Extend Your Provisional Term With This One Weird Trick

[Robert K S]

A colleague pitched me this (let's say hypothetical) scenario.  A year ago, a small-client inventor filed multiple (let's say three) well-drafted (i.e., section 112-compliant) provisional applications on several (we'll assume unrelated) inventions.  (We'll call them A, B, and C.)  Today, the inventor is only sure about wanting to file a nonprovisional application on one of them (application A).  But to leave open the possibility of later getting patents on inventions B and C at any time so long as the application-A line is still alive, the inventor instructs the attorney to incorporate-by-reference provisional applications B and C in the disclosure of application A's nonprovisional and therein claim priority to provisional applications B and C.  The inventor can now comfortably let provisionals B and C lapse without filing nonprovisional applications on them or paying fees therefor, and later file continuing applications off nonprovisional A claiming the B and/or C subject matter.  The inventor has thus more or less indefinitely extended the provisional term for B and C.

We thought about this for awhile and couldn't find a flaw in this approach.  Any takers?

[snapshot]

Examiner question time.

Does this mean app A's spec has a description and drawings and claims for only app A, and no drawings or detailed description for B and C at all, just the incorporation by reference?

[ThomasPaine]

"the inventor instructs the attorney to incorporate-by-reference provisional applications B and C in the disclosure of application A's nonprovisional and therein claim priority to provisional applications B and C."

Are you saying that the inventor will in the non-provisional affirmatively claim priority to provisional applications B and C?  If so, I don't see a problem with the approach.  As long as the priority claim is there, provisional applications B and C will be available to the public once the non-provisional is filed and published.

But I don't think simply incorporating provisional applications B and C by reference into the non-provisional is operable as a priority claim.  And if there is no priority claim to provisional applications B and C then they will not be available to the public once the non-provisional is filed and published.  Presumably a member of the public could request that they be allowed to inspect and/or copy provisional applications B and C upon publication of the non-provisional, but I don't know what the PTO's response to that request would be.

I am skeptical of any strategy that withholds, or attempts to withhold, disclosure of provisional applications B and C until such time as the inventor chooses to disclose them (i.e. the contents of them).

[Toot Aps Esroh]

Two things come to mind.  One is, this will be worthless ex-US.  Two, isn't there a doctrine that says "essential matter" which is only incorporated by reference is not really available to be relied upon? (See edit below, I found this was not correct)

If #2 is correct (??), unless you dump the text of B,C into the utility app for the A filing, you may find you are later incapable of making the claims to inventions of B, C.


EDIT: Here's what I sort of remembered.  37 CFR § 1.57(d) (emphasis added).  Doesn't the proposed IBR of the 2 provs B, C fail the underlined part?


(d) "Essential material" may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. "Essential material" is material that is necessary to:
(1) Provide a written description of the claimed invention...
(2) Describe the claimed invention in terms that particularly point out and distinctly claim ...
(3) Describe the structure, material, or acts that correspond to a claimed means or step for ...


So I think your guy will be SOL unless he dumps the text of B, C into the one utility app.

[lazyexaminer]

Two things come to mind.  One is, this will be worthless ex-US.  Two, isn't there a doctrine that says "essential matter" which is only incorporated by reference is not really available to be relied upon?

If #2 is correct (??), unless you dump the text of B,C into the utility app for the A filing, you may find you are later incapable of making the claims to inventions of B, C.

It seems like this is fine but confusing. To flesh it out...

See 37 CFR 1.57 and MPEP 608.01(p).

Essential material (necessary for satisfying 112) can only be incorporated from a US patent or pg-pub, and that patent or pg-pub cannot itself incorporate by reference that material. One can correct an improper incorporation by reference by actually adding the material into the disclosure.

So, Utility app A incorporates provs A, B, and C, it only actually discloses A, and claims only A. This is fine as B and C are not essential in this app.

Utility app B is a CON of A and claims B. Utility app B cannot properly incorporate by reference disclosure B from utility A or prov B because disclosure B is essential in utility B. Disclosure B is not actually present in a patent or pg-pub since it is not actually present in utility app A.

However, utility app B can be amended to actually include disclosure B instead of incorporating it by reference. 1.57(g) permits correcting an improper incorporation by reference by inserting the material. 1.57(h) gives a timeline of prior to the close of prosecution or abandonment...since this "correction" is being done in Utility app B then the close of prosecution of Utility app B seems to be the relevant time frame. So making this "correction" at filing or by preliminary amendment in Utility app B would seem to be ok.

See also MPEP 608.01(p) part I.B, discussing the lesser limitations of incorporation by reference as to reliance on earlier filing dates.

[Robert K S]

app A's spec has a description and drawings and claims for only app A, and no drawings or detailed description for B and C at all, just the incorporation by reference?

Yes.

the inventor will in the non-provisional affirmatively claim priority to provisional applications B and C?

Yes.

this will be worthless ex-US.

Granted.  I should have mentioned in the original post that extraterritorial patent rights are not important to the small client.

isn't there a doctrine that says "essential matter" which is only incorporated by reference is not really available to be relied upon?

Rule 57(d) is exactly the sort of authority I was looking for, but it's not totally clear that it precludes this strategy, because it leaves open the question of when the rule applies, i.e., at what stage of the proceedings the rule is effective to render the application unpatentable for want of essential material.  If Rule 57(d) only applies to the final issued patent, which I believe is the spirit of the rule, then it does not pose a problem, because the first thing the inventor would do upon filing a continuing application intended to pursue B or C claims would be to import the relevant description and drawings into the specification, resulting in a 57(d)-compliant spec.

Thoughts?

[Toot Aps Esroh]

Between what you and Lazyexaminer say, it does appear this scheme would work.

Still not sure I'd want to chance it (fear of unknown/change) and would rather dump the specs into the first yute.  I guess page counts could be a consideration leaning toward doing it as originally described, though, if each of A-C are voluminous 200 pps monsters.  Also if there are portions of B/C inherently contradictory to original A.

[ThomasPaine]

As long as the non-prov will claim priority to prov's B and C, I don't see a problem with the strategy as the prov's B and C will be available to the public once the non-prov publishes.  I think any attempt to conceal prov's B and C from public inspection (e.g. by not claiming priority to them) would subject any non-prov's to the subject matter of B and/or C to equitable defenses.

[dbmax]

If Rule 57(d) only applies to the final issued patent, which I believe is the spirit of the rule, then it does not pose a problem, because the first thing the inventor would do upon filing a continuing application intended to pursue B or C claims would be to import the relevant description and drawings into the specification, resulting in a 57(d)-compliant spec.

Hi Robert K S,

I agree with the your premise, but I'll take your argument a step further. 

If an incorporation by reference is 57(d)-compliant, then, by definition, one has no need to ever insert the text and drawings into the new spec, unless the examiner so requests. An incorporation by reference is an incorporation by reference. Period.

Also, as I read court cases relying on the mpep from the days before rule 57 existed, I find no reason to believe one cannot incorporate by reference to any material from any source, so long as the final issued patent complies with rule 57(h). (That is, so long as any improper incorporation has been eliminated by correcting the reference or by transcribing the referenced material into the current spec, provided that the original reference was clear and unambiguous.)

But I'm not an attorney.

db

 

[snapshot]

app A's spec has a description and drawings and claims for only app A, and no drawings or detailed description for B and C at all, just the incorporation by reference?

Yes.

So how would you file a CON for B, then?  Just file the spec and drawings for A, and the claims for B?  Or would the CON for B include spec and drawings for B, and drop A entirely?  Both situations could lead to a confused examiner and quite the ugly first office action in B.

[Robert K S]

So how would you file a CON for B, then?  ...  Or would the CON for B include spec and drawings for B, and drop A entirely?

The latter.  The examiner may be able to fuss, but can't properly reject.

If an incorporation by reference is 57(d)-compliant, then, by definition, one has no need to ever insert the text and drawings into the new spec

The way I read Rule 57(d), an incorporation by reference from a provisional application is not Rule 57(d)-compliant because a provisional application is neither a "U.S. patent or U.S. patent application publication".

[OhioStateJD]

And if there is no priority claim to provisional applications B and C then they will not be available to the public once the non-provisional is filed and published. 

Is this true??  I was under the impression that an incorporation-by-reference also triggered the USPTO to lay open a provisional application.

[Toot Aps Esroh]

...

...  I was under the impression that an incorporation-by-reference also triggered the USPTO to lay open a provisional application.

This would assume someone read the spec and took note of the IBR, which I think may be unlikely to happen.  Absent something like the request being made by a member of the public, as TP mentioned.

[ThomasPaine]

I don't know what "mechanism" the PTO uses to make provisional application file wrappers available in PAIR if a non-prov or PCT is filed claiming priority to the provisional. 

The "Continuity Data" tab in PAIR is what you click to get the IFW of the provisional application.  I assume when the IFW of the non-prov is set up something is triggered that makes the previously unavailable provisional application now available.

I don't think that trigger is triggered if all the non-provisional application does is incorporate the provisional application by reference.

But I don't really know.