Posts Tagged “provisional application”

It may seem obvious in hindsight, but a regular utility application is a continuation or CIP of any earlier filed provisional application. If you add material to the provisional, as most often is the case, then any claims directed to that new material do not get the priority date of the provisional. See Finnegan’s blog post: Getting Priorities Straight: Patents Have No Presumptive Entitlement to Priority Date of Provisional Applications

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Last month on LinkedIn an individual asked (and I’m paraphrasing here) whether an expired provisional application could affect (presumably for the better) the priority date of a regular patent application filed after the expiration of the provisional. That’s kind of like asking if you can make ice cream from soured milk. The answer, of course, is no; even worse, including a expired provisional application by reference in an application seems like a good way to ensure you lose the priority battle in an interference procedure.

First, let’s remember why you might file a provisional application in the first place. A provisional application is a temporary filing used to hold your priority for getting a patent – your place in line, so to speak – for getting a patent, while you consider the pros and cons of moving ahead with the process of prosecuting the patent application for that particular invention. For example, you might want to see if you can find some capital to build your business or you might be working on an even better approach to your product so putting a one year hold on the process can save you from prosecuting a patent you don’t ultimately want. By filing a provisional application you get that extra year without worrying about losing your patent rights because of public disclosures or because someone else has independently come up with the same invention during that year.

Getting back to the question posed on LinkedIn. Expired means expired (see 4/29/10 post), so your expired provisional application has lost its “place holding” value. You could always include a copy of your provisional filing as a reference in your regular application, but only bad things can accrue from that. If the provisional app has material that you are not claiming in the regular application then you are making public some material that was otherwise still confidential. Additionally, by including it and not claiming it you run the risk of dedicating it to the public.

If, on the other hand, your regular application covers all the material in your provisional application and you find yourself in an interference procedure, the admission that your invention was ready for patenting more than a year before the priority (filing) date of your regular application gives ammunition to the other party. Here in the US, the patent (if it is granted) goes to the first person to conceive of the invention AND diligently reduce it to practice, where the filing of the patent application is really the indicator that you have finished the reduction to practice. Thus, without the priority date of the provisional application on your side, you are in the difficult position of arguing away a year or more of delay in filing.

About the only argument I could imaging is poverty: “I couldn’t afford the filing fees”. But you’d probably have to produce evidence to that effect. You certainly would have a better chance of winning the interference if your regular application included new material (viz., beyond the provisional app) and did not reference the expired (NON-PUBLIC) application explicitly.

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We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

  • A thesis in a library, not yet cataloged or shelved is NOT accessible.
  • A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
  • A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
  • A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
  • A document in a private, controlled collection is NOT accessible.
  • A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
  • A document is a prior publication even if it can be proven that no one actually looked at it.
  • A purely oral presentation is almost certainly NOT a prior publication.
  • Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.

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