The Importance of Properly Drafting Provisional Patent Claims

A patent grants its owner exclusive legal rights to an invention for a specified period. It serves as the inventor’s only protection against theft or infringement by others.

However, the patent process can be complex and expensive. If your invention requires patent protection but you lack either the time or funds for a full utility patent application, then filing for a provisional patent might be your best bet.

1. Enablement and Disclosure

Enabling and disclosure are essential components for a provisional patent application. Accurately understanding the requirements that pertain to your invention, as well as crafting claims accordingly, can make all the difference in receiving a favorable decision on your application.

A patent specification must provide enough detail for someone of ordinary skill in the art to practice the claimed invention without needing extensive experimentation. In other words, it must teach an expert the essential components of the invention and how they interact to yield desired outcomes.

When evaluating an applicant’s specification, several factors should be taken into consideration: how much guidance or direction the document provides, the state of the prior art, and how predictable the invention appears to be.

If an inventor is uncertain how to craft a specification, they should consult with the patent attorney at their firm. This is especially pertinent if they lack prior experience in drafting patent applications.

When an application is denied for lack of enablement, the examiner should explain why the specification fails to provide enough disclosure for a person of ordinary skill in the art to reproduce the claimed invention. This explanation must be based on evidence presented at trial and include findings of fact that are supported by evidence.

For instance, if an applicant’s claim calls for the use of a particular compound or composition, then the examiner must explain why that use isn’t permitted by the specification. This explanation must be adequately supported by evidence to demonstrate that someone of ordinary skill in the art would have been able to utilize said material to achieve the claimed results as described in the specification as of filing date.

Similar to this, if an application discloses multiple embodiments but fails to identify which ones are operative, the patent application could be rejected for nonenablement if the examiner believes there has been undue experimentation involved in determining which ones are working. While this isn’t always the case, it can serve as a valid reason for rejecting claims that fail to clearly specify operative elements.

2. Priority

Priority of provisional patent claims is an essential factor when filing for US patent applications, as it can have serious repercussions for the patentability of subsequent applications. Given how important priority is, it’s essential that a provisional application be carefully drafted.

A carefully prepared provisional application can establish an invention’s “priority date,” which is the filing date that determines which references cannot be asserted as prior art against it during examination at the USPTO. Furthermore, the priority of provisional patent claims will determine which claims may be included in a subsequent patent application.

In order to be eligible for the benefit of an earlier filing date, a claim must adequately describe the invention so that someone of ordinary skill in the art can make and use it without undue experimentation. Failure to do so may lead to denial of your priority claim or even an infringement finding.

It is especially essential if the application meets the written description requirements set out in 35 U.S.C. 119(e).

However, this can become problematic if the application fails to satisfy the “specific reference” requirement of 37 CFR 1.78. In such instances, even if an ancestor was correctly filed and is being reexamined (e.g., Dynamic Drinkware [Fed. Cir. 09/04/15], or New Railhead [Fed. Cir. 07/30/02], claims made under that reference may not be eligible for their prior art reference’s effective filing date; such was the case with Dynamic Drinkware (Fed. Cir. 09/04/15) and New Railhead [Fed. Cir. 07/30/02].

Reexamination can also impact when an ancestor application is filed by the same inventor as another. Therefore, it’s essential to identify who created each ancestor application and include relevant details in a provisional application.

Therefore, it is usually best to include as many claims to a particular embodiment or invention in the provisional application as possible. Doing this helps guarantee that inventors’ rights are safeguarded and prevents any ambiguities when asserting priority of claims in an upcoming patent application.

3. Ownership

Provisional patent applications are often filed in the hope of establishing a “priority date” to file subsequent international or domestic patent applications. While filing a priority application can be an advantageous strategy, there are downsides as well. One of the major drawbacks to a priority application is that it can be leveraged to obtain an exclusive patent license, which can prove extremely difficult for unprepared companies. Priority applications can give companies an unfair edge in patent competition by forcing competitors to pay expensive licensing fees. To avoid such missteps, companies must determine and implement the appropriate strategy tailored for each situation. It’s essential that everyone involved understands their responsibilities and rights; developing an inventor’s manual that clearly outlines these duties and rights is a great place to start.

4. Claims

Provisional patent applications (USPTO SS 111(b)) are often used by inventors who want to document their ideas in an application that indicates their intent to file for a patent. These are relatively informal applications and lack certain requirements of non-provisional patent applications; such as not requiring an oath or declaration and lacking patent claims. Furthermore, these documents aren’t reviewed by U.S. patent examiners and never published.

Provisional patent applications can be filed up to one year after public disclosure of an invention. However, if this disclosure occurs more than a year prior to the provisional filing date, any foreign patent rights that would have accrued as a result of this filing will be lost.

Another important reason to consider submitting a provisional application is that it can be an invaluable tool in evaluating whether a patent is worth pursuing. This is especially true under the first-to-file priority laws of the United States, where patent applicants may want to preserve the option of maintaining their patent as trade secret while they decide whether or not to file formal applications or simply keep the trade secret.

Provisional patent applications must contain clear and unambiguous claims so that a person of ordinary skill in the art can understand the invention. The provisional application should describe the invention thoroughly, including its specific methods for implementation.

These claims must also clearly distinguish the invention from prior art. The specification should include a comprehensive description of the subject matter and any necessary drawings to enable someone with ordinary skill in the art to fully comprehend and appreciate the invention.

Recently, the Federal Circuit held that provisional applications must include Section 112 support for their claims of asserted references in order for them to have prior art effect as of their filing date. This new standard could be applied during invalidation analysis or when developing litigation or IPR strategies. Consequently, both owners and challengers must carefully consider this requirement when crafting provisional patent claims.