Background

1)   Establish Priority:   Provisional patent applications may establish an earlier “effective filing date” (or priority date) for a later filed: 1) non-provisional patent application; 2) application(s) filed in a foreign jurisdiction (non-U.S.); and 3) PCT application.

2)  Must Subsequently File a Non-Provisional Patent Application (12 months):   To avoid losing the priority date of the provisional patent application, a non-provisional patent application must be filed within 12 months from the filing date of the provisional application and must include a benefit claim to the provisional patent application.   The benefit claim to the provisional must be filed within four months of the non-provisional filing date or sixteen months from the provisional filing date (whichever is later).   Additionally, the aforementioned 12 month period cannot be extended and the provisional patent application cannot mature into a patent as it becomes abandoned after the 12 month period.

3)  Not Examined / Published:   Provisional patent applications are neither examined nor published by the United States Patent and Trademark Office (USPTO).  Additionally, because provisional patent applications are not examined, Information Disclosure Statements (IDS) should not be included therewith.

4)  No Indication of Patentability:   Because provisional patent applications are not examined, the Applicant is provided with no indication of patentable subject matter.

5)  Can Not Claim Benefit to Earlier Filed Application(s):  The provisional patent application cannot claim benefit to an earlier filed domestic or foreign application.

6)  Common Inventorship:    The provisional patent application and subsequently filed non-provisional patent application must share at least one common inventor between both applications.

7)  Non-English Filing:   The provisional patent application may be filed in a language other than English.   Further, a translation and statement that the translation is accurate does not need to be filed with the provisional (although it could be).   However, to claim benefit to a non-english provisional in the subsequently filed non-provisional, a translation and a statement that the translation was accurate must be filed within four months of the non-provisional filing or sixteen months from the provisional filing (whichever is later).   In view of the foregoing, an Applicant who has drafted a non-english patent application could file said application as a provisional and provide a translation, etc. at a later time.

8)  Claims / Oath or Declaration -  Not Required:   Claims may be filed in a provisional patent application; however, they are not required.

9)  Design Patents:  Provisional patent applications cannot be utilized with design patents.

Legal

A provisional patent application is a U.S. national application for patent which is filed further to 35 U.S.C. 111(b) (whereas a non-provisional patent application is filed further to 35 U.S.C. 111(a)).

MPEP 601 – Content of Provisional and Non-provisional Applications indicates that a provisional patent application must satisfy the following statutory requirements:

“(b) PROVISIONAL APPLICATION …

(A) a specification as prescribed by the first paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application….”

Additional provisional patent application filing requirements (e.g., cover sheet, government contract requirements, etc.) are included in MPEP 601.

Advantages

1)   Patent Term Extension:    For applications filed on or after June 8, 1995, the term of a patent (other than a design patent) is 20 years from the date that patent application was filed.   (MPEP 2701 – Patent Term).    More specifically, as the 20 year patent term is measured from the non-provisional patent application filing date (rather than the provisional patent application filing), it is possible to extend the patent term termination date up to 12 months by filing a provisional patent application prior to the non-provisional patent application.

2)  “Patent Pending” Designation:   Once an Applicant has filed a provisional patent application, they may utilize the designation “Patent Pending” with their invention (e.g., conversations with others, product literature, etc.).   However, it should be noted that exclusionary (legal) rights are only obtained once a patent grant has been procured.

3)  Reduced Initial Costs / Obtain Market Feedback:   The government fees for filing a provisional patent application are actually quite minimal  ($220/$110- Small Entity : Current USPTO Fee Schedule).   In addition to the minimal government fee, a filed provisional patent application allows an inventor to “test the waters” and determine whether there is market demand for the invention.

4) Public Disclosure Safeguard – Foreign Filing:   Although the United States allows an Applicant to file a patent application within 12 months from a public disclosure (35 USC 102(b) – “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”, many foreign countries do not provide such an exception.

Many foreign jurisdictions instead employ an absolute novelty bar in which a public disclosure or commercial activity negates an Applicants ability to file a patent application.   So what are an Applicants options if they need to present their invention publicly but are unsure whether foreign filing will be pursued?

Although one could choose to delay the public disclosure, an alternative option to possibly safeguard foreign rights is to file a provisional patent application prior to the public disclosure (the foreign application/non-provisional would need to be filed within 12 months of the provisional filing).

5)  Patent Prosecution – Secondary Considerations:    Further to item #3 above (“obtain market feedback”), if the invention receives a positive reception in the marketplace and enjoys eventual “commercial success,” these results may be beneficial in overcoming an obviousness rejection during the patent prosecution phase of the non-provisional patent application.   More specifically, the  Supreme Court in Graham v. John Deere outlined a number of primary factors that must be examined for conducting a non-obviousness analysis:  ( 1) scope and content of the prior art; 2) differences between the prior art and claims at issue must be ascertained; and 3) the level of ordinary skill in the art must be resolved ).

In addition to the aforementioned factors, the Supreme Court further annunciated that some “secondary considerations” may also be considered.   The court specifically stated, “such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”    In addition to the foregoing items, caselaw since Graham has identified the following items as “secondary considerations” :   praise by others, licensing activities, copying of the invention, etc.

In summation, although an Applicant will want to focus upon the primary Graham factors in furthering the non-obviousness argument,  the aforementioned secondary considerations could be additionally utilized.

6)   Non-Disclosure Agreements:     A quick review of many corporations invention intake policies reveals that they will not sign a Non-Disclosure Agreement (NDA) to review an invention.   However, once an Applicant has filed a a provisional / non-provisional patent application (or obtained a patent grant), there are no further concerns regarding NDAs due to the provisional application filing.

Considerations

1)   False Marking:    Although an Applicant may utilize the designation “Patent Pending” after a provisional patent application has been filed,  various consequences may arise if a product is marked or marketed with the aforementioned designation with the designation after the following events:  a non-provisional patent application is not subsequently filed within 12 months of the provisional patent application filing date or after patent expiration.

Regarding false marking, ( 35 USC 292 – False Marking) states that:

“(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.”

2)  Satisfy Statutory Requirements: As indicated above, although a provisional patent application is not required to contain any claims, it must satisfy various statutory requirements (35 USC 112, first paragraph / 35 USC 113) for the desired level of scope of the claimed subject matter in the subsequently filed non-provisional patent application.    The aforementioned point cannot be stressed enough … the provisional patent application and non-provisional patent application must each satisfy the same statutory requirements ( written description / enablement / best mode).

In view of the aforementioned requirement, many patent practitioners believe that unless the Applicant believes that the specification of the provisional could be filed as the non-provisional, the provisionals effectiveness may be minimal in obtaining an earlier effective filing date, and may even invalidate the patent (see point 3 below).

Although identical disclosures are not required in both the provisional and non-provisional patent applications, failing to provide sufficient statutory support (written description / enablement / best mode / drawings)  in the provisional for the claimed subject matter in the non-provisional could disallow the benefit claim to the earlier filed provisional.

Accordingly, in view of this requirement, it is uncertain whether a provisional filed with a few paragraphs of details and a rough sketch of one embodiment of the invention would satisfy the aforementioned statutory requirements if the later filed non-provisional patent application included a full claim set (~20 claims) and a few dozen pages of disclosure describing multiple embodiments.

3)  Statutory Bar – Effective Filing Date:  The statutory bar of 35 U.S.C. 102(b) denies a patent to an Applicant if the invention was in public use or on sale in the United States more than one year prior to the patent application filing date.   This is especially relevant in the context of provisional patent applications if a court determines that a non-provisional should not be afforded priority to a provisional.

Further to the foregoing, if such a use or sale occurs and a court holds that a provisional patent application should not be afforded priority due to inadequate statutory support (e.g, 35 USC 112, first paragraph – written description / enablement / best mode) for the later filed non-provisional patent application, the patent may be invalidated if the use or sale was more than one year before the non-provisional filing date (as the provisional filing date in such a scenario would not be relied upon).    See New Railhead Manufacturing, LLC v. Vermeer Manufacturing Company (Fed. Cir. 2002)).

4)   Later Patent Issue Date:    As provisional patent applications are not examined, the later that one files their non-provisional patent application (not later than 12 months from provisional filing), the later a patent grant may arise due to the delayed non-provisional filing.    Accordingly, for Applicants which require an earlier patent issue date for business purposes, it may be advisable to file a non-provisional rather than a provisional.

5)   Multiple Filing Fees:   In addition to the provisional patent application filing fee, the Applicant will additionally incur a non-provisional patent application filing fee.

6)   PCT / Foreign Filing Consideration:   Similar to a non-provisional patent application, a PCT or foreign application(s) must be filed within 12 months of the provisional filing date to claim benefit to the provisional.   As the PCT process is complex (and requires a blog post of its own), many additional details need to be reviewed and considered (preferably with a licensed patent attorney) if this particular route is chosen.

7)  Filing Multiple Provisional Patent Applications: Multiple provisional patent applications, directed toward various advancements of a single invention, may be filed for up to one year from the earliest provisional patent application filing date as said advancements are realized by the inventor(s).   Further, even if multiple provisional patent applications are filed, a non-provisional patent application must be filed within a year from the earliest provisional patent application filing.

However, it should be noted that because each of the subsequently filed provisional patent applications will in essence describe some new inventive feature or advancement of the invention, various claim recitations of the non-provisional patent application may each possess different priority dates which correspond with the respective provisional patent application that first describes said feature.

©2010 Presumptionofvalidity. All Rights Reserved.

Establishing Priority – Reduction to Practice

The Federal Circuit (CAFC) has held that “priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive of the invention and that it exercised reasonable diligence in later reducing that invention to practice.”   Accordingly, a patent applicant may establish “reduction to practice” either constructively or actually.   A “reduction to practice” (actual reduction) occurs in the context of an inventor’s notebook when an invention is constructed and successfully tested.

Filing a patent is considered a “constructive reduction to practice.”   Further, the application filing date is what is used by a patent examiner for determining the date of invention.    Alternatively, a party can also assert an “actual reduction to practice” (MPEP 2138.05 “Reduction to Practice” ) which requires: “(1) construction of an embodiment or performance of a process that met all the limitations of the interference count; (2) . . . determination that the invention would work for its intended purpose, ; and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events” as stated by the CAFC.   Accordingly, an Inventor’s notebook may assist an applicant in corroborating an actual reduction to practice.

Failure to Corroborate Evidence – Loss of Priority

In at least one case, the CAFC in Medichem, S.A. v. Rolabo, 437 F.3d 1157 (Fed. Cir. 2006) reversed the District Courts award of priority to the plaintiff because the Court determined that the inventor’s testimony was not corroborated by sufficient independent evidence.   In the present case, the point of contention involved the third prong (recited above) which requires independent evidence to corroborate an inventors testimony.

Although Medichem introduced documentary corroborating evidence, the court reasoned that the corroborative value of the inventors’ notebooks was minimal because they were not witnessed, and did not provide an “independent” source of authority on the issue of reduction to practice.   Further, the court stated that a non-inventors notebook has minimal corroborative value when the notebook is:  offered into evidence pursuant to authentication by an inventor; the notebook author(non-inventor)  did not testify at trial or otherwise attest to the notebooks authenticity; and “where the notebook has not been signed or witnessed and has not been maintained in reasonable accordance with good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances.”

Notebook Retention Program

Although a number of factors played a role in the courts decision to minimize the corroborative value of the proffered evidence, an important lesson can be extracted:  institute a formal notebook retention program within your organization.    By instituting a formal written program, an organization may be able to overcome any authenticity assertions that may arise concerning the genuineness of inventor records.    Some general ideas to help kick-start a notebook keeping program are included below for maintaining both physical and electronic notebooks.

Physical Notebooks

1)  Bound Notebooks:   The notebook should be bound – DO NOT use a binder with loose pages.

2)  Blue Ink: All entries (essentially anything written in the notebook) should be made using a blue ink pen for authenticity purposes –  DO NOT use pencil!

3)  Corrections:    If a correction needs to made, place a line through the item and initial/date the modification – never correct (or “white out”) a mistake using correcting fluid.

4)  Avoid Blank Spaces Between Entries:   One should avoid including blank space between entries in the notebook.   If blank space does exist between the entries, one should place angled lines through such areas (initial & date the area).

5)  Sign/Witness Each Page:   Ideally, each completed page should be signed/dated by the inventor; AND an individual who is disinterested and not a joint-inventor of the subject invention.   Further, the witness must have a level of skill within the respective art which allows them to understand the technical subject matter contained therein (for attestation purposes).

6)  DO NOT Modify Already Signed/Dated Pages:  Once a page has been signed/dated by all respective parties, no further modifications or insertions should be made.   Instead, additional pages or notebooks should be used to indicate which pages contain errors, etc.   However, if the page has not been signed/dated by the disinterested witness, the Inventor may further a correction as indicated above.  If corrections of signed and completed pages would be allowed, its possible that an authenticity issue could arise thereby jeopardizing the notebook retention program.

7)   Number Pages Sequentially:   All pages of the inventor’s notebook should be numbered sequentially.

8)   Do not remove pages from the notebook:   Pages should not be removed from the notebook to avoid the appearance of impropriety.

9)   Designate a Champion:   To help alleviate any authenticity concerns (and to add an oversight layer), its advisable to designate a champion (a person within the organization) the responsibility of ensuring that the organizations notebook retention program is properly maintained.  The champions duties could include:  ensuring that the inventor notebooks are not improperly accessed (maintaining confidentiality), indexing completed notebooks, controlling the release of the notebooks, etc.   Additionally, the champion could review the submitted inventor notebooks for adherence to the specifics of the notebook retention program.  Furthermore, in addition to maintaining exclusive control of the invention records, this individual chould additionally record the date/time that any notebook was checked-in/out.

10) Factual Details:   The inventor should view the inventor notebook as an unrestricted writing space in which they provide all of the factual details (e.g. drawings, components, materials, amounts/weights, test methods/results, etc.) pertaining to the invention, even those they consider as trivial.  Further, the inventor should be encouraged to provide substantial details in each of their notebook entries.  The level of detail included in each of the inventor notebook entries should allow an individual who is technically skilled within the subject art and unfamiliar with the particular invention to understand the particulars of the invention (e.g., what problem does the invention solve, how is the invention implemented, what items are used, what items were found through testing to make the invention inoperable, etc.).

11)  Collaborators:    If the Inventor is collaborating or working with others during the development of the invention, the notebook should:  include identifying information of the collaborator, describe the collaborators role(s) and indicate whether they contributed to any aspect of the invention.   It should be remembered that the general rule concerning inventorship is that an individual who contributes to the conception of the claimed invention should be included as a co-inventor of the patent application. (MPEP 2137.01 – Inventorship) Contrastingly, if an individual merely reduces the invention to practice (without contributing to conception) further to the direction of an inventor, this individual would likely be considered a technician rather than a co-inventor.

12)  One Notebook Per Invention:   It is generally not a good idea to place invention details related to multiple inventions in a single notebook.

13)  External Documents:    If an inventor reviewed or relied upon an external document during the invention process, a reference should be included within the notebook providing particularized details regarding the document source/date/relevant details/etc.  Additionally, the document should be included within the notebook or provided to the Champion for safekeeping purposes.

It should be noted that pre-printed inventor notebooks are available which include features such as bound permanent pages, identifier fields (title/project/etc.) on each of the pages, sequentially numbered pages, etc.

Electronic Notebooks

Further to the courts focus upon “good laboratory practices sufficient to reasonably ensure its genuineness under the circumstances” in Medichem, it seems possible that an organization could satisfy this requirement by maintaining  electronic inventor records through a computer program.  This computer program would likely follow the principles enunciated above for physical inventor notebooks (e.g., designating a champion, secure check-in/check-out functionality, password security, etc).  Furthermore, I assume that physical printouts (monthly/quarterly) of inventor records coupled with a formal notebook retention program which provides secure inventory control would further the records genuineness.

©2010 Presumptionofvalidity. All Rights Reserved.

Overview / General Rule

The Federal Circuit has held that “No litmus test defines when a preamble limits claim scope.”    Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).    Instead, the court has held that whether to treat a preamble as a limitation is a determination “resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.”  Id. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002).

The general “rule” (as indicated in MPEP 2111.02 – Effect of Preamble) is that a patent claim preamble limits a claim when the preamble  includes recitations limiting structure or when the preamble  “breaths life and meaning into the claim.”   Further, the Federal Circuit has held in at least one other case that a preamble may be limiting when the prosecution history indicates that the Applicant distinguished cited art on the basis of the citation in the preamble.    Bass Pro Trademarks v. Cabela’s (Fed. Cir. 2007).   Additionally, the preamble may be held as limiting if the specification or prosecution history of the subject application states that the recitation in the preamble is essential to the application.      Conversely, if the preamble recitation is only a statement related to the purpose or use of the claimed invention, the preamble recitation is usually not considered to limit the patent claim.

Recitations Limiting Structure – Limiting

Regarding the first limiting instance,  the aforementioned citation to the MPEP states, “any terminology in the preamble that limits the structure of the claimed invention must be treated as a claim limitation. See, e.g., Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989).”    Accordingly, the preamble may be considered as limiting  when a recitation in the preamble of the claim provides antecedent support to recitations in the main body of the claim.

Statements Reciting Purpose or Intended Use – Not Limiting

The above citation to the MPEP additionally states, “the determination of whether preamble recitations are structural limitations or mere statements of purpose or use ‘can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’ Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).”

Preamble Drafting Strategies

A quick review of a number of patents reveals that there is no set or preferred method employed in drafting patent claim preambles. More specifically, while some patent claim preambles are drafted having a broad scope (e.g., “an apparatus comprising” or “a method comprising”), others are drafted with a more narrow scope with some specifics regarding the claimed invention, and possibly including language related to purpose or use.    I prefer employing a mix of the aforementioned approaches, drafting claim preambles with varied scope, and including at least one independent claim having a preamble with a broad scope (e.g., “an apparatus comprising”) during the claim drafting process.

My overall view is that essential claim recitations should preferably be recited only in the main body of the claim.  Failing to follow the aforementioned advice may result in unnecessary headaches during patent prosecution as many Examiners will not consider recitations included in the claim preamble as limitations of the claim. Additionally, as every term of a claim will be scrutinized during litigation, don’t include any language in the preamble which is unnecessary, as such language could be construed adversely against the Patentee.

Although there is persuasive authority as indicated above which describes various situations where a claim preamble is considered limiting, why risk having to assert this argument during patent prosecution, possibly generating unnecessary prosecution history estoppel and costs (monetary and time-related) for the client?

©2010 Presumptionofvalidity. All Rights Reserved.

Background

MPEP 804 states, “The doctrine of double patenting seeks to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The public policy behind this doctrine is that: The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent. In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring). Double patenting results when the right to exclude granted by a first patent is unjustly extended by the grant of a later issued patent or patents. In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).”

As stated above, there are two primary types of Double Patenting Rejections (Statutory and Obviousness-Type).

Statutory Double Patenting finds “statutory” support in 35 U.S.C. 101 which requires that a single patent be obtained for a single invention. Further, the MPEP states that “where the claims of an application are substantively the same as those of a first patent, they are barred under 35 U.S.C. 101 – the statutory basis for a double patenting rejection. A rejection based on double patenting of the ’same invention’ type finds its support in the language of 35 U.S.C. 101 which states that ‘whoever invents or discovers any new and useful process … may obtain a patent therefor ….’ Thus, the term ’same invention,’ in this context, means an invention drawn to identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).” Accordingly, a proper Statutory Double Patent rejection requires the claims of the related applications to be “the same.”

Additionally, the MPEP advises that “a reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Is there an embodiment of the invention that falls within the scope of one claim, but not the other? If there is such an embodiment, then identical subject matter is not defined by both claims and statutory double patenting would not exist. For example, the invention defined by a claim reciting a compound having a ‘halogen’ substituent is not identical to or substantively the same as a claim reciting the same compound except having a ‘chlorine’ substituent in place of the halogen because ‘halogen’ is broader than ‘chlorine.’ On the other hand, claims may be differently worded and still define the same invention. Thus, a claim reciting a widget having a length of ‘36 inches’ defines the same invention as a claim reciting the same widget having a length of ‘3 feet.’”

To overcome a Statutory Double Patenting rejection, the Applicant may either argue against the propriety of the rejection or amend the claims as appropriate to thereby change the scope of the claims. However, it is critically important to remember that terminal disclaimers (which are commonly utilized to overcome Obviousness-Type Double Patenting rejections) CANNOT be employed to overcome Statutory Double Patenting rejections. I personally have encountered Statutory Double Patenting rejections on only a few occasions in my years of practice. The majority of Double Patenting rejections (once again based upon my personal experience) generated by the USPTO relate to the second type: Obviousness-type Double Patenting Rejections.

Obviousness-Type Double Patenting (or “non-statutory” Double Patenting) is a judicially created doctrine intended to prevent unjust patent term extensions by prohibiting claims in a second application that are not patentably distinct from claims in a first application/patent. In contrast to Statutory Double Patenting, a Terminal Disclaimer may be filed in response to an Obviousness- Type Double Patenting rejection. Further, in performing an Obviousness-Type Double Patenting analysis, a 35 USC 103 type analysis should be followed.

Strategy

In evaluating a Double Patenting rejection, the Practitioner should firstly ensure that: 1) “two or more patents or applications must have at least one common inventor”; and/or 2) “be either commonly assigned/owned or non-commonly assigned/owned but subject to a joint research agreement as set forth in 35 U.S.C. 103(c)(2) and (3).” It is critical to perform this initial review as I have previously encountered (on at least one occasion) an improper Double Patenting rejection which did not satisfy either of the aforementioned requirements.

Next, the Practitioner should ensure that the Examiner has focused upon the claims in furthering their prima facie case. Unlike other art-based rejections (anticipation/obviousness rejections) which employ all portions of a citation (e.g, description, figures, summary, etc.), Double Patenting rejections primarily involve the claims of a related application/patent. Accordingly, it would be improper for an Examiner to cite portions of the description of the related application/patent. However, the Specification of the related application may be used in a few limited circumstances (e.g, to obtain the meaning of claim terms). Accordingly, the Examiner must utilize the claims of the related application/patent in furthering the Double Patenting Rejection (however the teachings of the prior art may be coupled with the claims of a related application/patent in furthering an Obviousness-Type Double Patenting rejection).

Further, for a Statutory Double Patenting rejection the analysis is quite straight forward as all of the features of the claims must be found in the claims of the presently examined application and the alleged conflicting application/patent. However, for an Obviousness-Type Double Patenting rejection, the MPEP indicates that the analysis employed here somewhat similarly parallels the guidelines for a 35 U.S.C. 103(a) rejection, namely the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied in furthering an obviousness analysis under 35 U.S.C. 103. The factual inquiries required by Graham as applied here in an Obviousness-Type Double Patenting analysis include:

(A) Determining the scope and content of a patent claim (of the alleged conflicting application/patent) relative to a claim in the presently examined application;
(B) Determining the differences between the scope and content of the patent claim as determined in (A) and the claim in the presently examined application;
(C) Determining the level of ordinary skill in the pertinent art; and
(D) Evaluating any objective indicia of nonobviousness.

Additionally, in formulating the double patenting rejection, the Examiner will employ the above Graham analysis through a One-Way Obviousness test (whether claim A of the presently examined application would have been obvious given claim B of the alleged conflicting application/patent) or a more stringent Two-Way Obviousness test in which the analysis is furthered in both directions (e.g., would claim A have been obvious given claim B, and would claim B have been obvious given claim A). It is safe to assume that the One-Way Obviousness test will usually be employed by the Examiner unless a number of factors are all concurrently present ( 1) the presently examined application has an earlier filing date than the alleged conflicting patent; 2) administrative delay by the USPTO; and 3) sufficient record illustrates that the Applicant could not have filed a single application.

Further to the aforementioned factual inquiries, the Examiner is required to provide reasons as to why the rejected claims of the presently examined application are obvious variants of the claims of the alleged conflicting application/patent. However, it must be noted that Examiners will many times simply provide a conclusory assertion such as “Claims 1-5 of the present application are obvious variants of claims 1-5 of Patent No. XYZ” and not provide the proper associated reasoning. Accordingly, when such a situation arises, the Practitioner should traverse the rejection and indicate that the Examiner has not presented a prima facie case by failing to provide the required reasoning for the Obviousness-Type Double Patenting Rejection.

Terminal Disclaimers

The filing of a terminal disclaimer to overcome an Obviousness-Type Double Patenting rejection is quite common. However, there are a few points that need to be realized prior to filing a Terminal Disclaimer, namely: 1) patent term reduction; and 2) patents/applications become tied together to a same assignee (hence, sale of one patent/application requires sale of the tied patent/application to that the same assignee.) Furthermore, once the application issues as a patent, a mistakenly filed Terminal Disclaimer cannot be withdrawn. However, while the Application is still pending, an Applicant may cure the mistake by filing a continuation application to remove an improperly filed Terminal Disclaimer.

Furthermore, prior to filing a Terminal Disclaimer, the Applicant should review the current state of the Application (namely, are there other art-based (102/103) rejections in the outstanding Office Action, or is the Obviousness-Type Double Patenting rejection the only remaining rejection?) As indicated above repeatedly, the claims form the basis for a Double-Patenting rejection. Thus, if the Applicant will likely amend the claims to overcome an art-based rejection, an Applicant may want to hold off on filing the Terminal Disclaimer as there is a possibility that the scope of the claims may change due to the claim amendment. However, if the Obviousness-Type Double Patenting rejection is the only remaining rejection, filing a Terminal Disclaimer may be appropriate to expedite the receipt of a Notice of Allowance.

For further information regarding Double-Patenting rejections, you are invited to review at least: MPEP 804

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Hence, by conducting an Examiner Interview, not only is the Applicant able to point out why the cited art does not teach the various recitations of the claims, but it also provides the Examiner with an opportunity to gain a further understanding of the Application.

In view of the above, it is submitted that such a result is a win-win for both the Applicant and the Examiner. The result is a win for the Applicant as it is likely that the Examiner will withdraw the rejections/objections that are present in the outstanding Office Action. Furthermore, it is a win for the Examiner as they will many times step away from the Interview with a better understanding of the Application and will therefore be able to conduct a more focused/proper prior art search. Additionally, if the Examiner is able to better understand the subject application, they will likely be able to conduct the search with less difficulty.

The role of a properly conducted prior art search by the Examiner is extremely beneficial for an Applicant. Although U.S. Patent Law does not require an Applicant to conduct a prior art search (however it does impose a duty upon the Applicant and their representative(s) to identify any known information “material to patentability”), if the Applicant forgoes an initial prior art search before drafting a patent application (which is not advised), a well-conducted prior art search by the Examiner may provide the Application with an additional layer of protection. Accordingly, if Office Actions contain rejections that are at least reasonable, they will in effect strengthen the Application.

Furthermore, it should be noted that the MPEP indicates that an interview cannot be employed to “sound out” the examiner MPEP 713.03. Instead, the Interview should only be used if it “could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.” MPEP 713.01

An Interview does not remove the necessity for replying to an Office Action as specified in Section 1.134. Furthermore, although Examiner Interviews are normally not granted before a First Office Action (except for continuing or substitute applications), it must be additionally noted that the Applicant does not have an absolute right for an interview after a Final Rejection (but the examiner may grant the interview if they so choose). My personal experience regarding requests for conducting an Examiner Interview if the outstanding Office Action is Final have been mixed. Although I have not kept an accurate accounting, I believe Examiners are more likely to NOT grant a request for an Interview if the outstanding Office Action is Final.

However, after the First Office Action, an Examiner Interview is allowed as a matter of right. Further, an Interview is normally not granted after an appeal brief is filed or after an Application has been passed to issue. MPEP 713.05 Additionally, the Interview should be arranged for in advance.

Of the “recognized” methods of communication, In-Person Examiner Interviews can be quite effective for furthering prosecution. A trip to the PTO may be worthwhile because the examiner may have an opportunity to see the invention physically (if one is available) and physical interaction builds rapport. However, the Applicant will incur additional costs related to Practitioner travel, etc. (even if the practitioner is located in Washington, D.C.). The prior point cannot be stressed enough especially in todays tough economy.

However, in contrast to In-Person Examiner Interviews, I have found that telephonic interviews can be an equally effective means to accomplish an Applicant’s goals. Further, a number of Examiners have stated to me that they actually prefer a telephonic interview if it is coupled with a concise “agenda.” Additionally, such an “agenda” is actually required by the MPEP. Specifically, MPEP 713.01 states that, “When applicant is initiating a request for an interview, an ‘Applicant Initiated Interview Request’ form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed.”

In the PTOL-413A (or the agenda), I normally include a description of: the rejection, the claim number and a portion of the claim recitation that I want to discuss. In this way, by pointing out to the Examiner which issues I want to discuss with detailed particularity, the Examiner can review the specific claim recitation I indicated, and further, can review the art which was correlated as allegedly teaching the indicated claim recitation. By providing such information in advance, a more constructive conversation can be maintained.

Finally, I cannot stress enough the importance of treating the Examiner the way you yourself would want to be treated. As human beings, we constantly disagree on a number of matters on a daily basis. However, many times it is the case that both parties to a disagreement essentially agree, but either one or both of the parties are not listening. By failing to listen to the other, one may not realize that a mutual understanding does indeed exist between both parties. For example, sometimes a single word can have conflicting meanings to both the Applicant and Examiner, and therefore create a contention. Other times, there is a misunderstanding regarding the function that a certain item in the cited art performs. Listen carefully, and you will likely obtain a desired result.

Further details regarding Examiner Interviews may be found in at least @ MPEP 713.01.

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A simple shortcut for remembering the various 102(b) statutory bars is: the publication or patenting of an invention can occur anywhere, while the use or sale is limited to this country (the United States), MORE THAN one year before the U.S. filing. Additionally, although the statutory bars are absolute, there is a limited experimental-use exception (which requires its own post) which if applicable, may not bar patentability.

Furthermore, in addition to the aforementioned inquiry, the attorney/agent should ask the inventor whether any web pages, handouts, presentations, web pages, brochures, etc. were ever generated for the invention (even a single copy or a single public use). Its important to ask whether any of the aforementioned items were generated as the Inventor may not realize that a disclosure even occurred until asked about specific items. If any of the aforementioned items were indeed generated and disclosed to the public, patentability may be lost if a year has elapsed since the disclosure to the public. However, if a disclosure has occurred, and a year has not elapsed, the practitioner should immediately inform the inventor (or organization that will likely be assigned the patent) that patentability will be lost unless the application is filed within the one-year grace period.

Although these statutory bars may seem harsh, in comparison to most other foreign countries, the United States has one of the most liberal grace periods (of one-year). In fact, many foreign countries do not provide any sort of grace period prior to filing; therefore, any sort of disclosure of an invention prior to filing may bar patentability in such countries. However, as most foreign countries allow an Applicant to file a patent application therein within one year of filing in another country, the Applicant may want to firstly file the application in the United States (and than file within the foreign country within a year) if foreign protection will likely be sought. However, notwithstanding the foregoing, if foreign protection will be sought, a proper investigation should be conducted for each particular foreign country (as patent protection is regional) prior to any public disclosure.

Overall, it is nearly always preferable to firstly file a patent application prior to any disclosure, public use or offer for sale. However, as the “real world” does not always for such a setting, it is highly advisable that the practitioner advise their client appropriately of the consequences that may result in view of the aforementioned statutory bars. For further details regarding “public use” and “on sale” activities in the United States, the reader is invited to review MPEP 2133.03.

©2010 Presumptionofvalidity. All Rights Reserved.

– Joseph Iskra

©2010 Presumptionofvalidity. All Rights Reserved.