Anything Under the Sun Made By Man: Claims in Provisionals

There seems to be some debate amongst practitioners as to whether claims should be included in a provisional patent application. I am of the opinion that claims in a provisional can only serve to hurt the applicant and should therefore never be included.

Many people, myself included, draft claims before drafting the specification of a patent application. For me, this exercise allows me to completely define the invention in the claims, then draft the specification and figures to match. I make sure that every limitation included in the claims is discussed in the spec and shown on the drawings.

This serves two purposes. The first is that it creates a thorough and enabling disclosure. The second purpose is that it only includes enough information to support the claims. There is usually no need to disclose extra material, which would otherwise be a trade secret.

However, I never include claims when I file a provisional application. I do this because only bad things can happen: prosecution history estoppel Festo-style may come to haunt you. There is no upside.

It used to be commonly believed that PCT conversions may be in jeopardy when a US provisional application did not have claims, under the theory that the US provisional was not a valid national application for some foreign countries. However, Congress amended section 111(b)(5) so that a provisional may be converted to a non-provisional and vice-versa. Because a provisional always has the potential to be converted to a non-provisional, it is a valid national application under Article 4 of the Paris Convention.

In practice, I always draft claims before the specification. However, when filing a provisional application, I merely cut out the claims and place them in a separate file. That way, if not substantive changes have occurred in the reasoning behind the filing, I merely insert the claims into the document and file the non-provisional.

Posted by krajec on September 6, 2005 08:08 PM to Anything Under the Sun Made By Man
Copyright 2005, Russell Krajec. All Rights Reserved.