Application Drafting
and Provisional Applications
By
Scott W. Cummings
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What is the Goal of a Patent Application?
 To obtain a patent for the client by convincing the
Patent Office (i.e., an Examiner) that the invention
is patentable.
 It is a form of sales – like a proposal
 Take some pointers from the advertising industry
 People don’t buy when they:
• Don’t feel the need for what you are selling
• Don’t trust the salesman or solution being offered;
credibility is lacking.
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Outline
 Application Drafting
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Attributes of a well-written application
Filing Strategies
Legal Requirements
Drafting Ideas/Tips
 Provisional Applications
 Filing Requirements
 Strategic Uses/Basis for Priority
 Pros and Cons
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The “well-written”
patent application
 What attributes should a well-written patent
application have?
 Describe the invention so one of ordinary skill can
understand it
 Disclose the best mode
 Provide support for claims of unknown scope
 Claims narrow enough to avoid prior art
 Claims broad enough to hamper design around
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The “well-written”
patent application
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Claims clear enough to provide notice
Factually accurate
Suitable vehicle for foreign filing
Tell a story
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Substantive Legal Requirements
 35 U.S.C. §101
 Eligible subject matter
 Utility
 35 U.S.C. §112, ¶1
 Enablement
 Written description
 Best mode
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Substantive Legal Requirements
 35 U.S.C. §112, ¶2
 “Definiteness” requirement
 Claims evaluated in light of
• Content of the application
• Prior art
• Interpretation given by those of ordinary skill
 “Special” terms
• Define in the specification/be your own lexicographer
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Substantive Legal Requirements
 35 U.S.C. §102
 Novel
 35 U.S.C. §103
 Nonobvious
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Application Drafting Ideas Tell the Story of Invention
 Patent application as a vehicle to communicate and
persuade
 The cast of characters
 The prior art
 Likely users of the technology
 Our hero - the inventor(s)
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Application Drafting Ideas Tell the Story of Invention
 Setting the stage
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Background of the invention
Unfulfilled needs
Failures of others
Problems with the prior art
Serious nature of the problem
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Application Drafting Ideas Tell the Story of Invention
 But . . . “what you say may be used against
you in a court of law”
 Three pitfalls to avoid in the background
 Disclaimer via “criticism and disavowal”
 Written description – failure of claimed subject
matter to address at least one state problem or
object
 Use of stated problems to support allegations
of obviousness
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Application Drafting Ideas Tell the Story of Invention
 Disclaimer via “criticism and disavowal”
 Keep the discussion general, focus on problems and
deficiencies of the prior art, not specific features
 Try a disclaimer:
• “While certain aspects of conventional technologies have
been discussed to facilitate disclosure of the invention,
Applicants in no way disclaim these technical aspects, and
it is contemplated that the claimed invention may
encompass one or more of the conventional technical
aspects discussed herein.”
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Application Drafting Ideas Tell the Story of Invention
 Written description – failure of claimed subject matter to
address at least one state problem or object
 Revolution Eyewear, Inc. v. Aspex Eyewear, et al., (2009)
 Avoid listing “objects” of the invention
 Try a statement like:
• “The present invention may address one or more of the problems
and deficiencies of the prior art discussed above. However, it is
contemplated that the invention may prove useful in addressing
other problems and deficiencies in a number of technical areas.
Therefore the claimed invention should not necessarily be
construed as limited to addressing any of the particular problems
or deficiencies discussed herein.”
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Application Drafting Ideas Tell the Story of Invention
 Use of stated problems to support allegations of
obviousness
 From KSR: “Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in a manner claimed.” (emphasis added)
 Totally avoid discussion of problems to avoid above?
 Or, use a disclaimer?
• “In this specification where a document, act or item of knowledge
is referred to or discussed, this reference or discussion is not an
admission that the document, act or item of knowledge or any
combination thereof was at the priority date, publicly available,
known to the public, part of common general knowledge, or
otherwise constitutes prior art under the applicable statutory
provisions; or is known to be relevant to an attempt to solve any
problem with which this specification is concerned”
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Application Drafting Ideas Tell the Story of Invention
 The hero saves the day
 Summary of the invention
 Tie to Background (problem/solution)
 Broad characterization of benefits (e.g., functional)
 Recast independent claims – Support for the claimed
invention
 Detailed description
 Refer to advantages of the described features
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Application Drafting Ideas Define “Special” Claim Terms
 Avoid §112, ¶2 issues
 Be explicit (“As used herein, the term X means Y”)
 Claim interpretation
 Applicant’s definition controls
 Choose your words wisely
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Application Drafting Ideas –
Avoid narrow characterizations
 Overly narrow characterizations of what constitutes
the invention have been used to limit the scope of
the patented claims (Honeywell Int’l. v. ITT
Industries, Inc.):
 "this invention relates to a . . .",
 according to the present invention, a . . . ",
 "a . . . made pursuant to the teachings of the present
invention“
 coupled with a lack of description of alternative
embodiments
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Application Drafting Ideas –
Avoid narrow characterizations
 Other terms/characterizations to avoid:
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“critical”
“essential”
“key”
“necessary”
“important”
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Application Drafting Ideas –
Avoid narrow characterizations
 Solutions =
 Use alternative language such as: "certain embodiments
of the present invention include, but are not limited to . . .”
 Describe as many alternative features and embodiments
as possible.
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Application Drafting Ideas Avoid Dedication to the Public
 Problem = Disclosed but unclaimed subject matter
is “dedicated to the public”
 Maxwell v. J. Baker, Inc.
 Solution = Draft a comprehensive set of claims
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Application Drafting Ideas Avoid Hyperbole
 37 C.F.R. §1.56 - Duty of candor and good faith
 Misrepresentations, misleading statements, and
omissions violate this duty.
 Result = patent unenforceable due to “inequitable
conduct”
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Application Drafting Ideas Avoid Hyperbole
 Hoffman-La Roche, Inc. v. Promega
 Specification contained an “example” implying that an
experiment had been conducted
 Actually the “example” was prophetic and never actually
performed
 Result = patent unenforceable due to inequitable conduct
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Application Drafting Ideas Disclose Testing Methodologies
 Honeywell International
 Claims characterized a polymer yarn by its “melt point
elevation” (MPE). Measured MPE value highly
dependent upon technique used to collect the yarn for
testing
 Patentee failed to disclose which technique was used to
collect the yarn sample
 Result = claims “insolubly ambiguous” and invalid under
35 U.S.C. §112, ¶2
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Application Drafting Ideas Think Globally
 EPO and JPO - problem/solution approach to
determine inventive step (obviousness)
 Telling the story of invention in the application will
provide a good basis to meet this requirement
 EPO - strict interpretation of “new matter”
 Limited ability to amend
 Solution = comprehensive claim set
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Provisional Applications
 35 U.S.C. §111(b)
 Act as a “placeholder”
 Never substantively examined
 Automatically lapse or mature one year from the filing
date
 Once filed, applicants can mark “patent pending”
 Can not claim priority from another appln.
 Patent term measured from filing date of subsequent
nonprovisional application
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Provisional Applications
Filing Requirements
 A specification
 A drawing (if required to
understand the invention)
 A cover sheet or cover
letter
 Fee
NOT Required
 A claim
 An oath or declaration (37
C.F.R. §1.63)
 An IDS
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Provisional Applications As a Basis for Priority
 Domestic Priority
 35 U.S.C. §119(e)
 Foreign Priority (PCT and National Filings)
 Article 4 of the Paris Convention
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Provisional Applications Domestic Priority
 Requirements
 Nonprovisional application (35 U.S.C. §111(a))
 Within 12 months of the filing date of the
provisional
 At least one common inventor
 Reference to the provisional application
 Provisional application must satisfy §112, ¶1 for
the invention claimed in the subsequent
nonprovisional application
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Provisional Applications Domestic Priority
 New Railhead Manufacturing
 Patent claimed drill bit with certain angle between the
bit and its housing
Jan 96
Jan 97
Sales spring/
summer 96
2/97 - File
Provisional
Jan 98
11/97 - File
Utility
*Sales > 1 Yr.*
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Provisional Applications Domestic Priority
 Court found that the disclosure of the provisional application did
not meet the written description requirement with respect to the
subsequently claimed drill bit angle
 Applicant not entitled to priority back to the filing date of the
provisional application (limited to 11/97 filing date)
 Sales occurred more than one year prior to the 11/97 date, thus
patent invalid under 35 U.S.C. §102(b)
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Provisional Applications Foreign Priority
 Article 4 of the Paris Convention
 A “regular national filing” in one country provides a basis for a
priority claim in an application filed within 12 months in another
member country
 Governs priority claims in PCT applications
 Provisional applications are considered a regular national filing
 Must file PCT/foreign application(s) within 1 year of the filing
date of the provisional application.
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Provisional Applications
Advantages & Disadvantages
Advantage
 Are relatively simple and
inexpensive to file. They
do not need a declaration,
claims or an IDS. The
specification is not
examined, and can
therefore be informal
(PowerPoint presentations,
manuals, lab notebook
entries, etc.)
Disadvantage
 Must satisfy the
requirements of 35 U.S.C.
§112, ¶1 with respect to a
later-claimed invention in
order to provide any benefit
of priority.
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Provisional Applications
Advantages & Disadvantages
Advantage
 A utility application can claim
priority to multiple provisional
applications. Thus, multiple
provisional applications can
be filed in the one-year time
period measured from the
earliest-filed provisional
application in order to capture
changes in rapidly evolving
technologies.
Disadvantage
 The various claims of the
later-filed utility application
may have different priority
dates based on multiple
provisional application filing
dates, which must be
evaluated and considered.
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Provisional Applications
Advantages & Disadvantages
Advantage
 The patent term of a regular
utility patent that claims priority
to a provisional application is
21 years from the filing date of
the provisional application.
Disadvantage
 Examination is delayed up to
one year.
 The content must be evaluated
for adequacy of disclosure to
support the claim for priority.
 They do not have to be in
English. Thus, copies of
foreign priority documents may
be filed as provisional U.S.
applications.
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Provisional Applications
Advantages & Disadvantages
Advantage
 The filing date of a provisional
application can be relied upon
to claim the benefit of priority in
other countries under Article 4
of the Paris Convention
Disadvantage
 The filing date of a provisional
application starts the one-year
grace period to complete PCT
and/or direct national foreign
filings and obtain the benefit of
priority. This date must be
docketed and kept in mind
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Conclusion
 Application drafting
 Patent application as a vehicle to communicate
and persuade
• Substantive and formal legal requirements
• Tell the story of invention
 Provisional applications
 Relatively simple and inexpensive
• Client pressure to file provisional applications
 Without quality disclosure loss of priority and
possible loss of patent rights loom
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