filing• Tell a story

The “well-written” patent application

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• 35 U.S.C. §101• Eligible subject matter• Utility

• 35 U.S.C. §112, ¶1• Enablement• Written description• Best mode

Substantive Legal Requirements

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• 35 U.S.C. §112, ¶2• “Definiteness” requirement• Claims evaluated in light of

• Content of the application• Prior art• Interpretation given by those of ordinary skill

• “Special” terms• Define in the specification/be your own lexicographer


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• 35 U.S.C. §102• Novel

• 35 U.S.C. §103• Nonobvious


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• Patent application as a vehicle to communicate and persuade

• The cast of characters• The prior art• Likely users of the technology• Our hero - the inventor(s)

Application Drafting Ideas - Tell the Story of Invention

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• Setting the stage• Background of the invention• Unfulfilled needs• Failures of others• Problems with the prior art • Serious nature of the problem


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• But … “what you say may be used against you in a court of law”

• Pitfalls to avoid in the background• Disclaimer via “criticism and disavowal”• Written description – failure of claimed subject matter to address at least one

stated problem or object


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• Disclaimer via “criticism and disavowal”• Keep the discussion general, focus on problems and deficiencies of the prior

art, not specific features

• Try a disclaimer:• “While certain aspects of conventional technologies have been discussed to

facilitate disclosure of the invention, Applicants in no way disclaim these technical aspects, and it is contemplated that the claimed invention may encompass one or more of the conventional technical aspects discussed herein.”


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• Written description – failure of claimed subject matter to address at least one state problem or object• Revolution Eyewear, Inc. v. Aspex Eyewear, et al., (2009)• Avoid listing “objects” of the invention

• Try a statement like:• “The present invention may address one or more of the problems and

deficiencies of the prior art discussed above. However, it is contemplated that the invention may prove useful in addressing other problems and deficiencies in a number of technical areas. Therefore the claimed invention should not necessarily be construed as limited to addressing any of the particular problems or deficiencies discussed herein.”


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• The hero saves the day

• Summary of the invention• Tie to Background (problem/solution)• Broad characterization of benefits (e.g., functional)• Recast independent claims – Support for the claimed invention

• Detailed description• Refer to advantages of the described features


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• Avoid §112, ¶2 issues

• Be explicit (“As used herein, the term X means Y”)

• Claim interpretation• Applicant’s definition controls• Choose your words wisely

Application Drafting Ideas - Define “Special” Claim Terms

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• Overly narrow characterizations of what constitutes the invention have been used to limit the scope of the patented claims (Honeywell Int’l. v. ITT Industries, Inc.):

• "this invention relates to a … ", • according to the present invention, a … ", • "a … made pursuant to the teachings of the present invention"• coupled with a lack of description of alternative embodiments

Application Drafting Ideas - Avoid narrow characterizations

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• Other terms/characterizations to avoid:• “critical”• “essential”• “key”• “necessary”• “important”

Application Drafting Ideas – Avoid narrow characterizations

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• Solutions =

• Use alternative language such as: "certain embodiments of the present invention include, but are not limited to …"

• Describe as many alternative features and embodiments as possible.

Application Drafting Ideas – Avoid narrow characterizations

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• Problem = Disclosed but unclaimed subject matter is “dedicated to the public”

• Maxwell v. J. Baker, Inc.

• Solution = Draft a comprehensive set of claims

Application Drafting Ideas - Avoid Dedication to the Public

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• 37 C.F.R. §1.56 - Duty of candor and good faith

• Misrepresentations, misleading statements, and omissions violate this duty.• Result = patent at risk for being found unenforceable due to “inequitable

conduct”

Application Drafting Ideas - Avoid Hyperbole

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• Hoffman-La Roche, Inc. v. Promega• Specification contained an “example” implying that an experiment had been

conducted• Actually the “example” was prophetic and never actually performed• Result = patent unenforceable due to inequitable conduct

• Still a problem after Therasense, Inc. v. Becton, Dickinson and Co.?

Application Drafting Ideas - Avoid Hyperbole

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• Honeywell International• Claims characterized a polymer yarn by its “melt point elevation” (MPE).

Measured MPE value highly dependent upon technique used to collect the yarn for testing

• Patentee failed to disclose which technique was used to collect the yarn sample

• Result = claims “insolubly ambiguous” and invalid under 35 U.S.C. §112, ¶2

Application Drafting Ideas - Disclose Testing Methodologies

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• EPO and JPO - problem/solution approach to determine inventive step (obviousness)• Telling the story of invention in the application will provide a good basis to meet

this requirement

• EPO - strict interpretation of “new matter”• Limited ability to amend• Solution = comprehensive claim set

Application Drafting Ideas - Think Globally

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Provisional Applications

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• Due to the America Invents Act (AIA), we now live in a first-to-file world• More important than ever to secure the earliest possible filing date

• Increased prominence of provisional applications?

• Obtaining the earliest possible filing date for each claim• "Stacking" provisionals over the course of one year

• An early filing date does no good if it doesn't stick!


• 35 U.S.C. §111(b)

• Act as a “placeholder”• Never substantively examined• Automatically lapse or mature one year from the filing date

• Once filed, applicants can mark “patent pending”

• Can not claim priority from another appln.

• Patent term measured from filing date of subsequent nonprovisional application


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Filing Requirements• A specification• A drawing (if required to understand the invention)• A cover sheet or cover letter• Fee

NOT Required• A claim• An oath or declaration (37 C.F.R. §1.63)• An IDS


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• Domestic Priority• 35 U.S.C. §119(e)

• Foreign Priority (PCT and National Filings)• Article 4 of the Paris Convention

Provisional Applications - As a Basis for Priority

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• Requirements• Nonprovisional application (35 U.S.C. §111(a))• Within 12 months of the filing date of the provisional• At least one common inventor• Reference to the provisional application• Provisional application must satisfy §112, ¶1 for the invention claimed in the

subsequent nonprovisional application

Provisional Applications - Domestic Priority

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• New Railhead Manufacturing• Patent claimed drill bit with certain angle between the bit and its housing


Sales spring/ summer 96

Jan 96 Jan 97 Jan 98

2/97 - File Provisional

11/97 - File Utility

*Sales > 1 Yr.*

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• Court found that the disclosure of the provisional application did not meet the written description requirement with respect to the subsequently claimed drill bit angle

• Applicant not entitled to priority back to the filing date of the provisional application (limited to 11/97 filing date)

• Sales occurred more than one year prior to the 11/97 date, thus patent invalid under 35 U.S.C. §102(b)


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• Article 4 of the Paris Convention• A “regular national filing” in one country provides a basis for a priority claim in

an application filed within 12 months in another member country • Governs priority claims in PCT applications• Provisional applications are considered a regular national filing• Must file PCT/foreign application(s) within 1 year of the filing date of the

provisional application.

Provisional Applications - Foreign Priority

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Provisional Applications Advantages & Disadvantages

Advantage Disadvantage• Must satisfy the requirements of 35

U.S.C. §112, ¶1 with respect to a later-claimed invention in order to provide any benefit of priority.

• Are relatively simple and inexpensive to file. They do not need a declaration, claims or an IDS. The specification is not examined, and can therefore be informal (PowerPoint presentations, manuals, lab notebook entries, etc.)

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Advantage Disadvantage• The various claims of the later-filed

utility application may have different priority dates based on multiple provisional application filing dates, which must be evaluated and considered.

• A utility application can claim priority to multiple provisional applications. Thus, multiple provisional applications can be filed in the one-year time period measured from the earliest-filed provisional application in order to capture changes in rapidly evolving technologies.

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Advantage Disadvantage• Examination is delayed up to one

year.

• The content must be evaluated for adequacy of disclosure to support the claim for priority.

• The patent term of a regular utility patent that claims priority to a provisional application is 21 years from the filing date of the provisional application.

• They do not have to be in English. Thus, copies of foreign priority documents may be filed as provisional U.S. applications.

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Advantage Disadvantage• The filing date of a provisional

application starts the one-year grace period to complete PCT and/or direct national foreign filings and obtain the benefit of priority. This date must be docketed and kept in mind

• The filing date of a provisional application can be relied upon to claim the benefit of priority in other countries under Article 4 of the Paris Convention

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• Application drafting• Patent application as a vehicle to communicate and persuade

• Substantive and formal legal requirements• Tell the story of invention

• Provisional applications• Relatively simple and inexpensive

• Client pressure to file provisional applications• Without quality disclosure loss of priority date and possible loss of patent rights

loom

Conclusion

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Thank you

Scott W. CummingsDentons US LLP

1301 K St., NWSuite 600, East TowerWashington, DC 20005USA dentons.com

© 2013 Dentons

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Application Drafting and Provisional Applications · •Suitable vehicle for foreign filing ... •Pitfalls to avoid in the background ... •Patent term measured from filing date

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