Application Drafting and Provisional Applications By Scott W. Cummings

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Application Drafting and Provisional Applications

ByScott W. Cummings


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What is the Goal of a Patent Application?

To obtain a patent for the client by convincing the Patent Office (i.e., an Examiner) that the invention is patentable.

It is a form of sales – like a proposal Take some pointers from the advertising industry

People don’t buy when they:• Don’t feel the need for what you are selling

• Don’t trust the salesman or solution being offered; credibility is lacking.


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Outline Application Drafting

Attributes of a well-written application Filing Strategies Legal Requirements Drafting Ideas/Tips

Provisional Applications Filing Requirements Strategic Uses/Basis for Priority Pros and Cons


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The “well-written” patent application

What attributes should a well-written patent application have? Describe the invention so one of ordinary skill can

understand it Disclose the best mode Provide support for claims of unknown scope Claims narrow enough to avoid prior art Claims broad enough to hamper design around


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The “well-written” patent application

Claims clear enough to provide notice Factually accurate Suitable vehicle for foreign filing Tell a story


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Substantive Legal Requirements

35 U.S.C. §101 Eligible subject matter Utility

35 U.S.C. §112, ¶1 Enablement Written description Best mode


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35 U.S.C. §112, ¶2 “Definiteness” requirement Claims evaluated in light of

• Content of the application

• Prior art

• Interpretation given by those of ordinary skill “Special” terms

• Define in the specification/be your own lexicographer


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35 U.S.C. §102 Novel

35 U.S.C. §103 Nonobvious


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Application Drafting Ideas -Tell the Story of Invention

Patent application as a vehicle to communicate and persuade

The cast of characters The prior art Likely users of the technology Our hero - the inventor(s)


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Setting the stage Background of the invention Unfulfilled needs Failures of others Problems with the prior art Serious nature of the problem


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But . . . “what you say may be used against you in a court of law”

Three pitfalls to avoid in the background Disclaimer via “criticism and disavowal” Written description – failure of claimed subject

matter to address at least one state problem or object

Use of stated problems to support allegations of obviousness


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Disclaimer via “criticism and disavowal” Keep the discussion general, focus on problems and

deficiencies of the prior art, not specific features Try a disclaimer:

• “While certain aspects of conventional technologies have been discussed to facilitate disclosure of the invention, Applicants in no way disclaim these technical aspects, and it is contemplated that the claimed invention may encompass one or more of the conventional technical aspects discussed herein.”


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Written description – failure of claimed subject matter to address at least one state problem or object Revolution Eyewear, Inc. v. Aspex Eyewear, et al., (2009) Avoid listing “objects” of the invention Try a statement like:

• “The present invention may address one or more of the problems and deficiencies of the prior art discussed above. However, it is contemplated that the invention may prove useful in addressing other problems and deficiencies in a number of technical areas. Therefore the claimed invention should not necessarily be construed as limited to addressing any of the particular problems or deficiencies discussed herein.”


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Use of stated problems to support allegations of obviousness From KSR: “Under the correct analysis, any need or problem known in the field of

endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in a manner claimed.” (emphasis added)

Totally avoid discussion of problems to avoid above? Or, use a disclaimer?

• “In this specification where a document, act or item of knowledge is referred to or discussed, this reference or discussion is not an admission that the document, act or item of knowledge or any combination thereof was at the priority date, publicly available, known to the public, part of common general knowledge, or otherwise constitutes prior art under the applicable statutory provisions; or is known to be relevant to an attempt to solve any problem with which this specification is concerned”


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The hero saves the day Summary of the invention

Tie to Background (problem/solution) Broad characterization of benefits (e.g., functional) Recast independent claims – Support for the claimed

invention Detailed description

Refer to advantages of the described features


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Application Drafting Ideas -Define “Special” Claim Terms

Avoid §112, ¶2 issues Be explicit (“As used herein, the term X means Y”) Claim interpretation

Applicant’s definition controls Choose your words wisely


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Application Drafting Ideas – Avoid narrow characterizations

Overly narrow characterizations of what constitutes the invention have been used to limit the scope of the patented claims (Honeywell Int’l. v. ITT Industries, Inc.): "this invention relates to a . . .", according to the present invention, a . . . ", "a . . . made pursuant to the teachings of the present

invention“ coupled with a lack of description of alternative

embodiments


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Other terms/characterizations to avoid: “critical” “essential” “key” “necessary” “important”


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Solutions = Use alternative language such as: "certain embodiments

of the present invention include, but are not limited to . . .”

Describe as many alternative features and embodiments as possible.


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Application Drafting Ideas -Avoid Dedication to the Public

Problem = Disclosed but unclaimed subject matter is “dedicated to the public”

Maxwell v. J. Baker, Inc.

Solution = Draft a comprehensive set of claims


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Application Drafting Ideas -Avoid Hyperbole

37 C.F.R. §1.56 - Duty of candor and good faith Misrepresentations, misleading statements, and

omissions violate this duty. Result = patent unenforceable due to “inequitable

conduct”


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Application Drafting Ideas -Avoid Hyperbole

Hoffman-La Roche, Inc. v. Promega Specification contained an “example” implying that an

experiment had been conducted Actually the “example” was prophetic and never actually

performed Result = patent unenforceable due to inequitable conduct


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Application Drafting Ideas -Disclose Testing Methodologies

Honeywell International Claims characterized a polymer yarn by its “melt point

elevation” (MPE). Measured MPE value highly dependent upon technique used to collect the yarn for testing

Patentee failed to disclose which technique was used to collect the yarn sample

Result = claims “insolubly ambiguous” and invalid under 35 U.S.C. §112, ¶2


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Application Drafting Ideas -Think Globally

EPO and JPO - problem/solution approach to determine inventive step (obviousness) Telling the story of invention in the application will provide

a good basis to meet this requirement EPO - strict interpretation of “new matter”

Limited ability to amend Solution = comprehensive claim set


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Provisional Applications

35 U.S.C. §111(b) Act as a “placeholder”

Never substantively examined Automatically lapse or mature one year from the filing

date Once filed, applicants can mark “patent pending” Can not claim priority from another appln. Patent term measured from filing date of subsequent

nonprovisional application


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Provisional Applications

Filing Requirements A specification A drawing (if required to

understand the invention) A cover sheet or cover

letter Fee

NOT Required A claim An oath or declaration (37

C.F.R. §1.63) An IDS


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Provisional Applications -As a Basis for Priority

Domestic Priority 35 U.S.C. §119(e)

Foreign Priority (PCT and National Filings) Article 4 of the Paris Convention


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Provisional Applications -Domestic Priority

Requirements Nonprovisional application (35 U.S.C. §111(a)) Within 12 months of the filing date of the

provisional At least one common inventor Reference to the provisional application Provisional application must satisfy §112, ¶1 for

the invention claimed in the subsequent nonprovisional application


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New Railhead Manufacturing Patent claimed drill bit with certain angle between the

bit and its housing

Jan 96 Jan 97 Jan 98

Sales spring/ summer 96

2/97 - File Provisional

11/97 - File Utility

*Sales > 1 Yr.*


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Court found that the disclosure of the provisional application did not meet the written description requirement with respect to the subsequently claimed drill bit angle

Applicant not entitled to priority back to the filing date of the provisional application (limited to 11/97 filing date)

Sales occurred more than one year prior to the 11/97 date, thus patent invalid under 35 U.S.C. §102(b)


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Provisional Applications -Foreign Priority

Article 4 of the Paris Convention A “regular national filing” in one country provides a basis for a

priority claim in an application filed within 12 months in another member country

Governs priority claims in PCT applications Provisional applications are considered a regular national filing Must file PCT/foreign application(s) within 1 year of the filing

date of the provisional application.


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Provisional ApplicationsAdvantages & Disadvantages

Advantage Are relatively simple and

inexpensive to file. They do not need a declaration, claims or an IDS. The specification is not examined, and can therefore be informal (PowerPoint presentations, manuals, lab notebook entries, etc.)

Disadvantage Must satisfy the

requirements of 35 U.S.C. §112, ¶1 with respect to a later-claimed invention in order to provide any benefit of priority.


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Advantage A utility application can claim

priority to multiple provisional applications. Thus, multiple provisional applications can be filed in the one-year time period measured from the earliest-filed provisional application in order to capture changes in rapidly evolving technologies.

Disadvantage The various claims of the

later-filed utility application may have different priority dates based on multiple provisional application filing dates, which must be evaluated and considered.


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Advantage The patent term of a regular

utility patent that claims priority to a provisional application is 21 years from the filing date of the provisional application.

They do not have to be in English. Thus, copies of foreign priority documents may be filed as provisional U.S. applications.

Disadvantage Examination is delayed up to

one year.

The content must be evaluated for adequacy of disclosure to support the claim for priority.


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Advantage The filing date of a provisional

application can be relied upon to claim the benefit of priority in other countries under Article 4 of the Paris Convention

Disadvantage The filing date of a provisional

application starts the one-year grace period to complete PCT and/or direct national foreign filings and obtain the benefit of priority. This date must be docketed and kept in mind


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Conclusion Application drafting

Patent application as a vehicle to communicate and persuade

• Substantive and formal legal requirements

• Tell the story of invention Provisional applications

Relatively simple and inexpensive• Client pressure to file provisional applications

Without quality disclosure loss of priority and possible loss of patent rights loom

Documents

Application Drafting and Provisional Applications By Scott W. Cummings