Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional ApplicationSeptember 10, 2015

Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit.

Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can constitute a prior art reference under certain provisions of 35 U.S.C. § 102. One such provision related to published patent applications is 35 U.S.C. § 102(e), which states, “[A] person shall be entitled to a patent unless . . . the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the application for patent . . . .‚¬

The “application for patent by another”language applies to not only non-provisional applications, but also provisional applications. See 35 U.S.C. § 111(b)(8). Further, 35 U.S.C. § 119(e)(1) treats a non-provisional application as though filed on the date of its corresponding provisional application, provided there is support in the written description consistent with 35 U.S.C. § 112(a).

In 2010 in the case of In re Giacomini, the Federal Circuit required the written description provide support “for the claimed invention.”But see MPEP § 211.05(I)(A) (“the provisional application adequately provides . . . a written description of the subject matter of the claim(s) at issue in the later filed nonprovisional application”(emphasis added). In that case, the anticipatory reference had a non-provisional application filing date after the filing date of the application at issue, but a provisional filing date before the same.

A similar situation arose in September 2015 in the case of Dynamic Drinkware, LLC v. National Graphics, Inc. Specifically, the patent at issue had been reduced to practice on June 12, 2000. The anticipatory reference had a non-provisional filing date after June 12, 2000, but a provisional filing date of February 15, 2000. Thus, whether the anticipatory reference can be properly asserted against the patent (in the post-grant proceeding) boiled down to which date constituted the effective filing date.

The Federal Circuit held that the anticipatory reference (“Raymond‚¬) was not entitled to an effective filing date as of the filing date of provisional application because the challenger “failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application.‚¬ The court emphasized that nowhere is support demonstrated “in the Raymond provisional application for the claims of the Raymond patent.”Rather, the challenger compared the claims of the patent at issue to the Raymond patent and the Raymond provisional application. Not establishing a link between the Raymond provisional application and the claims of the Raymond patent proved disastrous to the challenger’s case.

Question: what if the disclosure in a provisional application that anticipates a later claimed invention has little to do with the issued claims ultimately stemming from the provisional application. That is, what if the anticipatory disclosure is background, incidental, or additional information? Then, throughout the prosecution of the non-provisional application, the claims morph into a state that is unsupported by the disclosure of the provisional application. In such a situation, the priority date of the provisional application cannot be claimed, and a later filed application might still be patented despite clear disclosure of certain features of the claimed invention that are reflected in an earlier filed application.

A hypothetical example: Company A files a provisional application directed to a duffel bag with two pockets. After a non-provisional is filed claiming priority to the provisional application, the claims issued in the patent are directed only to two pockets with zippers.

Company B files an application between the dates of the provisional application and the non-provisional application of Company A. The application is directed to the same crisscross shoulder strap for a duffel bag as disclosed by Company A. The patent issues.

Company A challenges the patent of Company B based on the disclosure contained in Company A’s provisional application. If the court determines that the disclosure of the two pockets does not provide written description support for the claimed two pockets with zippers, then the effective filing date of the provisional application cannot be asserted, and Company B’s patent will remain valid. This is despite the fact that there is clear prior conception of a crisscross shoulder strap for a duffel bag. In other words, Company B patented an idea that was already conceived (and published).

Such a result is at odds with a first-inventor-to-file system. Such a scenario could also be considered at tension with typical analyses under §§ 102 and 103, wherein any disclosure contained within the four corners of the reference can be asserted against a patent or pending patent application. Based on the Dynamic holding, it is important in any post-grant proceeding to establish the earliest effective date possible by showing written description support for the claims of the issued patent.

Of note, under post-AIA rules, the challenger would have prevailed in Dynamic because the provisional filing date of the patent at issue was after both the provisional and non-provisional filing dates of the anticipatory reference. The case was determined under the pre-AIA regime, which permitted evidence of reduction to practice to be introduced.

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