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September 06, 2005
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 at September 6, 2005 08:08 PM
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Comments
I generally do not include any claims in a provisional specification too. However, I disagree that serious harm could happen to the child non-provisional by doing so. More harm is likely to occur to the non-provisional child due to a rough or minimal disclosure in the provisional(as can be typical of provisionals) than due to a poorly drafted claim. A non-provisional claiming priority to a provisional app is more like a continuation, and thus its claims should stand on their own. Also, the provisional was never examined, so what ground was there to give up? I suppose it could be argued that if you had a broad claim in the provisional and substitued narrow claims in the non-provisional child, then festo-estoppel might occur. If one drafted a picture-claim for the provisional (maybe to help with drafting the specification), then Festo-estoppel shouldn't occur because the non-provisional claims would be broader. In any case, I agree that the better practice is to leave the claims out of the provisional spec.
Posted by: Josh at September 7, 2005 11:51 AM
I am one who was taught to include claims for the very reason cited. In your post, you simply assume that the ability to convert non-pro to pro and vice-versa solves the problem, but does it really? Can a provisional without claims be converted under the cited provision, or will the non-pro WITH CLAIMS be considered a different entity? If so, I think the issue remains the same.
Re Festo and estoppel, my view is that that fear is unfounded. Since any claims in a provisional will never be examined, they are sort of like your appendix -- a useless appendage just hanging there. Because of that, you can assert with a very straight face that there is no basis for saying that differences between the provisional claims and the non-pro claims was for purposes of patentability (the touchstone of a Festo-estoppel-creating amendment); rather, you simply re-drafted a year later.
Posted by: Ken Fagin at September 8, 2005 07:58 AM
What the initial post fails to address is the fact that other countries / administrations have different interpretations of what constitutes the "same invention" under Art 4 of the Paris Convention. At the EPO, if your provisional doesn't provide direct or expressis verbis support for the claims that you later include in your US non-pro or PCT application, then it may well be that you could lose your right to the priority date of the provisional because you have not described the same invention. Bear in mind that the EPO has a very strict approach to priority at the moment, and that generally elements which haven't been claimed, or for which there is only vague support in the description, will in all likelihood not benefit from the right to priority, because you haven't disclosed the same invention as the one you are tyring to claim. Although, this kind of unfortunate incident is unlikely during examination, it is distinctly possible during opposition proceedings, where the opponent will not fail to point out the discrepancy in the invention first disclosed in the provisional app, and that claimed later.
Posted by: Alex Thurgood at October 4, 2005 12:10 AM