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Provisional
Patents Provide Strategy to Protect Inventions
LOS
ANGELES DAILY JOURNAL. TUESDAY, FEBRUARY 17, 2004.
PAGE 7
By
John T. McNelis
"We
have an invention but don't want to spend a lot of
money protecting it right now. What should we do?"
In
light of budget realities, a frequent answer to this
question is to file a provisional application. If
done properly, filing a provisional application is
a powerful way to protect an invention and less expensive
than filing a "regular" utility patent application.
A
provisional application can be part of a strategy
to extend the expiration date of a patent, reduce
the up-front costs of preparing and filing an application,
and alleviate problems associated with continuing
modifications of the invention. However, in
practice, provisional applications often have done
more harm than good because of the false sense of
security derived from inadequately prepared provisional
applications.
Provisional
applications are filed with the United States Patent
and Trademark Office and expire one year after their
filing date. Provisional applications are not substantively
reviewed or examined by the Patent and Trademark Office.
Instead, provisional applications serve as a place
holder for a utility application that is filed within
one year.
"Provisional
patent applications can be part of a powerful strategy
to extend the duration of a patent, reduce up front
costs and alleviate problems associated with continuous
modifications to inventions."
The
requirements for filling a provisional application
are more informal than the requirements for filing
a utility patent application. For injustice, a provisional
application does not require claims and can be filed
with drawings that are less formal thall those required
of utility applications. The informal nature of the
filing documents has given the provisional application
a reputation for being an expensive way to preserve
patent rights and requires significantly less effort
to prepare and file.
While
this reputation is true, up to a point, it has led
to a common misconception: Because of the more informal
filing requirements of a provisional application,
the technical description of the invention required
in a provisional application is less than that required
of a utility application. This is absolutely untrue,
and companies that have filed provisional applications
having inadequate specifications are at risk of losing
their valuable intellectual property rights.
The
specification of a provisional application must satisfy
the same requirements as utility applications. That
is, under 35 USC Section 112, first paragraph, the
specification of each must "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 term as to enable any person skilled
in the art to make and use the same, and shall set
forth the best mode contemplated by the inventor in
carrying out his invention."
Unfortunately,
the specification is the area of the provisional application
that companies are most tempted to cut corners on
in order to reduce expenses. To cut costs, companies
have submitted user's manuals, marketing material,
and/or high-Ievel summaries of the invention as provisional
applications. However, in preparing provisional applications
with such materials, companies must understand the
associated risks because reliance on such provisional
applications can lead to a loss of intellectual property
rights.
For
example, under the U.S. patent law, a triggering event
such as a sale, an offer for sale, a public disclosure
or a public use of the invention starts a one-year
clock within which a provisional or utility patent
application must be filed in order for the inventor
to preserve the ability to protect the invention.
However,
if the provisional or utility application does not
satisfy the written description, enablement and best
mode requirements of Section 112, first paragraph,
the inventor loses the ability to obtain U.S. patent
protection unless an application that does satisfy
these requirements is filed within one year of the
triggering event.
If
a company is interested in patent rights outside the
United States, the test is even more strict because
patent rights in nearly all other countries are immediately
lost unless a fully compliant provisional application
or utility patent application is filed before public
disclosure of the invention or sale of a product incorporating
the invention.
Two
recent cases illustrate the renewed vigor with which
the courts are applying the requirements of 35 USC
Section 112, first paragraph. In New Railhead Mfg.
LLC. 11 Vermeer Mfg. Co., 298 E3d 1290 (Fed. Cir.
2002) the patent owner offered to sell the invention
(the triggering event). Within a year of the triggering
event, a provisional application was filed, and a
year thereafter (ie., more than one year after the
triggering event) a utility patent application was
filed. On summary judgment, the Federal Circuit determined
that the provisional application failed to satisfy
the written description requirements of Section 112,
first paragraph, because the application did not disclose
details about how a drill bit is angled with respect
to its housing as claimed in the subsequent utility
patent.
Because the provisional application was not prepared
properly, the utility application could not properly
claim priority to it, and the earliest priority date
for the utility application was its own filing date.
Accordingly, the utility application was held invalid
because an offer for sale was made more than one year
before its priority date. In Symbol Tech. Inc. v.
Leme Med., Edu. & Research Found. lid Part., CV..S.
01-701-PMP (D. Nev. filed ]an. 23, 2004), the U.S.
District Court for the District of Nevada invalidated
a series of patents owned by the defendant {I£melson)
that related to machine vision and automatic bar code
technology. The patents claimed priority back to patent
applications filed in 1954 and 1956.The District Court
examined the patents at issue and held, inter alia.
that the relevant specification did not enable the
invention under Section 112, first paragraph, because
the specification was not written in enough detail
to enable a person of ordinary skill in the art to
practice the claimed invention. Id. at 27. This trend
of courts analyzing patents look at the quality of
the provisional and utility specifications that they
have filed and are preparing. In particular, in situations
in which only preexisting or high level materials
have been submitted as a provisional application,
for example, a user's manual, or in which a ptovisional
application was filed but the brllnt of the cost-cutting
measures was born by cutting corners on the specification,
the provisional application should be reviewed to
detennine whether the son satisfies the requirements
of Section 112, first paragraph.
If there are doubts as to whether the requirements
are met, the company should not rely on the provisional
application and, instead, should begin preparing a
new provisional application or utility application
that satisfies the patent requirements. Because the
Patent and Trademark Office does not examine a provisional
application substantively, companies should proactively
analyze their existing provisional applications. Otherwise,
they may not become aware of a problem with a provisional
application until asserting an issued patent that
claims priority to the provision application in a
litigation or licensing negotiations, for example.
However, at that point, which is many years after
the filing of the provisional application, correction
of the problem is likely impossible. If done properly,
provisional applications are a cost-effective mechanism
to protect inventions when completed with filing "regular"
utility patent applications.
A
provisional application filing fee is less than one-quarter
of a utility patent application filing fee. In addition,
because a provisional application doesn't require
the preparation of claims or the submission of references
in an information disclosure statement, the immediate
cost of preparing a provisional application can be
significantly less than that of preparing a utility
application. Another advantage of using a provisional
application strategy occures in the common situation
of having an invention change significantly as more
research is performed. Instead of filing a string
of utility applications, a more cost effective strategy
is to file several provisional applications over the
course of the year in order to obtain a filing date
for various embodiments of the invention.Within one
year of the first filed provision, a single utility
application call be prepared that fully describes
and claims an of the various embodiments.
Another
advantage is that the filing of a provisional application
permits an applicant to extend the term of a patent
for up to a year because the expiration date for a
patent is 20 years from the earliest priority date,
but the duration of provisional application is excluded
from this calculation. Provisional applications can
be part of a powerful patent strategy to extend the
duration of a patent, reduce upfront costs and alleviate
problems associated with continuous modifications
to the invention.
However,
along with these advantages come the problems associated
with the erroneous belief that a company can cut corners
in the preparation of a provisional application by
reducing the effort spent generating the description
of the invention. In practice, many provisional applications
have done more harm than good because of the false
sense of security derived from provisional applications
that do not satisfy the requirements of 35 U.S.C.
Section 112, first paragraph.
John T. McNells is a partner in the intellectual property
group, vice-chair of the patent group and former managing
partner of Fenwick & West.
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