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[pnlt]

I understand that a provisional application may not claim priority to any other application or publication.  However, I want to know if it is permissible to incorporate essential matter in a provisional by reference to another US patent or published application.  My thinking is that this might be useful as a means of guading against an incompleteness problem in the provisional.

[Oh, Crud]

I understand that a provisional application may not claim priority to any other application or publication.  However, I want to know if it is permissible to incorporate essential matter in a provisional by reference to another US patent or published application.  My thinking is that this might be useful as a means of guarding against an incompleteness problem in the provisional.

I don't see why not.  If you want your eventual utility patent to have the same matter incorporated by reference, such language needs to be in the provisional, else you won't get the benefit of that provisional's filing date with respect to the incorporated matter.

A note:  Few other jurisdictions permit any useful incorporation by reference, and some are downright hostile to the notion, forcing you to excise language about incorporation from the text.  Offhand, other than the USPTO, the KIPO is the only body I can recall that permitted me to actually use incorporated matter (needed to import a limiting definition to amend a claim and get around art).

[dbmax]

... I want to know if it is permissible to incorporate essential matter in a provisional by reference to another US patent or published application. 

I had that same thought, until I tried it.

I had filed a provisional with all drawings incorporated by reference to a previously published app. The office refused to assign a filing date.

I declined to pay $400 for a petition. I just refiled with the drawings, and accepted the lost 3 weeks.  Dunno if converting the app to a non-provisional would have worked.

Still cant find any legal basis for the office action. And the Applications Assistance desk could offer none.

db

[Robert K S]

Related question about PAIR: does a provisional application automatically become public the instant its child nonprovisional issues/publishes?

[khazzah]

Related question about PAIR: does a provisional application automatically become public the instant its child nonprovisional issues/publishes?

I dunno about "instantly", but once the non-prov is available in Public PAIR (as a result of issue or publication) you can access the underlying provisional through the Continuity tab.

I do this quite a bit when evaulating 102(e) references, to see if the subject matter relied on by the Examiner actually deserves the filing date of the provisional.

[dbmax]

Still curious if anyone has any thoughts about the legal basis for denying a filing date to a provisional application based on the absence of drawings (whether or not they are incorporated by reference).

Trying to decide whether to risk the $400.00 petition fee.

db





 

[khazzah]

Still curious if anyone has any thoughts about the legal basis for denying a filing date to a provisional application based on the absence of drawings (whether or not they are incorporated by reference).

35 U.S.C. 111 Application
(b) PROVISIONAL APPLICATION.-
(1) AUTHORIZATION.-A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include-
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

So I think you're hosed unless you can argue that the exception in 113 applies, namely, "when necessary for the understanding of the subject matter sought to be patented."

[dbmax]

Thanks KH,

With regard to incorporation by reference (the subject of the OP),  I had overlooked the final paragraph of 35 U.S.C. 111.

( 8 ) APPLICABLE PROVISIONS.-The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

So Incorporation by reference is not allowable in a provisional.  Edit: error pointed out by pnlt below.

(4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

Also

(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

In looking at the statute and the rule, I don't see explicit authority for the USPTO to rescind a filing date in a notice of missing parts. It appears that the document should speak for itself. A drawing is never required except "when necessary for the understanding of the subject matter sought to be patented" per 113. Dunno how the office could make that determination without examining the app.

I'll have to reread the notice of missing parts (currently unavailable pending an sb22).

db

[pnlt]

Nice work dbmax.  Your citation is what I needed.

Regards.

[pnlt]

dbmax I think you are confusing 35 USC 157 (which has nothing to do with incoporation by reference) with 37 CFR 1.57 (which does speak to IBR).

So, as you point out, 35 USC 111 paragraph 8 states that sections 115, 131, 135, 157 of 35 USC do not apply to provisional applications. But 115 relates to oaths; 131 relates to examination; 135 relates to interferences and 157 relates to statutory invention registration.  None of those sections speak to Incorporation by Reference.

So, I find no restriction on using Incorporation By Reference in provisional applications.  Let me know if I a missing something.

Thanks

[dbmax]

dbmax I think you are confusing 35 USC 157 (which has nothing to do with incoporation by reference) with 37 CFR 1.57 (which does speak to IBR).

pnlt,

Once again I am guilty of reading too fast.

Many Thanks

FWIW, The PTO's apparent rescinding of the filing date seemed to be based solely on the lack of drawings in the filed app. So long as the app has at least one drawing, the PTO does not rescind the date, but merely warns the applicant regarding any apparently missing drawings. The Office action in my case was silent regarding IBR.... it simply ignored the reference.

db

[NJ Patent1]

Doesn't 1.53 give an answer?  "A provisional cannot be amended except ..."  Amendment to expressly include properly incorporated matter to  meet 111(b)(1)(B) would appear to fit-in.  No? 

[dbmax]

Doesn't 1.53 give an answer?  "A provisional cannot be amended except ..."  Amendment to expressly include properly incorporated matter to  meet 111(b)(1)(B) would appear to fit-in.  No? 

Hi NJP,

That would be correct if an incorporation by reference required an amendment. But an IBR included in the spec as filed (ala rule 57(b)) is not an amendment.

If insertion (ala 37 CFR 1.57(c)) were required, then that would require an amendment which would make your observation correct.

Absent such a requirement, an incorporation by reference would seem to be just that. No insertion should be required. Rule 57(g) should prevail.

Surely I am missing something...

db

[NJ Patent1]

db: I posted a long - and hopefully thought-out reply - only to find out that I 'timed out and lost it'    Here's the condensed version.

No, I don't think you necessarily missed anything.  I was using reverse (perverted?) logic.  112 matter is required to comply w/ the patent statute.  You can amend the provisional to comply w/ statute and regs (but not if needed to preserve filing date for particular matter).  So, if a provi can be amended to comply and if an app can be amended - in circumstances - to literally include IBR'd matter, then you could, today, amend the provi to literally include the IBR'd matter bcs it is needed to 'comply with the patent statute (112) and the regs, it's "there" already - just in shorthand form.  I see the question as, "could the provi stand on it's own two feet", based on the spec and the ken of the PHOSA - which includes issued US pats and app publications - on the filing date wrt what you eventually claim.  Have no idea if my reverse logic holds water.  But I'm not aware of statute, reg, or case law that defeats it.  How did you get into this pickle? 

[NJ Patent1]

db, nlpt: A more expensive solution if ur against the wall?  File a regular utility where IBR is clearly - within proscribed limits - allowed - and then convert w/in 12 months to a provisional.  If IBR was OK when reg utility was filed, why would "conversion" affect this?