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[Prabhjot S. Arora]

Hello all,
           I want to know that can different claims of an application can have different priority dates.
For examle if all claims in non provisional application are not enabled by the specifications provided in provisional application, but are enabled by specifications provided in non provisional application , the priority of all claims (full application) is lost or only those claims that are not enabled by provisional application.

Prabhjot S. Arora
India

[M. Arthur Auslander]

Dear Mr. Arora,

As I understand your inquiry, if you file a continuation in part application, there can be claims having priority as to the original application and new claims having priority in the continuation in part.

[Prabhjot S. Arora]

Dear Mr. Auslander,
               Thank you for the reply.
As you said, a CIP can have different claims having different priority dates. But is the same also true in case of regular applicaition filed after a provisional application if more information is given in regular application.

Also, if a series of provisional applicaitions have been filed in 12 months after first provisional application, does one need to file only one regular application for these where different claims will have priority dates from dates of filings of corresponding  provisional applications.

Regards,
Prabhjot S. Arora

[JimIvey]

I don't have any authority handy, but I believe the same is true.

I generally don't file provisional applications and don't recommend them, so the issue hasn't come up for me.

Regards.

[prashant]

Dear Mr. Prabhjot,

kindly note that if you are filing the provisional application then you don't give claims (except in US which is again not mandatory) So there doesn't arise a question of having a different priority dates for different claimsand according to me this is applicable only if you file a complete spec. followed bya CIP.

In case of series of prov. spec.(PPA) you can have a priority date of first provisional for all the series provided all the provisional specifications describes the same matter,which you want to claim in complete spec. and offcourse you should file the same with in 12 months from ur first Prov. date ( In India you can have another 3 months of time extention to file a complete spec.)  

secondly people file a series of provisional specifications for the sole reason being ;
That if you are not in a position to file a complete at the end of 12 months of the 1st PPA,then if you had a 2nd spec filed after 2 months you can still abondon ur 1st PPA and have a priority of 2nd PPA where you loose only 2 months,
but if you had not filed the 2nd PPA and are not in a position to file complete at the end of 12 months then you come back to scale Zero and loose the priority date once for all.
In short the Series of filing PPA gives you a 2nd option to have a Priority date which can be just 2-3 months later.  
I hope this answers your query but again this may not completely information

regards
Prashant  

[Isaac]

The claims in an application claiming priority from a provisional
(PAP) can definitely have differing priority dates.

There is no requirement that the non provisional have the
same disclosure as the PPA.  If the disclosures differ
it is possible that some of the claims in then non provisional would
not be supported under 35 USC 112 based on the disclosure in the
PAP.  Unsupported claims will not get the priority date of the
PAP, while supported claims will be able to claim priority.

If you file a series of provisionals, it is possible that there
could be a series of varying priority dates for the claims.

Take a look at some patents.  You should be able to find some that
claim priority from multiple PAPs.

[prashant]

Dear Mr Clark
In case of Product patents: does that mean that you can broden your Markush Str. disclosed in the PPA when you file a complete spec. wherein you will have a priority for the initial disclosed markush Str. as that of the PPA date and for the rest which is newly added to the markush str.will not get the priority.

and in case of series of PPA,what is the actual reason of filing a series of PPA and whether it is advisable to do so?
regards
Prashant

[Isaac]

As far as advisability, first you have to reach the threshold question of
whether a PAP is advisable.  There are good reasons not to
use them.  I am not as adamant about it as some of the other posters
here, but I also have less experience than some of them.

A reason for filing a series of provisionals is that you
have a series of points of novelty that you would like to disclose.
To the extent that your provisionals are complete, you can
establish priority from the earliest one that suitable discloses
the invention you intend to claim.

Let's say you have to make a presentation or publish an article.
You file a PAP.  A few months later you have added detail to your presentation.
File another PAP.  When you file your non provisional, you can
claim US priority to all of those provisionals.  For claims
where the oldest provisional is sufficient, you get priority
from the oldest provisional.   But even for the othe claims,
maybe you can get priority only a couple of months later instead of
having to rely on your non provisional filing date.

[JSonnabend]

Isaac's explanation of the advantages of having several provisional filings is a good one, I believe.  A colleague of mine describes it as creating a "cookbook" of disclosures from which one may ultimately assemble a non-provisional application.

That being said, if one files a provisional application having a bare-bones disclosure as a menas of saving money,  then he isn't saving anything.  He is simply wasting both time and money.

[JimIvey]

... if one files a provisional application having a bare-bones disclosure as a menas of saving money,  then he isn't saving anything.  He is simply wasting both time and money.

Well said.

[eric stasik]

¨".. if one files a provisional application having a bare-bones disclosure as a menas of saving money,  then he isn't saving anything.  He is simply wasting both time and money."

In principle I completely agree with both Jsonnabend and Mr. Ivey about the risks involved with filing a provisional application. A provisional application is not a low cost replacement for a regular application for patent.

But neither is it always a total waste of time and money.

A provisional filing gives the inventor a priority date for the material disclosed in the provisional application. This can have significant value.

In the United States inventors have a one-year "grace period" after a public disclosure to seek patent protection so an applicant is not harmed by presenting his idea before applying for a patent.

But in the rest of the world, novely is absolute. Once you disclose your idea you sacrifice all rights to apply for a patent on it afterwards. This is an absolute, statutory bar which has very few exceptions.

With this in mind, the provisional application can be a way to preserve novelty. Even if the provisional application is bare bones - as long as you don't disclose to the public anything more than those bare bones an inventor who has filed a provisional application preserves his right to apply for a patent on those bare bones. In some special - but not at all unusual - circumstances this can be a substantial benefit.

Of course it is always best to file a regular application for patent, but poor planning often forces you to make compromises.

When the issue is a pending public disclosure and you are interested in preserving your rights outside the United States, it is better to file something provisionally than to file nothing at all.

Regards,

eric stasik

[JSonnabend]

an inventor who has filed a provisional application preserves his right to apply for a patent on those bare bones

Which is fine, assuming that the "bare bones" themselves are patentable, which they rarely are, in my experience.

I didn't follow the remark about "absolute novelty".  Are you saying that the EU and other countries do not have a non-obviousness test for patentability?

[eric stasik]

Jsonnabend,

Novelty has nothing to do with obviousness. Article 54  of the EPC states:

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

http://www.european-patent-office.org/legal/epc/e/ar54.html

(In Europe, obviousness is referred to as inventive step, and it is largely similar to US law:

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.....

http://www.european-patent-office.org/legal/epc/e/ar56.html)

Similar national laws exist throughout Europe.

The key phrase regarding novelty is "before the date of filing of the European patent application."

Even if it is not possible to get a patent on the bare bones specification, you still receive the benefit of priority if you decide to file a later more detailed application that is possible to patent.

What filing the provisional buys you is protection against having a disclosure of the "bare bones" count against you.

For example a contribution to a standardisation body would not satisfy all the requirements for a patent application in the US or EPO, but if I am making a presentation to ETSI tomorrow and I do not want to risk that the presentation becomes a novely destroying event, filing a provisional application (or ofullständig ansökan - an incomplete application in Swedish) gives me a priority date for all the material that is to be made public prior to the date of presentation.

When I file a regular application at a later date, I may need to add additional detail so I will have in effect two priority dates (which was what the original topic of this thread was.) But big deal. By filing the provisional at the last minute, I am reasonably assured that the submission to ETSI cannot be used to argue that the patent is invalid.

It is an unusual event, that happens all the time due to poor planning, etc.

This was certainly not what the provisional application was intended for, but it is one way that it can be used to advantage.

regards,

eric stasik

[JimIvey]

Mr. Stasik,

Being in Europe and being familiar with EPO practice, maybe you can clarify some understandings (misunderstandings?) I have.

First, I understand the US is unique in its requirement of disclosing the best mode contemplated by the inventors for carrying out the invention.  One of the most likely missing components of a provisional application is the best mode.  In particular, EPO doesn't require disclosure of the "best mode."

Second, my understanding is that, for sufficiency as a priority document, a US patent application must satisfy requirements for a US patent (e.g., the adequacy of disclosure is measured under US, not EPO, law).  Consider the absence of "best mode" in the priority document.  It fails under US law but might pass muster under EPO law.

If I file in Europe claiming priority on an application in the US which fails to meet the best mode requirement, or any other requirement for patentability in the US, does that affect the legitimacy of my European application?  

My guess:  it doesn't get checked carefully during prosecution but can be used to invalidate an EPO patent in litigation.

Third, my understanding is that Europe is very strict on changes an applicant can make after filing of an application.  How closely are changes between a US priority document and the EPO application scrutinized?  Are changes between the two sufficient grounds to challenge validity of an EPO application/patent?

My guess: same as above.

If I can throw up some laughably inadequate provisoinal application (under US disclosure requirements) and have one full year to fill in the details after a bar date in the EPO (or anywhere else in the world), I may retract my frequent statement that provisional applications are a complete waste of time and money.

Let me end with this question:  can I file a provisional application without meeting the best mode requirement then file an EPO application without the best mode requirement.  What that may give me is the ability to file a non-provisional application here and request non-publication (keeping the best mode secret for as long as possible).  I suspect that won't work, but I'd have to look up the specific laws/rules about requesting non-publication to be sure -- it depends on whether the law hangs on foreign applications for the "same invention" or specifically on claiming priority (priority would have branched earlier and might work to sever the publication obligation).

I look forward to any clarification you can provide.

Regards.

[eric stasik]

Mr. Ivey,

Let me try to answer your questions.

"First, I understand the US is unique in its requirement of disclosing the best mode contemplated by the inventors for carrying out the invention.  One of the most likely missing components of a provisional application is the best mode.  In particular, EPO doesn't require disclosure of the "best mode."

As far as I know, no other country has a requirement that a "best mode" be disclosed. (BTW - The AIPLA in their answer to the National Science Academies report proposes doing away with the best mode.)

"Second, my understanding is that, for sufficiency as a priority document, a US patent application must satisfy requirements for a US patent (e.g., the adequacy of disclosure is measured under US, not EPO, law).  Consider the absence of "best mode" in the priority document.  It fails under US law but might pass muster under EPO law."

I believe that under Paris Convention Rules priority has to be extended to any document that meets the requirements for priority in the country where priority is claimed. This was the what the EPO concluded when they announced that they would accept US provisional applications as priority documents even though they are not applications for patent per se. If the US extends priority, then under Paris Convention so must the EPO.

"If I file in Europe claiming priority on an application in the US which fails to meet the best mode requirement, or any other requirement for patentability in the US, does that affect the legitimacy of my European application?"

Well, what happens in the US if you file a provisional application that fails to meet best mode requirements?

It is my understanding that you can still augment the specification when you file the regular application and claim in effect two priority dates. The fact that the provisional application is defective as a patent application doesn't obviate the the provisional filing date and the regular application is treated henceforth as  as CIP.

It seems to me that as long as you file the augmented US application with the EPO within the priority year of the provisional - exactly as you would do with a US CIP - it is treated as a new application with the same priority dates of the US application. There is no issue with "adding" material to the EPO application.

If there is a flaw in this filing strategy, I will be grateful to be corrected.

I know it is far from an optimal strategy, but inventors often give you no other choice.

Your point about best mode is very well taken. Now I am not even sure if It is a provisional US application meets US requirements!

One thing is certain, the provisional application is going to create a lot of useless case law that we would all probably be better off not having.

Regards,

eric stasik