Provisional application filing strategies
Prudently used, a PPA is a quick, simple, cost-effective tool for protecting inventor's rights to their inventions. While the PPA route may not appropriate in every case, filing PPAs make sense in cases where there danger of loss of substantive rights, where the invention is still under development, where initial cost containment is important, and where there is a need to maximize patent term and quickly establish an early filing date.
(a) Avoid patentability statutory bars
PPAs are best utilized to prevent a patentability statutory bar in the U.S. under §102(b) and to preserve "absolute novelty" abroad while facilitating a planned public use or sale for business purposes. In situations where the inventor is about to disclose, sell or offer for sell the invention and there is insufficient time to prepare a regular utility application, filing a PPA protects the inventor's rights in the U.S. and foreign convention countries. Even if foreign filing rights are lost, PPAs can be filed to avoid a §102(b) patentability bar in the U.S. if it is filed within one year after public disclosure or sale of the invention has occurred.
(b) Postpone patent prosecution
In situations where the invention is still being developed and improved upon and the inventor wishes to delay examination of the patent application to incorporate technological developments and improvements, a series of "rolling" PPAs may be filed within the one year period to cover the new invention embodiments and improvements. At the one year anniversary of the first filed PPA, a utility application may be filed which incorporates the disclosures of the earlier PPAs, each having a different priority date. This strategy intentionally delays examination of the patent application and allows the inventor to further develop and refine the invention.
(c) Defer prosecution costs
For inventors who are uncertain about the need of patent protection for their inventions and are concerned about cost containment, PPAs advantageously allows inventors to reserve a right to obtain patent protection at a later date at low cost while allowing the inventors a one year time period to evaluate marketability, manufacturing arrangements, licensing and investment opportunities for their invention.
(d) Delay the start of the 20 year patent term
A PPA does not diminish the 20 year patent term as the patent term is measured from the filing date of the regular utility application, not the PPA.37 Hence, by filing the PPA first followed by a regular utility patent application claiming priority to the PPA, the inventor in effect has extended his "patent pending" status to 21 years.38
Alternatively, the inventor can also maximize the twenty year patent term by converting an initially filed regular utility application into a PPA and filing a regular application which covers the original invention and any improvements.39 The original utility application is automatically converted to a PPA by filing a request to convert the regular application prior to the abandonment of the regular application, payment of the issue fee, one year anniversary of the filing date of the regular application or the filing of a request for a statutory invention registration.40 This strategy triggers the start of the 20-year patent term from the second filed utility application and allows the inventor to include subsequent improvements of the invention in the second filed application.
While postponing the start of the 20-year patent term may have little or no value for inventions in rapidly evolving technology areas, applicants for inventions that achieve high commercial value late in the patent term could benefit from this strategy. For instance, this strategy may be valuable for inventions that have long product or market development cycles and for pharmaceutical and medical device inventions that require lengthy regulatory approval prior to marketing and commercialization of the invention.
(e) Establish an early 102(e) prior art date
Under current patent office policy41, a §102(e) date of U.S. patent that claims priority under §119(e) of a PPA is the filing date of the PPA.42 Obtaining an early §102(e) date may provide procedural advantages to an inventor in situations where the inventor believes that a competitor may be rapidly developing the same or similar invention. Thus, an early filed PPA provides the inventor with an earlier filing date and constructive reduction to practice of the invention which is advantageous in the event of intervening art by another inventor, and to prevent patenting of the same or similar invention by others.
Conclusion
During the past five years, PPAs have become a popular tool for protecting inventor's rights to their invention in a quick, cost effective manner. Recent AIPA changes to the patent statute further ensure the continued popularity of PPAs by allowing for automatic conversions of PPAs to § 111(a) utility applications, and eliminating the co-pendency requirement as well as the last day trap. Because formal requirements for PPAs have been relaxed compared to regular utility applications, practitioners should take care draft PPAs that include several generic written descriptions of the invention, numerous embodiments, and claims of varying scope to ensure that PPA disclosures comply with §112 requirements.
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1 The PPA system allows U.S. inventors, now subject to a 20-year patent term (35 USC. §154(a)) based on the application filing date rather than 17 years from the patent issue date, to obtain a filing date that is not used for calculating the term of patent protection.
2 Since their inception on June 8, 1995, the Patent Office received about 3500 PPAs in fiscal year 1995; about 22,000 in 1996; about 33,000 in 1997; about 42,000 in 1998; and about 55,000 in 1999 and expects to receive over 60,000 provisional patent applications in 2000.
3 35 USC. § 111(b).
4 Id.
5 37 CFR. 1.51(a)(2).
6 35 USC 111(b) and 37 CFR 1.53(c).
7 37 CFR 1.53(c)(3).
8 Since PPAs are considered a convention filing, the applicant must also file any desired foreign applications or PCT application by the one year anniversary of the PPA filing date in order to claim priority from the PPA. While the European Patent Office and World Intellectual Property Organization have accepted PPAs as a valid basis for making a priority claim, PPAs are subject to interpretation by foreign courts. Eldering "Comparative analysis of provisional Patent applications under U.S. and UK law," 79 J.Pat. & Trademark Off. Soc'y 791, 817.
9 Effective as of the date of enactment on November 29, 1999.
10 Fed. Register., Vol. 65(54), March 20, 2000. The new rules are effective May 29, 2000.
11 New 37 CFR 1.53(c)(3) and 37 CFR 1.17(i)
12 Id.
13 Amendments to §119 are effective as of the date of enactment on November 29, 1999.
14 Lois E. Borland "GATT/TRIPS: A Response from the United States Patent and Trademark Office," 22 AIPLA Q.J. 425, 429 (1995).
15 35 USC 119(e)(3).
16 Id.
17 Amended 37 CFR 1.78(c)(3)
18 37 CFR 1.53(c)(3)
19 37 CFR 1.53(g)
20 37 CFR 1.52(d)
21 Eldering at 793.
22 Peter G. Dilworth "Some suggestions for maximizing the benefits of the provisional application," 78 J.PTOS 233, 236.
23 Eldering at page 817.
24 Dilworth at 235 citing In re Dinh-Ngugen, 492 F.2d 856 (CCPA 1974)
25 Id. citing Atlas Powder Co. v EI Dupont de Nemours, 750 F.2d 1569 (Fed. Cir. 1984).
26 Id.
27 Id. at 237.
28 Id.
29 Id.
30 Id. at 238.
31 Id.
32 One commentator notes that it is possible that the invention may be interpreted more broadly in a PPA lacking claims. However, the commentator further noted that there is a risk that the inability in applying basic tests concerning enablement and sufficiency of disclosure to PPA lacking claims may make broad interpretation impossible. Eldering at 816-817.
33 A commentator suggests that the enabling test outlined in Therma-Tru Corp. v Peach Tree Doors Inc., 44 F.3d 998 (Fed. Cir. 1995), may be applied to PPAs. According to the commentator, the test of whether the disclosure of an earlier filed application supports later claimed subject matter is whether a disclosure conveys to an ordinary skilled artisan that the inventor had possession of the claimed invention. Eldering at 813.
34 Charles Van Horn "Practicalities and Potential Pitfalls When Using Provisional Patent Applications," 22 AIPLA Q.J. 259, 289
35 Unlike a §111(a) application, a PPA cannot be placed in an interference proceeding under §135. However, the filing of a PPA will establish, as of its filing date, a constructive reduction to practice of the invention which can provide significant procedural advantages in an interference proceeding. Van Horn at 291.
36 Id.
37 35 USC § 154(a).
38 Assuming that Applicant not convert the PPA to a utility application under 37 CFR 1.53(c)(3)
39 37 CFR 1.53(b)(2)(ii).
40 Id.
41 Borland at 446.
42 One commentator argued that PPA cannot logically serve as a 102(e)prior art reference against other U.S. applications since they cannot be considered "application for patent" within the meaning of 102(e). Andrew Patch "Provisional applications and 35 U.S.C. 102(e) in View of Milburn, Hilmer and Werthein," 77 JPTOS 826 (1995). Following the logic of Hilmer I and II, the commentator predicts any future case decision concerning the 102(e) date of a U.S. patent that claims priority under 119(e) of a PPA will invariably find that the 102(e) date is the filing date of the regular U.S. application and not the PPA.
Editor's note: Interviewing law students for clerkships, I was struck by prevalent dysfunctional myths. In particular, bright students told me that they were interested in intellectual property but that without an engineering or science background they couldn't do patent law. Such is false.
While a scientific education is generally a prerequisite for registration to practice before the United States Patent and Trademark Office in patent cases-- to prosecute patent applications for others-- registration is not required to litigate patent cases, to advise clients regarding patentability and patent filing preliminaries, or to negotiate patent licenses. Competence, not registration, is the broad requirement for diverse intellectual property legal tasks. "A lawyer shall not represent a client in a legal matter in which the lawyer knows or reasonably should know that the lawyer is not competent to provide representation, without the association of another lawyer who is competent to provide such representation." Illinois Rules of Professional Conduct 1.1.
Illinois has many prominent intellectual property attorneys who ill fit the cookie-cutter straight jacket. Intellectual Property is pleased to initiate its new occasional series, Career Clips, with comments by Patricia Felch of Banner & Witcoff. We welcome submissions from other Illinois IP attorneys on their career perspectives.
Copyright © 2000 Patricia Felch
My route to an intellectual property firm has been like walking up Lombard Street in San Francisco--a 12-year trek up a very steep and spiraling hill. I had wanted to become a lawyer (because of an inspiring debate class) since I was 15, but "nice girls didn't become lawyers" back then.
I dabbled in computer programming (on a Burroughs 5500) while I was working on dual masters degrees (in Music History and Librarianship) in the early 1970s. Otherwise, I had no technical background. As a Music Librarian (for eight years), though, I was the one to ask for assistance with copyright registrations and issues.
Then, one day, I read a want ad for a law librarian at what was then Coffield, Ungaretti, Harris & Slavin. The position required management skills, in addition to a library degree; I applied and promised I would learn legal research resources in less than three months; and I got the job as Head Law Librarian. After a few weeks in that position, I said to myself, "lawyers aren't that smart," and decided to go to law school--finally, on the road to fulfilling my goals from twenty years before.
I took the LSAT and was accepted at Loyola University (Chicago) School of Law. Because I had to support myself, I continued as the firm's Law Librarian by day and went to law school at night on the four-year, straight through plan. Although some thought I was crazy straddling both job and school, there was actually a dual benefit: what I learned at school, I could apply in the library; and what I researched in the library for the attorneys, I could analogize to the cases I read for school.
I also had a purpose: to come out of law school being able to represent creative types in all areas of law, including copyrights. And, I started telling people that was my plan, which turned out to be what we now know as "marketing."
Because of my "purpose," I spent my last summer in law school as a summer associate at Hosier & Sufrin, a patent firm. Although I did little more than write briefs and index depositions, I learned a lot, not only about patents and how they are litigated, but also about trademarks, copyrights, trade secrets and a wonderful little statutory provision, called "section 43(a)" of the Lanham Act.
During my last year of law school, I resigned as Law Librarian and worked for Joyce and Kubasiak, a small general-practice firm with lots of litigation, as a full-time law clerk. One of my briefs on behalf of a firm client was actually copied almost word-for-word by a U.S. District Court judge.
I wouldn't be graduating from law school until I was 40 years old, and so I tried to turn what could have been seen as a "negative" into a "positive": I was experienced, and so my learning curve would be much less than others'. I also sent resumes to every IP firm in Chicago and even interviewed at one; but I couldn't break through the "technical background" barrier. (At that time, in 1987, one had to have an engineering degree just to sit for the Patent Bar Exam.)
I finally ended up at a personal injury defense firm that permitted associates to bring in business. And that I did. While cutting my teeth on all aspects of litigation for the firm, I negotiated deals for musicians, artists, and writers; helped companies and individuals protect their creative works with copyrights and trademarks; and sued "bad guys" for copyright infringement, defended "good guys" in actions for trademark infringement and tried to obtain damages for ten of the artists whose artworks were destroyed during the 1989 gallery fire in the River North area.
At one point, I was billing my required 180 hours per month for firm clients and almost an equal amount for my own clients. There wasn't enough of me or time to do both, so I resigned and started my own practice, ARTSlaw Offices of Patricia A. Felch, P.C. There, where I could focus entirely on entertainment and sports law, I made new law on copyright ownership in the Seventh Circuit Court of Appeals and began fighting insurance companies for coverage of intellectual property lawsuits.
In 1996, Peterson & Ross, an insurance firm, was looking for an intellectual property attorney who understood insurance, and a fellow member of the ISBA Intellectual Property Section Counsel recommended me. In less than a month from that recommendation, I became a partner at P&R and continued to build my intellectual property practice. There, I helped Internet start-ups avoid problems and protect themselves and performed intellectual property audits for huge trade associations. I also took on the New York Times, Newsday, Sports Illustrated, LEXIS/NEXIS and UMI for free-lance writers and Northwestern for threatening to white-wash a student's painting of the Sistine Chapel on his dorm-room ceiling.
Then, in November, 1998, I went to a dinner during which attorneys from Kenneth Starr's office and from the White House discussed the Special Counsel Act. I happened to sit next to an energetic 75-year-old patent attorney, long from Chicago, but now practicing in Florida. Two months or so later, he introduced me to two shareholders at Banner & Witcoff, and I joined that prestigious intellectual property firm in March, 1999. Since then, the Second Circuit ruled in the free-lancer's favor in Tasini v The New York Times (after fantastic oral-argument preparation from my firm colleagues). I've also been able to cross-collateralize my Internet, trade-association, and individual clients (for whom I handle entertainment deals, copyrights, and trademarks) with others at the firm (who handle their "method-of-doing-business" patent searches and applications). A perfect fit.
It may have taken me sixteen years (four at law school and twelve in practice) to get where I belonged, but I'm finally "at home" in a full-service intellectual property firm. Not only do we prosecute registrations of copyrights, trademarks, and patents and draft and negotiate contracts, but we also litigate patents, trademarks, copyrights, trade dress, non-compete/non-disclosure agreements, section 43(a), (b) and (c) and much more.
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[Patricia Felch served as a lead attorney in Tasini v New York Times Co., 54 USPQ2d 1032 (2nd Cir. February 25, 2000), a landmark case clarifying authors' rights in electronic database republication against magazine publishers.]
Editor's note: Illinois is a major international trade partner; Illinois business is impacted by foreign law and custom. The Internet bridges distant jurisdictions for legal practitioners as well as for trademarks. Judge Li Dongtao participates on the International Trademark Association listserv. Intellectual Property requested he comment on a recent PRC Internet case.
The first Internet-related case of copyright infringement in PRC
By Li Dongtao, Judge, People's Republic of China, <judge@sdb.ac.cn>.
Copyright 2000 © Li Dongtao, Leading Judge of the Case.
This is the first Internet-related case of copyright infringement in People's Republic of China (PRC). The Plaintiff is Chen Weihua, manager of a computer company. The Defendant is the Chengdu Computer Business Information.
"Talking about 3D" is the name of a personal homepage online and the webmaster is mentioned as "Wu Fang." From January 1998, files have been uploaded onto this personal homepage, mainly articles on 3D. On May 10, 1998, an article entitled "Talking about MAYA Dramatically" (Work) was uploaded onto this personal homepage, the author was also mentioned as "Wu Fang."
On October 16, 1998, the Defendant published this article in its newspaper, Computer Business Information; the author was "Wu Fang." Meanwhile, the Defendant also added an explanation in which it claimed that an anonymous reader (also a 3D fan) submitted this article for publication to its email address. The Plaintiff claimed "Wu Fang" was his pen name and sued the Defendant for copyright infringement at the Court of Haidian District, Beijing (Court). The Defendant argued the Plaintiff should prove he was "Wu Fang" first.
After accepting the case, the Court inspected Wu Fang's personal homepage "Talking about 3D" with the parties concerned. During the inspection, the Plaintiff could change the password of this personal homepage, upload and delete files, and the Defendant didn"t bring evidence (including the email) to prove the existence of some special phenomenon or the Work had been published by some newspaper theretofore. Then, the Defendant accepted the fact that the Plaintiff was "Wu Fang," but argued that the copyright infringement was not established.
A copyright statement saying "Copyright Reserved" accompanied the work online. The registration of personal homepage is free online and there isn't a special law on this matter.
The Plaintiff asked the court to make a judgement in his favor by ordering the Defendant to 1) Apologize publicly; 2) Pay the remuneration RMB 231 yuan; and 3) Pay the punitive damages of RMB 50,000 yuan. The court held that the copyright infringement is established and the Defendant is the infringer because:
(1) The term "Works" means intellectual creations with originality in the literary, artistic or scientific domain, insofar as they are capable of being reproduced in a tangible form.
An intellectual creation should be fixed in a tangible medium of expression and kept stable enough to permit it to be reproduced or contacted by the public directly or with the help of some machines. The Work is a literary description of 3D technology, in character of originality. Besides, it could be fixed in a digital style in the hard disc of the computer, uploaded onto the Internet through a WWW server and kept stable enough to be accessed and reproduced by the public via any host. Therefore, the Work is deemed to be a copyrightable work. The time of its first publication should be the time when it was first uploaded onto the personal homepage of "Talking about 3D."
(2) According to the Copyright Law of PRC, anyone, whose name mentioned in connection with a work shall, in the absence of proof to the contrary, be deemed to be the author of the work.
Although there is no law on the registration of personal homepage at the present time, but usually the registrar should be the only person who could change the password, upload or delete files.
Being a specialist, the Plaintiff could changed the password of this personal homepage and upload and delete files. The Defendant had admitted that he was "Wu Fang" and did not bring contrary evidence to prove there was some special phenomenon. So, the Plaintiff is "Wu Fang," the copyright of the Work is entitled to him.
(3) Copyright is in character an exclusive right that is entitled to the author on his work.
The Plaintiff uploaded the Work onto his personal homepage for purpose of disseminating his work in Cyberspace. The Defendant put it in its newspaper with some advertisements; that is, without the Plaintiff"s permission, for commercial purpose, enlarged the scope of disseminating the work, obviously violated the Plaintiff"s right of exploitation and the right to remuneration. Accordingly, the Defendant should take the civil liability, stop the infringement, apologize publicly and pay the proper compensation to the Plaintiff.
(4) Litigants are obliged to present evidence for their assertions.
The Plaintiff asked the Defendant to pay him punitive remuneration RMB 50,000 yuan, but he didn't bring any evidence, so the court's decision was made according the effect of the Defendant's infringement that no longer support the Plaintiff's claim completely. According to Article 11(1, 2 and 4) and 46(2) of the Copyright Law of PRC, the court made its ruling of first instance on 28 April 1999: (1) the Defendant must stop its infringing act; (2) the Defendant must make an open apology in the Computer Business Information; (3) the Defendant must compensate RMB 924 yuan to the Plaintiff.
After the verdict, no party appealed.
By Daniel Kegan
Work for hire quietly altered. Patricia Felch closely read the new copyright legislation and found two important, quiet changes in Title 17.
1. Some intern/aide/staffer (apparently at the request of the Recording Industry Association of America) slipped "sound recordings" into the Satellite Home View Improvement Act --now appearing in a "Technical Amendments" section (1011(d))-- to be included in the list of nine categories for which a work-made-for-hire arrangement must be in writing. So what, you think? This little two-word addition to the definition of works made for hire in section 101 of Title 17 effectively cuts off any rights music composers, lyricists, performers, etc. and their heirs might have had to