Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[dbmax]

How did you get into this pickle? 

In a competitive race to file, I took a presumably legal shortcut and got nailed.

If I had filed just one drawing the office would not have withheld the filing date.

The PTO does not review priority claims or IBC claims, even on NPAs, so they are pretending not to know the IBR claim is there.

The petitions office wants $400 :
1) To tell me about some hidden rule barring IBC in provisional apps, or
2) To let me tell them about the IBR claim in the spec or
3) To let me tell them why my spec does not need drawings.

I'll try to get some better input from the PTO before I risk the $400.

[2ndcareer]

My stab at the issue:  Seems to me that you are attempting to avoid filing drawings in a provisional app by using IBR.

However, 37 CFR 1.57 states, “ Essential material ” MAY be incorporated by reference.  But this rule does not contradict NOR exempt the requirement for drawings, where they are necessary for understanding.  In other words, the IBR rule says "MAY incorporate subject matter by reference", but the provisional app rule say, You need drawings where necessary for understanding.  the 2 rules don't contradict each other.

The rational for 37 CFR 1.57 IBR is to save the mountains of paper work in the initial filing, if the material is already described in another publication, to make it easier for the applicant to file the application.  But it is not designed to bypass basic filing requirements.

The general rule for drawings is you will likely need to file drawings, unless the invention can be shown without drawings.

The ONLY situation where I have seen drawings not needed, is in the chemical or DNA related inventions, where the chemical compound or DNA sequence can be represented in formula's (which can be included in the written description and in the claims, without needing drawings). 

[NJ Patent1]

db:  Unfortunately, I can't think of a way to get out of this without paying money.  I might take a "belts-and-suspenders" approach bcs, as of this minute, the client doesn't have a filing date and may be behind in the "race".  Secondcareer makes a good point (unfortunately). 

One option, file another provisional today ($, I know) with the figures and nail-down "a" date.  File the petition w/ statement that drawings are not necessary (more $).  In my view, the two positions are not necessarily contradictory; in Applicant's view, the dawings are "helpful" but not "necessary" to understanding?  Within 1 year of the filing date of PA1 (if petition granted), file regular utility claiming the benefit of both PAs, and "kick the can down the road".  If the benefit of the PA1 date is questioned, argue the IBR at that point? 

Option two, riskier. File the petition w/ statement drawings not necessary and get a date.  If the Office later disagrees and requires drawings, submit them and argue that they are not new matter based on the IBR, you just disagreed that the drawings were "necessary".  (With serial number and date in hand, you might try to amend PA1, but you'd be talking out of both sides of your mouth, "Catch 22")

We all make mistakes.  It's good to share them.  Good luck!

[2ndcareer]

I would add that it's very risky not having drawings (at least 1 for each embodiment claimed).

Even if you have to hand draw them, it's better to do it and send it in for the filing.  You can always amend later to get the better form in.

I personally cannot conceive of a situation where a provisional app's "essential material" by entirety are completely described by a US Patent or US Patent Publication (thus allowing IBR drawings alone to describe the entire provisional app).  I mean, if that is the case, what's distinct about the provisional app?

You would be setting yourself up for 102(a) rejections (or 103(a) based upon 102(a) references), ie. the entirety of your invention was already described by drawings from previously published US patents and applications.  And if there are distinct features of your provisional app that's not in the IBR drawings, then you need to file new drawings.  If you don't, it would be very easy for examiners to later object to "new matters".

(Short cuts are often rejected, because they are "inherently" dangerous).  Patent geek humor.

[dbmax]

I personally cannot conceive of a situation where a provisional app's [drawings] are completely described by a US Patent or US Patent Publication (thus allowing IBR drawings alone to describe the entire provisional app).  I mean, if that is the case, what's distinct about the provisional app?

Whatever is added to the specification is distinct.

[2ndcareer]

"Whatever is added to the specification is distinct."

That might be true, but if the distinctive feature is not reflected in the drawing, then the drawings are not sufficient.  I believe there is a rule about essential features must be shown in the drawings.

[dbmax]

But [Rule 57] is not designed to bypass basic filing requirements.

The stature authorizes the rule at 35 USC 2.

Rules 57(b) and 57(c) clearly provides for incorporation of "essential matter" by reference to a prior published US app.

If drawings qualify as "essential matter" then drawings incorporated by reference are "furnished" in accordance with USC 113. 

But "essential matter" is defined in Rule 57 according to the first, second, and sixth paragraphs of 35 USC 112, which relate to a "written description".

So you are at least partially correct, in that Rule 57 appears not to be designed to furnish a drawing according to 35 USC 113.  Or, at least I am not willing to risk $400 arguing that it is.

Many Thanks,

db

[NJ Patent1]

Secondcareer, dbmax:  That is also (almost) my understanding; elements in the claims of a mechanical app must be shown and ‘tagged’ in the figures?  But who claims “non-essential” stuff in the major independent claims anyway?  It is also my understanding that drawings can be amended based on the text of the W/D and vice versa. 

The question of adding drawings to a provisional by way of IBR appears to be “a question of first impression” for most of us posting in this thread.  Nobody has offered statutory or CCPA/CAFC authority on point.  For what it’s worth, I consuled two former colleagues at “big IP law” in NYC.  No concrete answer. 

It appears that db’s ultimate conundrum is: “is the invention as described in the spec, sans drawings, enabled? Or is the disclosure “otherwise inadequate”? (sec. 113(i), referenced in sec. 111(b)(1)(B) that I think Second alluded to in a prior post).  I have no idea what “otherwise inadequate” means in sec. 113(i).  Insufficient W/D or failure to disclose best mode?  Dunno.  We have two different words here: understand and enable.  Can one “enable” an invention that can’t be “understood”?  For purposes of “in the manner required by section 112”, only enable appears in 112.  A drawing is a filing "requirement" only if sec 113 makes it one.  The dog seems to be chasing its tail. 

Anyway, db has a live problem that I’d like to help “fix” as far as possible. Maybe he’ll reciprocate some day  .  Other than the suggestions I mentioned, any other ideas?  Are my thoughts disingenuous? 

[dbmax]

Anyway, db has a live problem that I’d like to help “fix” as far as possible.

NJP,

I fixed my problem weeks ago by refiling, and taking a few weeks hit on the filing date. In this case it probably wont matter.

The OP had a somewhat different question regarding IBR in general with regard to a provisional, but he didn't mention drawings. I'm not certain my experience is on point for the OP.

You, 2ndCareer, and others have helped me to thrash though the law with wild abandon.

Many thanks,

db

(still not an atty)

 

[NJ Patent1]

db:  Yea, good move, that's what I wudda done. Get a date certain.   Not atty?  Why not?  You seem to do well at parsing statutes and regs  .  Liked ur citation to first clause of 103.  The OP remains w/o closure.  For all reasons discussed, I bet "yes, IBR in a provi is per se OK".  Whether it works for figures remains ?     

[2ndcareer]

I doubt there would be case laws on these points, since the CFR's are rules, not laws.  Because they are rules, the interpretation would almost be entirely up to the PTO, unless a specific interpretation was found to be violating the laws.

I would agree that IBR is OK per se in a provisional app, but I would definitely say IBR cannot be used to exempt the drawing requirement in a provisional.  As I stated earlier, the IBR rule is different from the drawing requirement, and shouldn't be interpreted as allowing a complete exemption of drawings.  Yes, one can amend the Nonprovisional later to add drawings, based upon what is in the W/D, but EVEN assuming that one is capable of completely describing the invention in the W/D alone without any drawings, the drawing requirement still stands.

MPEP 601.01(f)  [R-7]   Applications Filed Without Drawings, appears to provide some narrow exceptions to where drawings are NOT required for filing, IBR is not among the exceptions.  (AND, applicant face 2 hurdles in the determination of whether drawings are necessary, if no drawings are filed.  OPAP 1st determines, and if OPAP determines NO drawings are necessary, specific Tech center may later override OPAP and determine that drawings are necessary, which would force PTO to "reconsider the filing date issue".)

In a way, IBR's in the Provisional App is kinda like applicant admitting that YES, I'm incorporating these previous App's, which all needed drawings, but no, I'm not filing the drawings, because you don't need them to understand.

I think the key distinction is between "necessary to understand" vs. "you already have them by IBR".  If you put in IBR, then you are saying to the PTO that you should have these drawings by reference, but that STILL means that the drawings are "necessary for understanding".

Then PTO will simply reply, you already have the drawings from the IBR,  just file them.

[2ndcareer]

Also, I wouldn't worry too much about your Provisional Filing date.

You have already established enough record in the PTO to swear back your priority date, if need be.

[dbmax]

You have already established enough record in the PTO to swear back your priority date, if need be.

Thanks, that was my thought. (Presumably an abandoned app can establish invention if followed shortly by reduction)

A final thought. If the drawings are not 1.57(c) "essential matter" then they are 1.57(d) "other matter," and are arguably "furnished" according to 113 by IBR according to 1.57(b).

Rule 57(b) requires that "an incorporation by reference must be set forth in the specification", but I cannot believe any court would read this as a requirement that the material incorporated be verbal.

According to 35 USC 111(b)4: "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." Hmm...Received, furnished, incorporated...

db
(Not an atty)

[dbmax]

Not atty?  Why not? 

Never went to law school. Just a lowly pro se.

Thanks for the help and the kind words.

db