‘Quick and Dirty’ Provisionals Can Come Back to Haunt Your TTO under the AIA

December 1, 2013 – In The News
Technology Transfer Tactics

James Singer was quoted in the Technology Transfer Tactics article “’Quick and Dirty’ Provisionals Can Come Back to Haunt Your TTO under the AIA.” While the full text can be found in the December 2013 issue of Technology Transfer Tactics, a synopsis is noted below.

The America Invents Act (AIA) has made provisional patent applications more difficult. Now, technology transfer offices must put more effort into provisionals – and may need to re-educate inventors about their increased information obligations under the evolving provisional filing administration.

Educating researchers about the need for more fleshed out information can help, notes Singer. TTOs should “spend more time educating researchers on the need for fully developed invention disclosures for provisional applications,” Singer says. In addition, he adds that TTOs should encourage researchers to provide disclosures well in advance of any publications because “patent attorneys need time to draft claims, scrub risky language from the invention disclosure and ensure that the provisional has full support for all features that could be claimed down the road.”

Singer also states that “TTOs that have in-house legal departments that train technical staff on proper disclosure are best suited for the new regime.” But “independent inventors who haven’t been through the process before and, in particular, researchers at institutions who may have been familiar with a ‘file the research paper’ approach to provisional applications in the past are struggling with the need for increased disclosure.”

According to Singer, recent Federal Circuit court decisions probably have had even more impact on the need for increased disclosure in provisional applications.

“Two cases this year are illustrative,” he says. In Novozymes A/s v. DuPont Nutrition Biosciences APS, from July 2013, the Federal Circuit “found a patent to be invalid because its provisional application failed to show that the applicants actually understood the invention at the time of filing.” In the older New Railhead Mfg. LLC v. Vermeer Mfg. Co., Fed Circuit judges “found that the provisional application failed to include certain words that were included in the claims of the formal application,” he adds, “so it refused to honor the priority date of the provisional application, and it found the patent to be invalid based on the patent owner’s disclosures before filing the provisional application.”

TTOs are already noticing the operational changes that have resulted from the increase in focus on provisionals.

“With the new first-to-file law in the U.S., filing a provisional application early has become much more important,” Singer explains. “While there is still a one-year grace period if you disclose the invention, if someone else is working on similar technology and discloses the same invention before you file, you will be out of luck.” What’s more, he says, “there is an increased emphasis on making provisional applications complete enabling disclosures of the invention. Anyone who files a ‘quick and dirty’ provisional application that consists of a mere couple of pages, a technical abstract or a research proposal will have a false sense of security about the filing date.”

Unless the application fully and explicitly discloses every feature of the invention that you want to claim, your formal application will not likely get the benefit of your provisional application’s filing date, he adds. “That’s especially risky,” Singer notes, “if you’ve filed the provisional after a public disclosure, because by the time you file the formal application you may well be beyond the one-year grace period.”

Singer notes that he treats provisional applications the same as formal applications. “We draft a full, detailed description, drawings and at least a few claims,” he says. “Based on timing and budget concerns, we may not do a prior art search or develop a full set of 20 claims before filing; however, the actual drafting process is fairly robust.”

Don’t try to get by on a research proposal that describes issues the researchers intend to explore, Singer cautions. “The provisional application must describe the invention as a specific invention that the inventors have created, or that they believe can be created,” he says. “It’s OK to describe any number of variations on the invention, but it’s not OK to merely describe a problem and the process by which you plan to perform research to find a solution.” Recent case law, he says, “indicates that such a document actually shows that the inventors didn’t possess the invention at the time of filing the application.”

Singer points to New Railhead as “Exhibit A for what can go wrong.” In that case, he explains, the claims of the formal application covered a drill bit for horizontal directional drilling in rock; those claims stated that the drill bit included “a body that was angled with respect to a housing.”

“However,” he explains, “the court didn’t find the ‘angled’ feature mentioned anywhere in the provisional. Because of that, the provisional application was meaningless, and the patent was invalid.”