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 Provisionals: Claims or no claims 
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Joined: 2012-01-26 00:02:09
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I was at a conference yesterday and the topic came up. One of the panelist stated that a provisional without claims is not worth anything. Most agreed, but one panelist stated that he did not think it was the case. I personally see both sides. Focus more of the limited resources on disclosure or Making sure you have support for what you believe you will claim in the NP.

Given that we are going to start filing provisionals like crazy, what are your thoughts?

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2012-03-28 10:11:58
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Joined: 2012-01-26 15:47:36
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Location: In a bank with Sal.
Even for an entity planning to file only in the US, I think claimless provs are problematic, and even if the specification text won't change in the intervening priority year. The only use of a prov is to provide earlier priority for your eventual utility claims. When I write my claims, I also embed them into the spec as part of the Summary section (sans "comprise", "said", etc. and in a more). IMHO anyway, then, there's no question that the words in the claims have at least text support in the spec. (enabled?, etc. being separate questions).

Now, go outside the US to some other important markets. EU (patenting via the EPO) is a good example. The EPC rules have very little tolerance for claims wording that does not have verb sap support in the spec. So what happens to your claim of priority to that (claimless) prov? If your claims language upon entering the EPO (and/or claims as eventually granted by EPO) is not "directly and unambiguously" derived from the prov. text, then you should lose your priority claim and intervening art can be used.

I have several times gotten competitors' patents revoked in EPO opposition in part using publications that did not seem to qualify as "prior art" based on the patents' priority claim, by getting the Opposition Division to agree that the EP claims as granted could not be unambiguously derived from patentees' US provisional. So they lose rights to that priority claim, and in comes my art. In at least two of these cases, it was made very easy because the provs were either claimless or had an omnibus type claim. So the "patent-speak" type language of the claims wasn't precisely replicated anywhere in the provs. (Not to imply I'm always a "winner" - I've also lost some important claims in EPO opposition via loss of right to US prov, but that was because of claims based on further work that got added at utility/PCT stage a year later, which didn't exist at prov filing.)


2012-03-28 13:30:55
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Joined: 2011-12-26 16:53:41
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dogdaypm wrote:
Even for an entity planning to file only in the US, I think claimless provs are problematic ... When I write my claims, I also embed them into the spec as part of the Summary section (sans "comprise", "said", etc. and in a more). IMHO anyway, then, there's no question that the words in the claims have at least text support in the spec. (enabled?, etc. being separate questions).


When you say "write my claims", you're talking about writing claims for a provisional? And you're saying you also copy the claims to the Summary section of the provisional.

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Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-03-28 18:05:05
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dab2d wrote:
One of the panelist stated that a provisional without claims is not worth anything. Most agreed, but one panelist stated that he did not think it was the case.?

I'll try to come back later to give my own opinion ... but I was just researching this very issue the other day, and came upon this reasoning for *not* including claims:

Quote:
http://www.patentwizard.com/faq.aspx
Do I need to include at least one "claim" within my provisional patent application for foreign priority purposes?

No. Some individuals feel that some foreign countries may not recognize a provisional patent application filed without claims. However, we are unaware of any case law or statute in a foreign country that would require the usage of a "claim" within a U.S. provisional patent application. In fact, adding a claim to a provisional patent application may create potential problems for future patents that claim priority from the provisional patent application based upon "prosecution history estoppel" arguments.

Now, the attorney offering the above opinion also markets "do your own provisional" software. I'm guessing that telling folks that claims are a good idea would undermine the usefulness of his software. That is, such a position would be an admission that folks should hire a lawyer, at least to write the claims, rather merely filing the provisional generated by his software.

That said, his point about prosecution history estoppel is interesting. I say that even though I've never come across a case that limited the scope of a claim after the asserted claim had been narrowed from a claim filed in a provisional.

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Karen Hazzah
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The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-03-28 18:12:32
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Joined: 2012-01-26 00:02:09
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the big issue I am hearing here is that file claims because of the EU system.... my question is? are you not allowed to amend EU patent claims? If so, then it is almost impossible that your final verbatim claims are in fact listed in the spec.

If you can amend to something that is not verbatim in the spec, then why wouldn't a claim with no verbatim in the spec not be allowed to stand.

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2012-03-29 00:55:44
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dab2d wrote:
the big issue I am hearing here is that file claims because of the EU system.... my question is? are you not allowed to amend EU patent claims?

You can indeed amend during prosecution in the EPO. It's just that the EPO treats their rough equivalent of our written description/possession/new matter requirement very seriously. From my understanding, their requirement is a little less strict than verbatim, but not by much.

So, when I direct an EPO foreign associate to make amendments that are not verbatim yet would not raise 112/new-matter issues in the US, I often get the response "that's not gonna fly" from the EPO foreign associate.

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2012-03-29 13:07:49
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Joined: 2012-01-26 15:47:36
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Location: In a bank with Sal.
khazzah wrote:
That said, his point about prosecution history estoppel is interesting. I say that even though I've never come across a case that limited the scope of a claim after the asserted claim had been narrowed from a claim filed in a provisional.

Been a while since I looked at the final Festo outcome, but my recollection is that the estoppel attaches when you amend a claim in a response, where such amendment is made to overcome an assertion of unpatentability. If that recollection is correct, then I can't imagine how estoppel could attach in view of utility claims as filed being different than provisional claims as filed.


(from khazzah) "When you say "write my claims", you're talking about writing claims for a provisional? And you're saying you also copy the claims to the Summary section of the provisional."
- Yes. Sorry for not being clear. Any prov I write is written exactly as if it is the utility, other than the rare "OMG we're disclosing this invention tomorrow!" situations. And where I was trained, it was required that all claimed subject matter be in the Summary section.


(from dab2d) "are you not allowed to amend EU patent claims?"
- I think khazzah already covered this, but yes in the EPO you can make claims amendments. They do need to be very close to the spec language. Even if you get the Examining Division to accept an iffy amendment, if you have competitors who regularly oppose your patents, they'll nail you for claiming content that goes "beyond the scope" of the spec. Then you're really hosed because according to the EPC, only narrowing amendments may be made during opposition, and removing language from a claim is most often seen as a broadening amendment.


2012-03-29 15:18:26
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Joined: 2012-01-18 01:10:09
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dab2d wrote:
I was at a conference yesterday and the topic came up. One of the panelist stated that a provisional without claims is not worth anything. Most agreed, but one panelist stated that he did not think it was the case. I personally see both sides. Focus more of the limited resources on disclosure or Making sure you have support for what you believe you will claim in the NP.

Given that we are going to start filing provisionals like crazy, what are your thoughts?

For whatever reasons for including a claim in a provisional application, it cannot be for the purpose of providing written description support for the same claim in a subsequent nonprovisional application. Any reason for inclusion other than discussed above?


2012-03-29 20:15:40
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dogdaypm wrote:
khazzah wrote:
That said, his point about prosecution history estoppel is interesting. I say that even though I've never come across a case that limited the scope of a claim after the asserted claim had been narrowed from a claim filed in a provisional.

[I think Festo says] estoppel attaches when you amend a claim in a response, where such amendment is made to overcome an assertion of unpatentability. [So] I can't imagine how estoppel could attach in view of utility claims as filed being different than provisional claims as filed.

I think you summarized the argument-based estoppel holding of Festo accurately. And yeah, what you say makes sense.

Any amendments you make in prosecuting the utility were not made to overcome a rejection in a provisional -- since by definition, provisionals aren't examined. Ergo, Festo doesn't apply. Moreover, while a provisional may include a provisional, and your utility claims might look quite different from those claims, your utility claims aren't amendments from any claims in a provisional.

So you've convinced me that the quote I posted earlier from PatentWizard -- that a provisional could theoretically trigger prosecution history estoppel -- does not stand up to reasoned analysis.

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Karen Hazzah
Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-03-30 15:55:38
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Joined: 2012-01-08 23:06:37
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In my firm, we are often called upon to file provisionals on very short notice (sometimes one day), because a public disclosure is imminent (conference talk, trade show, publication) and the client wants to preserve foreign filing rights [often, the client has heard of the "one year grace period" but doesn't realize that it doesn't apply generally outside the US, or the client is a Megacorp and the inventor didn't go through proper clearance before submitting a paper to a journal or conference]. There is no time really to figure out what to claim as the invention. My boss feels it's safer not to claim anything. That is, if the provisional claims the invention is A, there may be a problem later (upon a proper analysis) if it turns out that the invention is not A and the nonprovisional claims the invention is B.


2012-03-31 17:20:16
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Joined: 2012-01-03 23:03:44
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Having just filed a PCT, counsel made a strong point of verbatim support in the spec, not only in the PCT, but also for any claimed provisionals. His final draft of the PCT had a copy-paste of the claims in the spec, with only the addition of drawing numerals added.

As for prosecution, I heard of a trick where you can file a non-provisional, then turn around and refile the same thing as a provisional. Then, if the non-provisional comes back for narrowing, you can abandon it, and file a new non-provisional claiming priority to the provisional. This way, you have the narrowing done, but the file wrapper will show no narrowing.


2012-04-09 22:05:27
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Joined: 2011-12-26 16:53:41
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fb2 wrote:
As for prosecution, I heard of a trick where you can file a non-provisional, then turn around and refile the same thing as a provisional. Then, if the non-provisional comes back for narrowing, you can abandon it, and file a new non-provisional claiming priority to the provisional. This way, you have the narrowing done, but the file wrapper will show no narrowing.

Wow, now that's an example of form over substance ... wonder if the courts would see through this ploy, and apply estoppel based on statements/amendments made in the abandoned app. Presuming, of course, that the defendant found the abandoned app and made this argument.

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Patent Prosecution blog "All Things Pros" http://allthingspros.blogspot.com/

The opinions expressed on this message board are mine and do not represent the views of my law firm, colleagues, or clients. My writings on this board are not legal advice and are offered for educational purposes only. No attorney-client relationship is created by my writings on this board.


2012-04-10 15:18:29
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Joined: 2012-01-24 14:53:15
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fb2 wrote:
As for prosecution, I heard of a trick where you can file a non-provisional, then turn around and refile the same thing as a provisional. Then, if the non-provisional comes back for narrowing, you can abandon it, and file a new non-provisional claiming priority to the provisional. This way, you have the narrowing done, but the file wrapper will show no narrowing.


this would only work during the 1yr provisional period. since it's rare to get an office action within 1 year of filing, what's the real utility of this strategy?


2012-04-11 15:58:38
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Joined: 2012-01-26 15:47:36
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Location: In a bank with Sal.
Evil InHouse Counsel wrote:
this would only work during the 1yr provisional period. since it's rare to get an office action within 1 year of filing, what's the real utility of this strategy?



Gotta love tasteful understatement.

In order of likely probability:
- Looking over a four-leaf clover (whether one had overlooked it previously or not).
- The check is actually in the mail.
- That person from the government is truly "here to help you".
- Finding a unicorn[1].
- Getting an art-based OA within 12 months of utility filing (said utility not being a div/con of a prior allowed app).
- Getting to ride on said unicorn[1].

[1] The unicorn's name is "Slim" and he said your chances of hitching a ride were "None".


2012-04-12 10:19:37
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