File Early and Often

When a novel idea takes shape in the mind of an inventor, the first thought should be how to best protect it.  Historically, the United States has followed a first-to-invent system of patent protection.  That is, the first person or persons to invent a product is ultimately awarded the patent rights to the product regardless of whether they were the first to actually file a patent application.  In order to harmonize U.S. patent law with that of the rest of the world, the America Invents Act (“AIA”) was signed into law.  Among the AIA’s many provisions is the abandonment by the United States of the prior first-to-invent approach to patent protection in favor the first-to-file system.

The adoption of the first-to-file system has increased the importance of early filing of provisional patent applications.  There generally are two types of patent applications, i.e. provisional applications and non-provisional applications.  Both types of applications can establish an inventor’s priority date i.e. a filing date at the U.S. Patent Office.  Only a non-provisional patent application however, will be examined by the Patent Office, may ultimately issue as a patent.  A provisional application by contrast is not examined by the patent office.  Rather, the provisional application holds an inventor’s priority date at the Patent Office for a period of one year at which point it must be followed up with a non-provisional application. Before the one year anniversary of the provisional filing.

If a provisional application is never examined by the patent office and must be followed up with a non-provisional application within one year, why would an inventor ever want to file a provisional application?  To answer this question, it is first helpful to review what is contained in a non-provisional application.  A non-provisional application will typically contain a background description of the state of the art in the field of the invention, and must contain a specification having a very detailed description of the invention, as well as a set of formal drawings that depict the invention.  In addition, the non-provisional application must contain a set of claims which specifically point out and claim the specific features that comprise the invention.  To properly prepare the above, requires a substantial amount of attorney time at significant cost.

A provisional application can provide a substantial cost savings vis-à-vis a non-provisional application and can be prepared in substantially less time. Also, the filing fees are less than those of a non-provisional application.  Also, a provisional application need only contain a specification conforming to the requirements of 35 U.S.C. §112, paragraph 1, and at least one drawing.  See New Railhead Manufacturing, LLC v. Vermeer Manufacturing, Company, 298 F.3d 1290, 1294 (Fed. Cir. 2002).  No claims are required.  Id.

The drawings filed with a provisional application may be quite informal, i.e. hand drawn sketches are acceptable.  The description of the invention in the specification of a provisional application may be less detailed than that of the provisional, with the caveat that although it may be less detailed, the description must nevertheless make clear that the inventor was, at the time of the filing of the provisional application, in “possession” of the material claimed in a subsequently filed non-provisional application.  See Trading Technologies International, Inc. v. Espeed, Inc. et al., 595 F.3d 1340, 1359 (Fed. Cir. 2011).  This requirement is critical.

Claims in a later filed non-provisional application enjoy the filing date of a provisional application, only if the provisional application provided an adequate written description under 35 U.S.C. §112, paragraph 1.  See Trading Technologies, 595 F.3d at 1359.

35 U.S.C. §112, paragraph 1, reads as follows:

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.  35 U.S.C. §112, paragraph 1.

In other words, the specification of the provisional must contain a written description of the invention and the manner and process of making it, in such full, clear, concise and exact terms so as to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application without undo experimentation.  See New Railhead Manufacturing, 298 F.3d at 1294. Stated another way, the provisional application must describe an invention in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.  See Lockwood v. American Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997).

The Federal Circuit and the district courts have invalidated issued patents where investigation during litigation reveals that the provisional application did not support the claims of the later filed non-provisional application.  In New Railhead Manufacturing, the Federal Circuit found that a patent on a power drill used in large-scale mining operations to be not entitled to the filing date of the underlying provisional application based on the provisional application’s failure to adequately describe the “angular” relationship between the drill bit and the housing of the drill itself.

Also, in Minemyer v. B-Roc Representatives, Inc., 695 F. Supp. 2d 797 (N.D. Ill. 2009), the court found a patent regarding a pipe coupler with “tapered threads” to be not entitled to the underlying provisional application’s priority date because of a failure to clearly describe the tapered nature of the coupler’s thread.  In both of the above cases, having been denied the priority dates of their underlying provisional applications, the patents were found to be subject to the 35 U.S.C. §102 because “on-sale bar”, and were consequently invalidated.  Under U.S. patent law, an application for patent must be filed within one year of the invention being sol, offered for sale or disclosed to the public. See 35 U.S.C. §102.

In view of the above, a provisional application is well suited to situations where an inventor has created an invention in a highly competitive field and must file an application before competitors file applications on the same or similar technology. As a best practice, an inventor should consult a registered patent attorney prior to filing any patent application and should get any patent application on-file as soon as possible under the AIA.

Inventor’s and practitioner’s should keep in mind, that in drafting provisional applications, it is critical that the specification of the provisional application fully disclose all features expected to be claimed in the later filed non-provisional application.  As a best practice, an inventor should consult a registered patent attorney prior to filing an application and should get the application on-file as soon as possible under the AIA.  If you have any question as to whether your provisional application meets the requirements of 35 U.S.C. section 112, paragraph 1, please contact Cislo & Thomas, LLP for assistance at 310-451-0647 or [email protected] to schedule an appointment.

If time or finances do not allow the preparation of a provisional application by an attorney, we recommend using the website PatentFiler.com.  This website provides small businesses and entrepreneurs with a convenient and efficient way to file a provisional patent application at a low cost.  After the passage of the America Invents Act in 2011, small business and individual inventors were presented with the challenge of protecting their intellectual property without the resources of an in house patent attorney.  PatentFiler.com is a user friendly resource which allows anyone to quickly file a provisional application for their idea, while providing individuals with an overview of the patent application process at a low cost and is supported by Cislo & Thomas LLP.