Provisional Patent Claims​

Provisional patent claims are hotly debated in the patent community as to whether or not claims should be included in provisional patent applications. Patent claims outline what is protected against being illegally recreated, sold, or used by another person other than the inventor.

Should Provisional Patent Applications Have Claims?

Claims ensure appropriate enablement and disclosure in instances where a provisional patent is processed quickly or on a small budget. Including provisional claims establishes an explicit record associated with the first filing date.

Many patent lawyers won't be too strict about including claims in provisional applications since they are likely to be taken out later.

Many fear that provisional claims leave inventors susceptible to file-wrapper estoppel, but there's no current evidence that new claims in a regular patent application would generate this estoppel.

The U.S. Patent Office will take provisional applications without claims, but the regular patent application must be filed within 12 months of the provisional to take over the filing date from the provisional application. Without the first date, any publication including the invention can restrict its ability to be patented. It's time and money-saving to exclude claims, but costly in the long run during valuing of intellectual property.

The potential liability that stems from poorly drafted patents make legal professionals want to start including claims in provisional applications. Procrastinating claim writing until the provisional application is filed yields risk of support failure when it comes to future claims. There's not a penalty for adding claims to a later patent application, but all added claims must meet regulations and statutes.

When changing a provisional to a regular patent, content revisions should be done deliberately and purposefully with care and with potential effects on future claims in mind. It's important to remember future changes are likely to be examined under the invention's scope.

Why, How and What to Claim

During provisional drafting, inventors should consider the types and scope of the claims that might be included in any application filed at a later date, but expected to benefit from the provisional's filing date.

To gain the benefit of the provisional filing date, added claims in the regular application have to corroborate with provisional claims. Many provisional applications may never be subjected to litigation or prosecution, but in the event it happens, the scope of added claims in the provisional applications is quite important.

Subsequent patent applications are better if patent lawyers do the drafting and understand there are many things inventors do that results in rights that become compromised or void.

Requirements of Provisional Applications

Provisional applications fall under Title 35 patent laws requiring that applications meet the written description, best mode requirements, and enablement of U.S.C. § 112 in order for an application filed at a later date to claim the provisional filing date.

Interestingly, Section 111(b)(1) necessitates applications must have a specification described according to the first paragraph of patent law Section 112 and diagrams, if needed. Section 111(b)(2) states that a claim isn't required in provisional applications.

Claiming the Benefit of an Earlier Filing Date; Right of Priority

A law that determines how regular patent applications can take advantage of a provisional filing date at the U.S. Patent Office exists to allow inventors to file a provisional with the intention of maintaining the original date when the regular application is submitted for examination. To take advantage of the earlier date, applications must:

  • Have a common inventor in both
  • Some common disclosure in both
  • Overlap in time
  • Regular applications must reference the provisional

Enablement & Written Description

Written descriptions and enablement must be met in all patent applications, especially adhering to the first paragraph of Section 112 of patent law. Enablement is met when patent specifics contain complete, concise, precise, and clear instructions that anyone skilled in the area could make and use the invention.

Written description requirements are comparisons of how the claims describe the invention to the specifics regarding the identifying and distinguishing parts of the final product. If inventors have a working prototype and have described it in figures, drawings, words, and formulas so a person of skill can verify that the invention was assembled correctly, the law is satisfied.

The Patent Office's Position

Rules regarding patent examination processes and patentability are published by the U.S. Patent Office in the Manual of Patent Examination Procedure (MPEP). This book reflects that office's opinion and reflects the law with only a few exceptions.

When a provisional application could not meet the written description requirements, priority would be denied. Patent specifics must adequately describe the invention in a detailed manner, so a person skilled in the art can surmise that the inventor possessed the invention.

Licensing Considerations

Companies researching potential licensing look deep into the history of the patent and data in the earlier applications. Attorneys for possible licensing partners search the following:

  • Filing dates
  • Data
  • Claims
  • Provisional filing integrity

This makes the chances for a beneficial business deal more likely.

International Impact

While provisional applications are relevant under different laws, then enablement and written descriptions requirements transfer to almost all areas. Under European Patent laws, claiming priority to a provisional application filed in the U.S. is suggested in concerning priority under Rule 53(2) (See EPC Guidelines, A-III: 6.7). Pertinent disclosure requirements for provisional applications are found in Article 87(1) of the EPC.

Patent Claim Drafting

Initial claims should do the following:

  • Define the product in broad terms
  • Define the product in specific terms with all options
  • Describe how parts are structured
  • How parts connect
  • How parts interact
  • How the invention is unique
  • How the invention is different from prior art

The claims should clearly describe all aspects of the invention so that a person of skill could create and work it.

Notable Provisional Cases

Some notable cases in provisional patent law for reference include:

  • New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co
  • LizardTech, Inc. v. Earth Resource Mapping, Inc.,
  • MPHJ Tech v. Ricoh
  • Warner-Jenkinson Co. v. Hilton Davis Chemical Co.
  • Philips v. AWH Corp.

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