By: Daniel D. Wright
Why file a provisional patent application?
Have an idea for an invention but unsure of some of the details? Maybe the money isn’t quite there for some additional experiments, but you really need to get a provisional patent application (PPA) on file with the USPTO before publishing that paper or going to investors. In these circumstances and many more, the advice from a patent practitioner will be simple: “File a provisional patent application!”
For good reason, you’ll hear this suggestion almost invariantly; the benefits of provisional patent applications are numerous.
This makes provisionals a great way to get in line at the patent office quickly to secure that critical priority filing date, thereby preventing any disclosures during that year from becoming invalidating prior art.
This makes provisionals a great way to get in line at the patent office quickly to secure that critical priority filing date.
The Fidelity Risk
However, as briefly mentioned in a previous post, there’s a serious risk with playing fast and loose with provisional applications. Although the law allows provisional applications to take any shape you choose, it additionally requires that provisionals adequately describe and enable the claimed invention of the following non-provisional, according to the same standards applied to non-provisional applications themselves. Thus, considering the complicated balance between specificity and breadth in a strong non-provisional application (and lack thereof in a research paper), you can find yourself in a lot of trouble if you simply file your technical documents or otherwise skimp out on sufficient rigor in your provisional.
In a worst case scenario, the non-provisional can be outright denied the priority date, effectively forfeiting any benefit from the provisional and thus exposing you to a whole year’s worth of potential prior art.
More granularly, a lack of support can apply to specific details, meaning that any claim of the non-provisional that cites those details, unsupported by the provisional, will lose the provisional priority date. As a consequence, your application will have multiple filing dates on a claim by claim basis.
... you can find yourself in a lot of trouble if you simply file your technical documents or otherwise skimp out on sufficient rigor in your provisional.
Lessons from the Courts
So what does and does not constitute allowable “fleshing out” of the application at the conversion date? Case law can provide certain insights.
New Railhead Mfg., LLC. v. Vermeer Mfg. Co., (298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002)) continues to be the foundational case on this topic. In this case, the patentee needed to rely upon a provisional application in order to antedate a public use of the claimed horizontal directional drill bit. The brief independent claim of the non-provisional necessitates “the unitary bit body being angled with respect to the sonde housing.” However, the court noted that this feature is never recited in the provisional. The closest it gets are with oblique allusions to “leverage” being responsible for the improved performance. Furthermore, the figures of the provisional only showed the apparatus in an exploded view and not, as would have been necessary, an express depiction of the bit body’s attachment to sonde housing. The inventor himself even testified that the figures did not depict the arrangement claimed in the non-provisional, perhaps resounding the death knell for the case. Since the provisional lacked the necessitated claim element in its entire disclosure, the court ruled that the non-provisional could not claim priority to the provisional, denying it the essential date to pre-date the invalidating public use. The lesson of New Railhead is pretty cut and dry: your provisional better include critical claim elements at least somewhere in its disclosure.
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., No. 10-1183 (Fed. Cir. Aug. 26, 2011) shows a bit more nuanced of an example pertaining to details narrower than the absence of a critical mechanical part. The plaintiffs argued that the patents at hand should be denied their provisional priority date because the claims stated an air flow of 25,000 CFM through a tobacco curing barn while the provisional disclosed that the minimum air flow “may be about 28,000 CFM.” This argument worked for the lower courts, but was overturned at the Court of Appeals for the Federal Circuit on the grounds that the provisional provides sufficiently broad language elsewhere. In addition to giving the specific number, the provisional states that air flow “may vary according to conditions” and that it can be “sufficient to prevent an anaerobic condition.” As such, the ballpark number in light of the broader language was found to sufficiently support the specific value of the non-provisional despite the specific value not being expressly listed in the provisional and even perhaps excluded by a singular statement.
The lesson of New Railhead is pretty cut and dry: your provisional better include critical claim elements at least somewhere in its disclosure.
The conversion of a provisional application is not the time to introduce or reveal key features of the invention if you hope to keep your priority date, but it is indeed an opportunity to insert additional examples and supporting information to round out what was already presented and made clear in the provisional. Herein lies the danger of sloppy provisional applications. Were all those key claims in your rush job provisional? Were they all in your conference paper? Maybe. Maybe not.
The Balance Takeaway
Provisionals can be a great tool for quickly securing a priority date and a pending designation, but as long as you have the time, provisional applications should be as close to the real deal as possible. Do your diligence up front and make sure it's all in there, as best as you can, and avoid filing a provisional application that is merely a promise to have an invention at a later date. The Office (and certainly the courts) are wise to such games.
Ashley Sloat, Ph.D.
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