
For a busy company looking to roll out a product, provisional applications provide a great way to get started on the patent process. When it comes to provisional patent applications, more is often better, but it seems that sometimes it may not be enough.
Some patent attorneys dislike provisional applications because they can give a client a false sense of confidence that their patent strategy is in place, and they can forget about the process for nine to twelve months. This is usually not the best approach.
A better approach is to get a provisional application filed as early as possible with as much information as possible. Provisional applications, because they have few formal requirements, allow for including engineering notes, drawings, and even pictures, to provide an early disclosure. In this way, the process toward a complete and well drafted non-provisional application is started but is certainly not complete. For a busy company in the midst of rolling out a product, continued attention to the patent process can then include filing further provisional applications with more and more information leading to a complete and well-drafted non-provisional application.
I recently ran across an old IP Watchdog article mentioning that Walmart had filed a non-provisional patent application claiming priority to 37 provisional applications. This seemed like a great approach, but then I got to thinking of an issue that had come up for us in a litigation context.
Here’s the gist of it. In re Mann, in clarifying an issue that came up in Dynamic Drinkware, affirmed that “[p]atent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.” (Citing Lucent Technologies) to hold that support in a provisional application is required for at least one claim. The PTAB hypothesized a scenario where a non-provisional application, claiming benefit of multiple provisional applications, has one claim to invention X and one claim to invention Y. Invention X, for example, disclosed in provisional A, would then have benefit of A’s filing date, and Invention Y, for example disclosed in provisional B, would then separately have benefit of B’s filing day.
So, here’s the issue: What happens when the non-provisional has a claim, call it X+Z, requiring disclosure from both provisional applications, A and B? In this situation, assume the disclosure for Z is in Provisional B and further assume that the Z part of the claim is actually just common knowledge information, and the real thrust of the invention is the X part, but in any case, the disclosure of both provisional applications is necessary for proper disclosure.
In this scenario, it seems that because neither provisional application completely disclosed the invention X+Z, the claim is not entitled to the benefit of an earlier filing date. In the context of Walmart, discussed above, it seems possible that even after the effort and cost to file 37 provisional applications, the claims of their non-provisional application may not be entitled to the benefit of an earlier filing date. After all their effort, it seems possible that the complete invention did not come together until the filing of the non-provisional application. What do you think?
In the end, maybe this all adds up to a strategy file early, file often, but get it complete as soon as possible.
*The information provided in this blog is for general informational purposes only and does not constitute legal, financial, or professional advice. The author and the publisher make no representations or warranties of any kind, express or implied, about the completeness, accuracy, reliability, suitability, or availability with respect to the blog or the information, products, services, or related graphics contained in the blog for any purpose. Any reliance you place on such information is strictly at your own risk.
Mr. García represents high-technology companies in a variety of intellectual property matters, including prosecution, litigation, transactions, and counseling involving patents, trademarks, copyrights, and trade secrets.
Mr. García is a registered patent attorney out of the firm’s Palo Alto office in Santa Clara County, California located at:
2100 Geng Road
Suite 210 Palo Alto, CA 94303
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