Our Blog

Unintended Effects: Impact of Making Changes to a U.S. Provisional when filing a Regular Patent Application

May 31, 2017

Provisional patent applications (PPAs) are often filed as part of a patent portfolio filing strategy. A PPA is not a regular patent application. A PPA will not be examined by any patent office and will not result in a granted patent. PPAs are unique to the United States patent regime. For example, there is no patent application equivalent in Canada. However, PPAs can be filed to establish an early claim date for a later filed non-provisional or regular patent application.

Some inventors may elect to prepare a PPA on the notion that the cost of preparing the PPA may be less than a regular patent application and, accordingly, less time may be spent in preparing the application. However, the recent decision of MPHJ Tech v Ricoh, 2016-1243, February 13, 2017 (Fed Cir 2017) (“MPHJ”) is a useful reminder of potential perils when: (1) filing a regular patent application that claims priority to a previously filed provisional patent application; and (2) differences exist between the regular patent application and the previously filed provisional patent application.

The patent in the MPHJ case “[i]n its simplest form … extends the notion of copying from a process that involves paper going through a conventional copier device, to a process that involves paper being scanned from a device at one location and copied to a device at another location” (U.S. Patent No. 8,488,173, column 45, lines 48 to 53).

MPHJ argued that on a narrow claim construction, the claims are neither anticipated nor obvious in view of the cited prior art. MPHJ argued that its claim interpretation is supported by and required by its previously filed provisional patent application. The petitioner, on the other hand, argued that statements in the provisional patent application which MPHJ relies on were omitted from the non-provisional patent application.

The majority of the Court (at page 11) stated:

We agree that a provisional application can contribute to understanding the claims … In this case, it is the deletion from the ‘798 Provisional application that contributes understanding of the intended scope of the final application.

We conclude that a person of skill in this field would deem the removal of these limiting clauses to be significant. The ‘173 Patent in its final form contains no statement or suggestion of an intent to limit the claims to the deleted one-step operation. Neither the specification nor the claims state that this limited scope is the only intended scope. Instead, the ‘173 Patent describes the single-step operation as “optional”.

The ‘173 Patent’s abstract states, “[t]he system and/or method is software that manages paper so that it can be electronically and seamlessly copied in and out of devices and business applications with an optional single-step operation.” The ‘173 Patent specification states, “I have further determined that it is desirable to enable software that manages paper so that it can be electronically and seamlessly copied in and out of devices and business applications … with an optional single-step Go operation”.

These statements that single-step operation is “optional” accord with the change from the ‘798 Provisional to the final patent. A person skilled in this field would reasonably conclude that the inventor intended that single-step operation would be optional, not obligatory. [emphasis added]

The Court rejected the narrower claim construction proposed by MPHJ and ultimately upheld the Patent and Trial Appeal Board finding that the patent claims are anticipated by the cited prior art.

The MPHJ case highlights the importance of drafting provisional patent applications to a standard of a regular patent application. When preparing a regular (or non-provisional) patent application that claims priority to a provisional patent application, inventors should consider how claims may be construed in view of any changes made from the provisional application to the non-provisional application. While filing a provisional patent application may incur reduced application filing fees, one must consider whether spending less time on preparing the provisional patent application is worth the potential for unintended claim construction effects.

Information in this article is for information only. It is not, and should not be taken as, legal advice. If you have any questions relating to the information in the above article or any intellectual property related matter, please contact our office and a Rowand LLP professional will be pleased to assist you.