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[JSonnabend]

Eric -

I've been following this thread with great interest, and appreciate the discussion between you and Jim.  

One quick question: are you saying that a US provisional which lacks an enabling disclosure for an invention ultimately claimed provides a benefit to an applicant for EPO purposes?

- Jeff

[eric stasik]

Eric -

I've been following this thread with great interest, and appreciate the discussion between you and Jim.  

One quick question: are you saying that a US provisional which lacks an enabling disclosure for an invention ultimately claimed provides a benefit to an applicant for EPO purposes?

- Jeff

In one word: no.

Mr. Ivey is correct that a US provisional application that fails to meet the requirements of 37CFR§53(c) is not a priority document according to US law.

What I have been trying to point out (unsuccessfully I suppose) is that there is a difference between what qualifies as a priority document under 37 CFR § 53(c), what it needed to satisfy the patent statute, and what would be considered a well-written application for patent.

In sofar as sufficiency of disclosure, if you do not meet the basic, minimum requirements of 35 USC § 112 paragraph 1 then you can't file a provisional application. Period.

But as any patent attorney/agent knows there are logarithmic differences between meeting the sufficiency of disclosure requirements of 35 USC§112, what is required to satisfy all the requirements of the US patent statute, and what would be considered a well-written, regular application for patent.

Considering that EPO requirements for enablement are generally somewhat lower than in the US, and there is no requirement to disclose the "best mode" a provisional application that met US requirements would almost certainly satisfy EPO requirements.

So what happens at the EPO if at a later stage if the US application (which may meet EPO requirements) is rejected by the USPTO based on insufficiency of disclosure in the provisional application according to tougher US standards? Well, your guess is as good as mine. I am not aware of any case where this has been tested. As I said, the US provisional application is a big black hole waiting to be filled with judicial interpretation.

Where I entered this thread was to refute the black and white statement that US provisional applications are always a waste of time and money. This is simply untrue.

In addition to their intended purpose of allowing foreign applicants to establish an earlier date of priority "in this country" (which is vital to become prior art to other pending US applications) there are also other instances - such as those I have described in this thread - where it may make sense.

Moreover, in certain situations, going the "provisional" route can serve important strategic and tactical purposes, but this is something I will share in another thread.

I am by no means suggesting that you can get something for nothing, but it is certain that if you fail to secure a priority date before disclosing your invention to the public, then nothing is what you will be able to get in most other countries of the world.

regards,

eric stasik

[JimIvey]

In sofar as sufficiency of disclosure, if you do not meet the basic, minimum requirements of 35 USC § 112 paragraph 1 then you can't file a provisional application. Period.

This is really the heart of the matter.  

Just as a preliminary matter, I don't think there's any bar to filing a provisional application that fails to meet the requirements of § 112 (enablement and best mode).  It just won't provide the priority effect intended by the filing.  Here's 35 USC § 112 paragraph 1:

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.

(emphasis supplied)  In a provisional application, what is "the invention?"  Since the invention is defined by the claims, a provisional application has no "invention."  

It is therefore quite clear (to me, at least) that "validity" of a provisional application as a priority document is determined once there is an "invention" and that only happens with the filing of an application (US or otherwise) which includes at least one claim.  How is the "validity" (compliance with 35 USC § 112 paragraph 1) measured?  You look at the sufficiency of the disclosure of the provisional application in supporting the claims of the subsequent application.

I honestly don't believe one can determine compliance with 35 USC § 112 paragraph 1 without having at least one claim in hand.  In fact, the USPTO won't even look at that until you file your non-provisional application.

So, back to my original question, to what degree does the EPO consider compliance of a US provisional application with 35 USC § 112 paragraph 1 under US law?  Do they consider "best mode?"  Put another way and aimed directly at what other practitioners seem to implicitly believe, is there any justification to believe that a provisional application which might be inadequate under 35 USC § 112 paragraph 1 in US law be sufficient in the EPO (or any other country under the Paris Convention)?

Mr. Stasik mentioned "bare bones" compliance with Section 112.  That sounds to me to be a bit like being "bare bones" pregnant.  You either comply or you don't.  As far as I know, there's no sliding scale of compliance with Section 112 -- i.e., "does the application comply very much, a good amount, an average amount, barely, or not at all?".  If the provisional application complies with Section 112 (assuming the claims were known), then there's no reason to not file the application as a non-provisional one.  If you're worried that the application might not meet S 112 p1, then filing a provisional rather than non-provisional shouldn't alleviate those worries.

My position comes down to the following:  you either need the priority date or you don't.  If you need it, a provisional application is frequently (though not always) inadequate.  If you don't need it, a provisional application is entirely superfluous.

Thanks.

[eric stasik]

Mr. Stasik mentioned "bare bones" compliance with Section 112.  That sounds to me to be a bit like being "bare bones" pregnant.  You either comply or you don't.  As far as I know, there's no sliding scale of compliance with Section 112 -- i.e., "does the application comply very much, a good amount, an average amount, barely, or not at all?".  

Here are the three degrees of "pregnant:"

a) 37 CFR § 1.53(c), 35 USC § 112, paragraph 1 may be completely satisfied by an an engineer's description of a single embodiment of an invention.

b) the other 5 paragraphs of 35 USC § 112 have to be attended to before one can file a regular application for patents. background, summary of the invention, claims, additional drawings, etc. must be added to make the application filed under a) a regular proper application for patent.

c) a good attorney will include other embodiments or additional technical specification in order to provide a greater degree of freedom during prosecution.

There is a great deal of difference between these three levels - the provisional, the regular application for patent, and the well-written application for patent. A logarithmic difference. (and you get what you pay for)

Neverthless, "a)" I believe, is a valid priority document according to US law and practice and it should be accepted as such by the EPO and all other members of the Paris Convention.

As such I believe it is a mistake to abort child a) simply because you do not have time to achieve pregnancy b) or c).

Sorry, your analogy.

Regards,

eric stasik

[JimIvey]

b) the other 5 paragraphs of 35 USC § 112 have to be attended to before one can file a regular application for patents. background, summary of the invention, claims, additional drawings, etc. must be added to make the application filed under a) a regular proper application for patent.

The other 5 paragraphs of S 112 pertain to claims only.  I don't think limitation to paragraph 1 of S 112 foregives the need to include any of the sections you named (other than the claims).

Including any of those things after the priority date can result in loss of that priority date.

c) a good attorney will include other embodiments or additional technical specification in order to provide a greater degree of freedom during prosecution.

And none of those other embodiments will benefit from the priority date (in the US or, presumably, anywhere else) to the extent they are "new matter" filed subsequent to the priority date.

As such I believe it is a mistake to abort [an application] a) simply because you do not have time to achieve [sufficient disclosure for] b) or c).

Well, I never advocated abandoning the application.  My recommendation is to file a non-provisional application and fill in any shortcomings (e.g., failure to cover things as broadly as the applicant would have liked) with amendments to the claims and/or in a CIP.  

I'm not saying that emergencies never happen and that practitioners are never forced to compromise and choose between a perfect application and an application filed on time.  

What I'm railing against are cases in which I hear of practitioners telling clients that, since there's only two weeks to write the application, they'll just file a provisional application.  Some have said that one month is too short to file a non-provisional application.  That's inexcusable in my opinion and I've had more than one case transferred to me from a client after asking me what I thought about that approach.  I honestly can't believe that an attorney can't find an extra day or two to make a full and complete application within a month's time.  If they can't, they should have declined that representation.

Another thing that gets my britches in a bunch is hearing pro se (self-represented) applicants say, "oh, I'll just throw together a quick provisional application and that will protect me."  That's simply not true.

For what it's worth, a number of professional practitioners describe paying careful attention to sufficiency of a provisional application under S 112, p1.  Doing that should result in about a 95% complete application.  Absent an extremely tight timeline, I don't see that foregoing the remaining 5% justifies the attendant risks.

In short, I perceive a general consensus that provisionals are "good enough."  Some practitioners treat them like filing an extension for filing a tax return.  There's a casualness in many practitioners' approaches to provisional applications that fail to acknowledge that provisional applications are measured by the same standards of sufficiency as non-provisional applications.  My perspective is that, unless used for their intended purpose, provisional applications are clearly a compromise in quality and ought to be avoided (i.e., non-provisionals filed) whenever possible.

I suspect Mr. Stasik is right that our perspectives aren't that far apart.

Regards.

[eric stasik]

Mr. Ivey,

I guess I have done a poor job at explaining myself. In general we agree: a provisional application is not a low-cost replacement for a proper application for patent.

But in those certain specific circumstances such as those that I have described earlier, I see tremendous value to those interested in preserving their foreign patent rights.

I believe that filing a provisional US application that meets the requirements of a) would satisfy EPO requirements for priority as a defense against prior public disclosure of a) regardless of what happens subsequently at the USPTO.

Whether or not a) ultimately provides priority in for THE INVENTION that is subsequently claimed in the US seems irrelevant. Whether or not I have to add new matter seems also irrelevant. As long as I have established priority for the disclosure of a) I have achieved what I needed to do with the provisional application.

It is a shield to defend me against my disclosure being prior art, whether or not it proves to be a sword against all challenges is a risk I might choose to take.

I am sympathetic to your position that there is always time, but you only see the applications that get through.

You never see (as I often do) the cases that are not sent out because the client feels there isn't time.

What I am saying is that the client may well be wrong and that there may be value in having a technical description filed as a provisional application at the 11th hour if they are interested in preserving their rights to seek a patent outside the united states.

But now I am the one being redundant.

eric stasik

[JimIvey]

I am sympathetic to your position that there is always time, but you only see the applications that get through.

You never see (as I often do) the cases that are not sent out because the client feels there isn't time.

I don't understand what you mean by "get through."  If you mean that my clients self-filter and only give applications with a month or more lead time, (i) I don't know on what you'd base that assumption and (ii) it's simply wrong.

I've taken disclosure of a fairly complex invention at noon and filed a complete, full, and non-provisional application that same night.  So far, 12 hours is the smallest lead time I've ever had and I've seen cases when people came to me too late (more than 12 months past the initial release).

That 12-hour job was a long time ago, and I didn't enjoy the experience and I don't intend to repeat it.  And, at the time, provisional applications didn't exist.

I still maintain that, with very rare exceptions, provisional applications are a choice, never a necessity.  

Regards.

[JSonnabend]

In a nutshell, my position, which is consistent certainly with Jim's and probably, when all is said and done, with Eric's, is that: if  your provisional won't support  what you are ultimately going to claim, then you haven't bought yourself *anything* by filing the provisional.  Not time, not protection, nothing.  You can't claim priority to it, it doesn't stop the 102(b) clock, and it certainly doesn't give any protection in itself.

Filing multiple provisionals with the ultimate goal of combining them for an enabling disclosure may be useful, but no more so than waiting to have one completely enabling disclosure and filing that as a single provisional.

- Jeff