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[JSonnabend]

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.

That's exactly it.  So where an applicant chose the bare-bones provisional route merely as a cost savings measure, he's in all likelihood going to end up with a priority date of the formal application.  Why file the provisional in the first place?

[JimIvey]

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

As far as I know, no priority for any claimed inventions for which "best mode" is missing.

I hear that this is a huge problem for overseas applicants -- particularly those in Europe (at least that's the context in which I heard of this problem).  If you want the benefit of priority in the US from your earlier-filed EPO application, you have to have included your "best mode" in your EPO application.  Adding the best mode in the US application is "new matter" and deprives you of your priority date for the new matter, i.e., the added best mode.

I'm not sure how this would play out in the USPTO, but it could very likely play a role in challenging patent invalidity in court.  

So, it looks like my understandings were correct.  Or am I missing something?

Regards.

[Isaac]

I'm kinda curious about the best mode issue when a provisional
is involved.  My first question is whether the best mode is
required to be as of filing or as of the priority date.  It
is possible that the best mode for those two dates, 1 year
apart might be different.

Also assuming that the provisional is filed reasonably soon
after conception, is a challenge of best mode grounds going
to be feasible anyway?   Even if the applicant begins practicing
some obviously superior mode prior to filing the non provisional, he
can always add the description when he files time.  As long as the new material
is not required to support a claim, the claim would still get the
priority date.

[JimIvey]

My understanding is that there are no special, relaxed disclosure standards for provisional applications.  Accordingly, if you really need the priority date (e.g., because of prior art and/or bar dates), you had better treat the follow-up non-provisional as a continuation/divisional rather than a CIP.  In other words, don't be too free and loose with adding new material, including best mode.

On the other hand, if you don't really need the provisional's priority date, why did you file it?

With respect to the best mode question, I believe there was a case a few years back that required updating best mode when filing a CIP -- apparently, if you decide to add new stuff, you have to fill in all the best mode stuff for all clamed embodiments, not just the new ones.  

Now, I honestly don't remember if it was a Fed. Cir. case or a district court, so I don't know exactly how authoritative that was.  I'm not sure I buy the reasoning.  An applicant may want to avoiding changing the old part at all to avoid losing the earlier filing date for that material.  It would not surprise me at all for an examiner to very strictly apply the latter filing date for any component for which any text was modified -- even if only to update the best mode.  

Regards.

[eric stasik]

Hi All,

Mr. Ivey wrote:

"As far as I know, no priority for any claimed inventions for which "best mode" is missing."

But if I understand all of this correctly this does not wipe away the priority date for the material contained in the provisional appliction. Let me explain.

Let's say that I have come up with a method

a) doing this
b) doing that
c) doing the other thing

as a solution to some problem in a communications standard. I want to make a proposal to the IEEE tomorrow, but since I have been told to get all my inventions patented before disclosure, (and it's 3 in the afternoon and I want to go home early,) I walk by my company's patent department and leave them the full complete text i will make public at 0900 the next morning.

Having no choice, they accept it. And I go home.

Unless the attorney/agent is prepared in advance with boilerplate, it will be difficult to draft a regular application  from the two page disclosure I handed in.

What does he do?

My suggestion is that he file what he has as a provisional US application thereby securing a priority date for the material contained in the disclosure.

After 11 months the invention has been slightly modified as follows:

a) doing this
b) doing that
c) doing the other thing
d) repeat

Repeat was not disclosed in the original provisional application.

My patent attorney/agent re-writes the provisional application to fully comply with US standards (and to include the additional element d). He files an application with the USPTO claiming priority to the provisional application. My US application has effectively two priority dates: one for the material contained in the original application and another containing the material added at the time of filing. (Just like a CIP.)

At the same time, my attorney files the regular application with the EPO claiming priority under the Paris Convention to the US provisional AND the regular US application. This has to be done within the priority year.

The result is that the SAME regular application pending at the USPTO is now pending at the EPO. Since best mode is not required by the EPO and the disclosure requirements somewhat less stringent, I run fewer risks at the EPO than at the USPTO.

Since the EPO application claims a priority date for a, b, c the day before a, b, c was made public, this cannot be considered prior art, or as a statutory bar to the EPO application.

In the US you don't have to do this. The law gives you one year to file after public disclosure. In the rest of the world, however, public disclosure is an absolute bar (with some limited exceptions) and that it what makes this an attractive if somewhat messy option.

At least that's how I understand it. I would be very grateful for comments on this to correct any misunderstanding I might have.

regards,

eric stasik

[eric stasik]

That's exactly it.  So where an applicant chose the bare-bones provisional route merely as a cost savings measure, he's in all likelihood going to end up with a priority date of the formal application.  Why file the provisional in the first place?

JSonnabend you are exactly right. Where the applicant chose the bare-bones route as a cost savings measure, he is saving nothing and probably screwing himself. Why do people do this? Because they are receiving self-serving advice from their agent/attorney.

But in the not so unusual circumstance that I described above, the applicant is not trying to save money, he is saving the chance to apply for a patent. As nearly everyone in this thread has pointed out there are lots of potential problems with a provisional application, but it seems to me that all of these are far more fuzzy than the clear, unambiguous statutory bar of EPC Article 54(2).

Regards,

eric stasik

[Isaac]

Generally speaking, the examiner is not in a position to be
applying the "best mode" requirement.  Doing so requires
sorting out what the inventor believes his best mode to be
and deciding that it isn't in the application.  It's a completely
subjective requirement that the examiner is not likely to
have the evidence to evaluate.

When the applicant adds new material to a non provisional, and
I would expect that is what usually happens, it is not clear to
me that adding a best mode embodiment at that time would be wrong, but
it sure isn't going to be caught by the examiner.  The court case you
alluded to suggests that adding the best mode at the time of adding
new matter is what's expected.

But as far as determining which claims are supported, the examiner is
going to be looking at enablement and description.

[JSonnabend]

But as far as determining which claims are supported, the examiner is
going to be looking at enablement and description.

Without doing the research, I believe this is the correct statement of the law, particularly with regard to enablement.  While one would, at the very least, be well advised to add the new best mode in the CIP, for purposes of priority date, I believe one only needs to provide an enabling disclosure (and the related notion of proper description).

[JimIvey]

I've actually had examiners assert failure to disclose best mode as grounds for rejection.  I don't remember how I responded, but I wondered how the examiner made such a determination, being a subjective standard and all.  Large disparities in the degree of detail in various parts of the application can suggest that there may be undisclosed best mode issues in the thinly described parts.  But it's difficult to effectively evaluate.

As for Mr. Stasik's example, I suspect the IEEE manuscript fails to disclose the best mode for steps (a)-(c).  It may also fail to be enabling if the IEEE article is written to those of exceptional skill in the art rather than those of ordinary skill in the art, or it may simply be lacking in one crucial area if the article is narrow in focus at all.  

In the US, it doesn't come up because you don't need the provisional date for US novelty.  In the EPO, it comes down to what the requirements are for a priority document in the EPO.  My understanding is that sufficiency of the application for priority under the Paris Convention is measured using the laws of the country in which the priority document was filed.  Therefore, if the provisional is insufficient for US priority (even if not needed), it's insufficient for EPO priority.  What I don't know is how carefully that's scrutinized by the EPO.

As Dirty Harry says, "You got to ask yourself one question: 'Do I feel lucky?'"

For what it's worth, I'd tell the engineer in Mr. Stasik's hypothetical that it's too late and all I can do is preserve the right to argue about it later, but no guarantees that the filing will be sufficient.  So, do I file the provisional?  Of course.  Well, I'd probably try to include at least one claim and make it non-provisional to avoid the assumption that the disclosure is insufficient (I'm inclined to make such an assumption if the provisional differs from the subsequent non-provisional in any significant way).  But that is certainly not a recommended procedure.  

I don't see provisional applications as an advisable standard operating procedure unless you believe the value of the patent would be greater at the end of its term rather than the beginning.  I see provisional applications largely as band-aids and they appear as such to me.

I'm happy to hear any thoughts on that.

Regards.

[eric stasik]

As for Mr. Stasik's example, I suspect the IEEE manuscript fails to disclose the best mode for steps (a)-(c).  It may also fail to be enabling if the IEEE article is written to those of exceptional skill in the art rather than those of ordinary skill in the art, or it may simply be lacking in one crucial area if the article is narrow in focus at all.  

In the US, it doesn't come up because you don't need the provisional date for US novelty.

Mr. Ivey,

I don't think that there is any requirement under Paris Convention that the priority document issue as a patent, or even meet all the requirements necessary to be granted as a patent.

The question is simply one of priority. As long as a US provisional is accepted as a priority document by the USPTO, then it has to be accepted as a priority document by the EPO.

You raise interesting and certainly valid points, but it seems to me that these focus on whether or not a patent will be issued in the US, rather than whether or not the document is accepted by the USPTO as an valid application and henceforth by the EPO.

When the goal is preservation of foreign rights, I think that US applicants might want to consider that there are  potential advantages with filing a provisional application when time does not permit a proper job to be done.

regards,

eric stasik

[JimIvey]

I don't think that there is any requirement under Paris Convention that the priority document ... meet all the requirements necessary to be granted as a patent.

I believe the sufficiency of disclosure of a priority document is measured according to the legal standards of the country in which the priority document is filed.  If I'm wrong, please clarify this issue for me.  If the standard of sufficiency of disclosure for a priority document is less than for a regular application, what is the standard?  In particular, is filing merely a title sufficient?  I don't think it is.

The question is simply one of priority. As long as a US provisional is accepted as a priority document by the USPTO, then it has to be accepted as a priority document by the EPO.

I disagree.  The issue is to what degree the priority date will be applicable to the claims of the subsequent EPO application.  This is what I've been asking about in many different ways.  I'm not getting a clear answer on this, but the clearest answer I've received in this thread is that the sufficiency of the disclosure of the priority document, such that the priority date becomes the effective filing date in the subsequent EPO application, is measured according to the laws of the country in which the priority document was filed.

An ancillary question is, if the US standard appies, how deeply does the EC look into such sufficiency -- during prosecution in the EPO and in enforcement in the courts?

You raise interesting and certainly valid points, but it seems to me that these focus on whether or not a patent will be issued in the US, rather than whether or not the document is accepted by the USPTO as an valid application and henceforth by the EPO.

I can file my California driver's license as a US patent application.  You can file virtually any text and have it be considered a patent application.  "Validity" of a patent application is measured only by Rule 53.  Priority is only meaningful if the priority document disclosed what the subsequent patent application needs.  

It would be nice if the content of a provisional application was completely unrelated to the protection afforded by it, but I honestly don't believe that's the case.  It seems rather clear that the sufficiency of disclosure of the provisional application becomes an issue sooner or later (and, if it doesn't, the PPA was a complete waste of resources).  When that happens, by what standard is the sufficiency measured?

When the goal is preservation of foreign rights, I think that US applicants might want to consider that there are  potential advantages with filing a provisional application when time does not permit a proper job to be done.

"Potential" advantages, maybe.  But it's still a highly risky practice and I still don't recommend it.  Some practitioners seem to think such an approach is no more risky than any other, and I must respectfully disagree.

Regards.

[Ladislao Warcok]

¨"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.

Let me disagree with this Mr. Stasik. The Argentinean Patent Law  contemplates any prior discloser of the invention made by the inventor within a year from the filing date of the appliation. This is pretty much convenient for an inventor who has started with the wrong foot by first showing in some convention his invention before filing a patent about it. However our country is based on "first to file", so if someone else files a patent application based on the showed invention, the real inventor can only submit his  own invention as prior art, but he wont be able to recover his rights to a patent.

[Jonathan]

Since this seems to be a general discussion on provisional patent applications, let me offer up this factual situation I recently encountered. Please offer your thoughts on possible alternative strategies.

I recently conducted an inventor interview relating to a business method invention. Literally one hour before the interview was scheduled to begin, I received a conflicts inquiry from my firm's conflicts department for a very similar matter as my client's invention. A few quick emails later and the other party at my firm decided to not pursue their client's similar matter, thus allowing me to go ahead with my scheduled inventor interview.

I related all this to my client and their general sense that they are not the only company in their particular marketspace and the discovery of the other client prompted me to suggest we file as a provisional as soon as possible, as opposed to a utility application.

I wrote the provisional as I would a utility application but without taking the time to develop a proper claimset. Since the filing, the inventors have reviewed the provisional and we will be filing the utility with rather minimal changes from the provisional. The utility willl have a proper claimset, however.

In this situation, how is it disadvantageous to have filed the provisional application? The inventors were properly advised regarding the utility and best mode requirements and yet thought I captured their invention sufficiently in the provisional.

Looking forward to your comments.

[JimIvey]

In this situation, how is it disadvantageous to have filed the provisional application? The inventors were properly advised regarding the utility and best mode requirements and yet thought I captured their invention sufficiently in the provisional.

One disadvantage is that you might find a partiuclarly useful term to include in the claims that doesn't have proper support in the specification.  For me, this frequently happens when there are multiple embodiments and I look for a claim that covers them all or when it's a challenge to succinctly characterize the claimed invention.  That sometimes results in some linguistic creativity.  Going back to the specification and adding proper support tidies it all up.  Personally, I can't tell you if a specification is complete until I've written a couple of claims.

Conversely, what advantage do you gain by having filed the provisional?  One advantage is the difference in priority dates.  It sounds like the dates weren't that far apart, so it's not likely that the dates will make a difference.  But, as unlikely as it is, I suppose it's possible.

I guess the question to determine the magnitude of that advantage is, how long does it take to add a claim set?  By the time I've written the specification, I can add a fairly thoroughly thought-out set of claims in about 2-3 hours.  It may not be absolutely complete, but fairly well rounded out.  It's very rare that I find myself having to choose between a few claims and even a single day of priority.

My personal opinion is that, if you have the time to write a proper provisional application, you have time to write a non-provisional application.  There are exceptions, but they're rare (how often does 2-3 hours make a difference in the filing date?).

For what it's worth, I don't think the world will stop turning and crash into the moon if you write a provisional application.  I just think the risks aren't justified by any benefits, with one exception -- an invention whose value is greatest at the end of the patent term rather than the beginning.  Pharmaceuticals come to mind as one example.

I hope that's helpful.  I'd be happy to hear any contrary perspectives.

Regards.  

[eric stasik]

I believe the sufficiency of disclosure of a priority document is measured according to the legal standards of the country in which the priority document is filed.  If I'm wrong, please clarify this issue for me.  If the standard of sufficiency of disclosure for a priority document is less than for a regular application, what is the standard?  In particular, is filing merely a title sufficient?  I don't think it is.

Mr. Ivey, I think we are saying the same thing, but coming to different conclusions.

Under the obligations set forth by the Paris Convention, the EPO will accept whatever the USPTO accepts in terms of a priority document.

If the USPTO would accept your California driver's license as a priority document, then so must the EPO - if you properly claim priority when filing your application.

But, of course, this is a ridiculous example.

As you pointed out, 37 CFR 1.53 (c) sets forth the filing requirements for a US provisional application:

"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.

(1) A provisional application must also include the cover sheet required by 1.51(c)(1) or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section."

http://www.bitlaw.com/source/37cfr/1_125.html

The two important clauses are:

"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."

The first paragraph of 35 USC 112 says:

"The specification shall 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 of carrying out his invention."

http://assembler.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000112----000-.html

So if the application must meet the exact same standards regarding sufficiency of disclosure as a regular application - this what Rule 53 suggests - then your opposition to the provisional application based on an insufficiency of disclosure seems to be completely without foundation.

I think we both agree, however, that your basic opposition to provisional patents is well-founded because there is, in practice, a different standard. In most cases a provisional application does not include the lengthy recitations, stilted language,  and annoying repititious paragraphs that US attorneys cram into nearly every US application for patent.  

The lack of legal "refinement" does not necessarily mean that the original disclosure does not meet the "bare bones" requirement of 35 USC 112, but it may very well limit what can be done during prosecution and may also overly restrict the scope of the claims that are available to the inventor - as you suggest in your previous reply to jkudla.

Fortunately, the second clause seems to anticipate this:

"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."

This tells me that I have wide lattitude in what I can do once the provisional is filed. And it also tells me that there is a deep black hole waiting to be filled with judicial interpretations of what all this means.

Ignoring the example of the driver's license and imagining a more realistic situation of a complex technical contribution where the disclosure satisfies "bare bones" sufficiency although it is clearly not in the form of a regular application for patent - what do you do?

Well, priority is both a sword and a shield. Absolute novelty requires a shield in the form of a filing date. Nothing else will do.

What I am suggesting is that if you have a document that meets the absolute minimum standards to be accepted by the USPTO as a priority document - and you have essentially no time before the document is to be made public - and you wish to preserve your rights abroad - then filing a US provisional application may make sense for you.

For the most part, I think we agree that provisional applications are to be avoided, but in these unique - but not at all unusual - circumstances they may have some substantial value.

Mr. Warcok - I did not know that Argentina also allowed a one-year grace period. This is why I participate here - to llearn new things and to be corrected about misconceptions like this. Thank you for your correction.

regards,

eric stasik