Since 1995, U.S. patent law has allowed inventors to file a “Provisional Patent Application,” to establish a priority date. A provisional patent application is less expensive because it has fewer requirements, is not examined by the Patent Office, and has lower filing fees than non-provisional applications.
With the passage in 2011 of the America Invents Act, which adopted the “first inventor to file” 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 file a “half-baked” provisional application to secure a priority date, expecting to file a later, more complete application in which they fix any errors or inconsistencies in the first filed provisional.
A recent Federal Circuit decision – MPHJ Technology Investment, LLC v. Ricoh Americas Corp. – 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.
Provisional patent applications require only a specification and drawing. 35 U.S.C. § 111(b). To claim priority to a provisional patent application, a later non-provisional patent application (either international and/or U.S. national), must be filed within 12 months of the filing of the provisional application. The non-provisional application may augment the disclosure in the provisional with additional data, information, figures, 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 file as early as possible to win the race to the Patent Office. Some applicants quickly file a provisional application and then file 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 filed.
Provisional applications, by statute, do have to contain a specification and drawings. That itself has legal requirements. A specification must
contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, 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 USC 112(a).
In other words, the specification has to be sufficiently detailed to enable a skilled artisan to make and use the invention. One or more drawings are required “where necessary for the understanding of the subject matter sought to be patented.” 35 USC 113. These requirements are expressly incorporated into the requirements for a provisional application. 35 USC 111(b).
Since the Patent Office allows an applicant to expand the specification in a later, non-provisional application, many applicants cut short their efforts to carefully draft a complete disclosure for the provisional. This is a mistake. A provisional application that does not meet the statutory requirements, or is inconsistent with the later specification, 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 prepare relatively complete provisional patent applications, including drafting initial claims, and making sure the application filed enables those claims. But filing an incomplete provisional application could lead to loss of the early date. Thus, an important trap to avoid is filing an incomplete provisional application.
Another problem that can arise is when a later, non-provisional application expands the content of the written specification. This can often lead to inconsistencies and contradictions, which then create fertile ground for challenges in later proceedings.
Broad v. Narrow – Competing Impulse
Patent prosecution (the process of drafting and shepherding the application through the Patent Office) implicates two opposite impulses. On the one hand, an inventor would like to obtain as broad claim coverage 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 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 modifies 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 process for combining copying and scanning technologies. It asserted the patent against large players in the copier industry; in turn they petitioned the Patent Office to review the validity of the patent, claiming it was anticipated by prior art. A central issue was interpreting the patent claims – specifically 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 requirement; the challengers sought a broader construction. (Note how, because the issue was validity, the parties took the opposite position 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 final 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 Office’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 construction of the patent claims, which then can lead to a finding of non-infringement.
Provisional patent applications, including 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, drafting claims for inclusion in the provisional, assuring that the claims enable the invention, and that the claims cover what they specification indicates the inventor intended to cover.
Do the best possible job on the provisional. Ideally this means writing a thorough specification 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 provisional applications before filing a non-provisional application.
- When drafting and filing a non-provisional patent application, think carefully about what you want to keep and what you want to discard, if anything. The MPHJ case demonstrates 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 consider making alternative, narrower claims to rely upon in case of an invalidity challenge.
Consider making explicit statements about the provisional. The common practice is to incorporate the whole provisional application into the non-provisional.
We recommend instead explicitly disclaiming contradictory 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 patent’s Abstract. Like provisional applications, Abstracts often get short shrift in the attention of patent application drafters. It is important to carefully consider the language used in the Abstract and its potential impact on the scope of the patent claims.
A previous version of this post appeared in the New York Law Journal, March 27, 2017