Preserving the first to invent status of a pre-AIA filing in a post-AIA world

What should you do?  You have a provisional patent application which was filed pre-AIA (i.e., before March 16, 2013). You want to file a non provisional patent application with additional subject matter and claim priority to the provisional patent application while still maintaining first to invent status of the subject matter you filed in your provisional patent application. 

The AIA prescribes which applications will be held to the first to file instead of the first to invent. The first to file will apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time –
(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States code, to any patent or application that contains or contained at any time such a claim.

Based on the above language, if a claim does not find support in the provisional patent application then it could be deemed to fall under the first to file instead of the first to invent. Here is the problem. If we take your provisional patent application then add an entirely new claim set, then it gives the future defendant or other interested party more room to say that one or more of the claims in the claim set does not find support in the provisional but only in the non provisional patent application filed post AIA. Hence, the first to file will apply.

How does that occur? One thing that most people don’t realize is that the new claim set is part of the “disclosure” of the non provisional patent application. Any new verbiage in the claim set can be considered to be new subject matter in the post AIA non provisional patent application filing. Let’s take a couple of simple examples to illustrate the point. The provisional patent application discloses a skewed angle but not the specific angle. The non provisional patent application includes a claim to an angle of 45 degrees. The 45 degrees is new subject matter and the entire post-AIA filing will fall under the first to file rules. You might be able to get the angle off of the drawings but remember that drawings are deemed not to scale unless expressly stated in the patent application. Here is another example in which the provisional discloses a specific embodiment and the non provisional claims the generic. Let’s say the provisional discloses a 45 degree angle but you claim a skewed angle in the non provisional patent application. Skewed angles include more than just the 45 degree embodiment. Hence, this claim finds support only in the post AIA filing and will make the non provisional patent application fall under the first to file rules.

Now, you might say that I’m taking it too far and not being reasonable. That is the point. I’m here to tell you what might happen in litigation and right now we don’t know what will happen in litigation. The defendant will take unreasonable positions and you must fight them. As such, if you want to be sure that your non provisional patent application will be governed by the first to invent then the claims that are inserted into the non provisional must be supported by the provisional patent application. The only way to guarantee that is to just file whatever you might have in the provisional patent application as a non provisional patent application because any change can be construed as new matter and the defendant will argue that it is new matter.

If your provisional patent application doesn’t include a claim, then you must insert one claim into the non provisional patent application to get a filing date. Without at least one claim, the patent application is not a non provisional patent application. To be on the safe side, include only language found in the provisional patent application. Now, we don’t want the examiner to examine just one claim so how do we include additional claims. After filing the non provisional patent application with just one simple claim, you file a preliminary amendment with the full claim set that you want to be examined. You are sectioning out the subject matter of the non provisional patent application and the claim set by following this filing strategy.

Now what do you do with new subject matter that you want to include in the patent application? You file a continuation in part application that claims priority back to the non provisional patent application that you just filed. This continuation in part application will include claims solely directed to the new subject matter.

Now if you don’t mind if the non provisional claiming priority to the provisional patent application falls under first to file, then you just lump everything in the non provisional patent application, claim priority to the provisional patent application and file it.

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About the Author

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

2 Enlightened Replies

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  1. George White says:

    Hi – I’m a patent agent in Long Beach. Your examples in this article have helped in seeing the way something seemingly innocuous can be seen as not fully supported by a pre-March 16 filing. However I think your approach to dealing with it doesn’t do what you think it does. The first non-provisional ends up with new verbiage that may or may not get full support in the provisional. Getting it in by preliminary amendment doesn’t really section it off in any way. And the second filing with clearly new matter could just as easily been a second non-provisonal getting the benefit of the original provisional application.

    In your 45-degree example, adding the new subject matter is not what would make it a f-2-f application. It is only making a claim to unsupported subject matter that makes it f-2-f. Getting the drawing taken out is irrelevant.
    On an other topic, you might look at a law review article

    “Pantent Agent: The Person You Are” by David Hricik.

    It does a good job explaining some of the issues and states that the courts are split on the existence of the privilege in the case of patent agents. And, of course, patent prosecution is an ex parte proceeding so there is not the same extent of privledge even with an attorney. A client can tell their defense attorney they did kill the guy, but they can’t tell you or me that they didn’t really invent it.


    • James Yang says:

      Thanks george for your comments. The first non provisional must be filed “as is” if possible. The problem with provisionals is that they may not have been originally filed with a claim. They are filed on the cheap and i’d have to assume that many patent agents/attorneys won’t spend the extra 2 mins to get one half baked claim in their just to have a claim. If the provisional wasn’t filed with at least one claim, then you can’t take that disclosure and file it as a non provisional. non provisionals require 1 claim to get a filing date. You have to make one up. This is where the problem comes. if the provisional had 1 claim then just refile as a non provisional. perhaps, i wasn’t clear enough and thanks for clarifying. the f2f and the f2i is based on whether the new patent application claims any new subject matter added post AIA.

      I tried to look up your article on the privilege for patent agents. I couldn’t find it. A link would be helpful. I just posted an article on a-c privilege and would like to correct myself it what you are saying is true and to find out the rule in California.

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