07 June 2012

‘Professional’ Provisionals – Now More Important Than Ever

Reliant RobinAnybody filing a provisional patent application now, and waiting the full 12 months before filing complete (non-provisional) applications in Australia and/or the United States, may be subject to revised patent laws in both countries.

Most of the substantive provisions of the Australian Raising the Bar Act commence on 15 April 2013, while the new ‘first-inventor-to-file’ provisions on the America Invents Act commence on 13 March 2013.  Both reforms have potentially significant impact on applications filed after these dates, even if these claim the benefit of provisional applications filed prior to commencement of the amendments.

In particular, as a result of the reforms, even though they have not yet fully commenced, it is now effectively imperative that any priority document, including a provisional application, provide full support for the invention as it is ultimately claimed in the complete, non-provisional, application.
‘…any provisional application filed now, and forming the basis for a complete application filed in 12 months time, will be completely worthless for priority purposes in Australia and the US unless it supports the invention across the full scope of the ultimate claims…’
The notion that a provisional application can provide a lower standard of disclosure, without prejudice to the applicant, was never really true.  But is is now more crucial than ever that this myth be dispelled.

There are a number of people ‘out there’ – principally serial inventors, inventor advocates and invention promotion companies – who are keen to tell you (often for a price) that you do not need a patent attorney to assist in the preparation and filing of a provisional patent application.  This, they say, is something any inventor can do for themselves, in order to obtain ‘meaningful’ protection for an invention at a low initial cost.

Sorry, but this is simply not true.  If you do not really know what you are doing, your provisional application may be worthless.  Indeed, it may be worse than worthless, if it provides you with a false sense of security that your invention is protected.

No doubt cynical readers will be thinking that this is exactly what you would expect a self-serving patent attorney to say.  Maybe so.  But after reading this article we hope you will at least be in a position to make an informed decision.

A HYPOTHETICAL EXAMPLE

Imagine a world in which the motor car has not yet been invented.  You come up with an idea for a vehicle having an internal combustion engine, which is engaged with an axle via a suitable arrangement of gears.  The axle is mounted to the rear of a chassis, and has a wheel at each end.  A single free-turning, steerable wheel supports the chassis at the front end end.

In effect, you have come up with a three-wheeled car, not unlike the charming Reliant Robin pictured at the top of this article.

So you write up a detailed description, with accompanying drawings, explaining the design of your vehicle, and how it works.  You then file this document as a provisional patent application.

Coming up to a year later, you have borrowed and invested heavily in converting your design into a practical product, and are just about ready to go into production.  There are a few competing prototypes starting to appear, including four-wheeled automobiles and two-wheeled motorcycles.  Indeed, through your own R&D process you have come to the conclusion that a four-wheeled design is more stable and robust.  You are content, however, that you are the first and true inventor of the motorised vehicle, and that you have secured your priority with your provisional application.

You now go to a patent attorney to assist you with the preparation and filing of a complete, nonprovisional, application.  The broadest claim drafted by the attorney is as follows:

An automotive vehicle comprising:
  1. a chassis;
  2. a self-contained engine, mounted to the chassis;
  3. at least one driven wheel, rotatably-mounted to the chassis and mechanically coupled to the engine such that operation of the engine provides a driving torque to said at least one driven wheel; and
  4. at least one further wheel, rotatably-mounted to the chassis such that, in combination with the driven wheel, the chassis is supported above the ground and provided with a motive force by the driven wheel in response to operation of the engine.
OK, so this claim may be a little rough-and-ready (you get what you pay for), but it captures the essential idea of a self-contained motorised vehicle, and covers any design with an engine and two or more wheels (you are happy to dedicate the motorised unicycle to the public, on the basis that you do not consider it to be a commercially viable product).

The key questions which arise in this hypothetical case are:
  1. Is the broad claim to any motorised vehicle with at least two wheels, at least one of which is driven by an engine, entitled to claim priority based on a description of a three-wheeled vehicle, in which a pair of wheels is driven via an axle, and a third, non-driven, wheel is configured for steering?
  2. If not, does it matter?

AUSTRALIAN POSITION

The current requirement under the Australian Patents Regulations 1991 (Regulation 3.12) is that a claim is entitled to the earlier priority date if it is ‘fairly based on matter disclosed’ in the priority document.

The existing ‘fair basis’ standard essentially requires a ‘real and reasonably clear’ disclosure of the claimed invention in the earlier document.  Arguably, at least, a disclosure of a three-wheeled motorised vehicle is a reasonable disclosure of a vehicle with at least two wheels, at least one of which is driven by a motor. 

A court would also likely allow you a little additional leeway, in that the current Patents Act 1990 requires that a provisional merely ‘describe the invention’ (section 40(1)), as opposed to describing it ‘fully’, which is the requirement for a complete specification.  You have a fairly good case, therefore, that the priority claim is valid.

You additionally have the benefit of a one-year grace period, which means that at least your own disclosures of vehicles with different numbers of wheels will not be held against your complete application.

However, as of 15 April 2013, any new provisional application ‘must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’.  This is intended to require an enabling disclosure across the full scope of the ultimate claim(s).  A description of a single three-wheeled embodiment will not meet this requirement in respect of the broad claim proposed above.

But provisionals filed prior to 15 April 2013 are not subject to this higher standard, so you might think that you do not need to worry about this yet.  In all likelihood, however, you would be wrong.

From 15 April 2013 a priority claim will only be valid if ‘a prescribed document discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’ (new paragraph 43(2A)(b)).  While we have yet to see the amended regulations, which will define a ‘prescribed document’, it seems highly improbable that they will somehow carve out a special exception for Australian provisional applications filed prior to 15 April 2013!

So, in effect, provisional applications being filed now will be judged by the higher standard for priority purposes after 15 April 2013.

US POSITION

It has been established since the 2002 decision of the US Court of Appeals for the Federal Circuit in New Railhead Manufacturing LLC v Vermeer Manufacturing Company that, in the US,

…the specification of the provisional must “contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,” 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.

In other words, as under the new Australian provisions, the disclosure of the provisional must enable the invention across the full scope of the ultimate claims.

While New Railhead was not so fortunate, under the traditional ‘first to invent’ priority scheme of the US patent system many applicants might not have been adversely affected by the loss of a valid priority claim to a provisional application.

Provisional applications are often filed as a precautionary measure prior to any public use, sale or disclosure of an invention.  If there has already been sale or disclosure, the invention is presumably fully reduced to practice, and there is no reason not to proceed with a nonprovisional application in the first instance.

However, under the ‘first to invent’ regime, even if a claim to priority from a provisional application turns out to be invalid, the inventor will still have priority over any prior art falling within the 12 months prior to the nonprovisional filing, so long as they can swear to prior invention.  The loss of priority claim will only be fatal if (as in the New Railhead case) the date of the prior art or use falls prior to invention or more than 12 months before the nonprovisional filing date.

It seems likely that, for this reason among others, the validity of a US priority claim to a US provisional application would rarely fall under close scrutiny.

However, once the ‘first-inventor-to-file’ regime of the America Invest Act comes into force on 13 March 2013, the ability to rely on date of invention rather than the provisional filing date will no longer exist, for any application which cannot claim an ‘effective filing date’ prior to 13 March 2013.

As a result, a nonprovisional application which validly claims priority to a provisional application filed prior to 13 March 2013 will be judged under the current ‘first to invent’ rules.

However, if even a single claim of the nonprovisional application is not adequately supported in the earlier provisional specification, the entire application will be judged under the new ‘first-inventor-to-file’ rules. 

In our hypothetical example, the broad claim will not be entitled to claim the benefit of the provisional filing date.  It will therefore be subject to the ‘first to file’ rules, and the inventor would not be able to salvage the situation by asserting earlier invention.

TAKE-HOME MESSAGE

The take-home from all this is simple: any provisional application filed now, and forming the basis for a complete application filed in 12 months time, will be completely worthless for priority purposes in Australia and the US unless it supports the invention across the full scope of the ultimate claims.

In effect, this means that the provisional specification needs to state the scope of the invention, preferably in the form of one or more claims, as well as providing a description sufficient to teach the skilled person how to make embodiments across that full scope.

This is nothing new in many jurisdictions, such as Europe, which already have such requirements for priority claims.  But in Australia – where a lower standard of disclosure has applied to provisionals in the past – and in the US – where the ‘first to invent’ system may have buffered many inventors from the worst consequences of inadequate provisionals – these requirements take on new significance.

This does not necessarily mean that every inventor will need to hire a patent attorney to draft their provisional applications.  But for many, lacking the skill and experience to draft effective patent claims, and knowledge and training in the intricacies of the patent laws, seeking professional assistance and advice will be the most practical way forward.

8 comments:

Ian Mccauley said...

Excellent and informative as always. However, I can't let mention of the Robin Reliant be merely incidental, having as it does such a significant place in the European commercial Space Program:
http://www.youtube.com/watch?v=_b4WzWFKQ20&feature=youtube_gdata_player

Patentology (Mark Summerfield) said...

Thanks for that.  It always astonished me just how close they came to actually pulling that off!  Probably helped that they weren't ahndicapped by Clarkson.  But it makes you wonder what a few amateur rocketeers could achieve with more time and a real budget...

Ecca said...

Pity about all the small inventors who will find themselves excluded by the patent system now. Seems it's designed with the needs of the mufti-nationals in mind. The Yanks are laughing at these "reforms" all the way to the bank. Will be interesting to see if the 10% local patentee participation rate drops off even further. The only good thing for Australians now are innovation patents. On Standard patents we've been sold out by experts.

Practitioners won't get out of this unscathed either. This article shows an inventor is better off filing in the US first, with more inventor-friendly laws and a bigger market. (Much nicer cover on the issued patents too to impress the investors.) May as well brace for international consolidations o' patent attorneys, just like the big law firms.

So having devalued our entire patent system by raising the bar on patentability without raising the bar on revocation, could we now please have some revocation reform to restore the balance? How about a fast-track low-cost patent dispute arbitration system to make the local system competitive again?

Stan E. Delo said...

Mark-



Very clear explanation of the perils of PPA's here in the
US especially, before the FITF regime kicks in on March 16th, 2013. Fortunately
I got my Formal app filed before the American Invents Act mess was passed by
Congress here in the US.



If the hypothetical inventor had started out with the
broad claims you mention, he would have covered motorcycles as well as 4 or more
wheeled autos I would think, provided he could get the
claims allowed.



Ian- Great video that was surprisingly well done. I happen
to be a closet rocket freak myself, but have managed to avoid blowing myself up
so far. I once wrote a true story about the amateur use of rocket motors that
fortunately had a happy ending.

http://www.inventored.org/rockettales/



Cheers,

Stan~

Patentology (Mark Summerfield) said...

Many Americans are also complaining that the America Invents Act sells out small inventors, with the change to first (inventor) to file.  Certainly, what both sets of reforms do is to increase the level of harmonisation globally, and this arguably benefits those applicants which are rich enough to be filing early, and filing in multiple jurisdictions.

The problem is, and always has been, that keeping the bar low to benefit small domestic inventors merely creates a system which is exploited to a greater degree by large actors.  In the case of a smaller economy like Australia, these are predominantly foreign.

As you say, the innovation patent system is more accessible to small inventors and SMEs, and this is precisely why it was created.  But right now the single largest user of that system, by a factor of about 10, is Apple, Inc.  But if you are really a small inventor with no interest in protection outside Australia, by all means file a quick-and-dirty provisional (for what it's worth), and an innovation patent 12 months later.  As with anything complex, you are always better to pay for whatever professional assistance you can afford.

As for the patent attorney profession, there are already 'global' practitioners.  In this regard, those of us working in countries like Australia and New Zealand are leading the charge.  Our clients are often focused on larger overseas markets, and want advice with an international perspective from day one.  Personally, I have no qualms about recommending a US provisional (or even nonprovisional) as a client's first filing, if this makes sound business and legal sense.

By contrast, there are no doubt some US practitioners who rarely have to deal with anything other than clients (domestic and foreign) seeking US patent protection.

National laws continue to require patent attorneys and agents to be registered in order to provide certain services in a professional capacity, which in some ways is a form of protectionism, but also a form of protection for applicants, considering the great complexity of patent laws, and subtlety of some of the national differences.

For some of us, the coming reforms make little difference.  It has always been the case that applicants with an interest in possible protection in Europe, or Asia (e.g. Japan or China) require priority applications with support for an invention across the full scope of the ultimate claims.

Finally, for the future patents to which it applies, Raising the Bar does, in a sense, provide a degree of 'revocation reform'.  Part of the reason why it is so difficult and expensive to challenge patents in Australia right now is because the examination and opposition processes are biased in favour of the applicant, while low standards of patentability mean that an applicant for revocation has a very hard task to succeed even before the Federal Court.

Under the coming reforms, all remaining bias in favour of patent applicants will be removed.  It will be harder for questionable patents to be granted, and easier to oppose them if they are accepted.  Furthermore, the re-examination process in the Patent Office is likely to become more effective, as examiners are given some real teeth to raise and sustain rejections based on a lack of inventive step.

Really, it is not all as bad as you suggest!

Ecca said...

 I can see where you are coming from Mark however if it's easier to revoke a patent, or even entertain proceedings the small inventor must answer, the patent, and the entire patent system, is devalued. It's costs are greater and its outcomes more uncertain. Sure fewer bad patents will be granted but knowing big corporations, many more meritorious patents owned by small Australian SME's will be revoked due to technical drafting requirements now made beyond any inventor by our beloved Federal Parliament.

That means less capital for small inventors, as if that wasn't already a problem in Australia. To counter-balance this, should not Australian patents now have a presumption of validity? In a sense they kind of do by the onus of proof but in the US it's much stronger requiring a high standard of proof. Unless Australian patents get a similar presumption of validity to accompany the reforms, all raising the bar will do is devalue all our patents. I can only hope Australian judges will fill these kind of gaps with the common law where the legislature has clearly failed to fully grasp the public interest.

Also, I'm not sure DIY innovation patents will work for SME's since the reforms hit innovation patent specs also don't they?

Stan E. Delo said...

Ecca-



We have a similar situation here in the US, wherein
patents are able to be challenged in a third way, since a new Post Grant review
was included in the AIA. It used to be that patents were deemed to be inherently
valid if they passed muster during examination, but the corporate lobbyists were
able to *buy* some influence whilst the Legislation was being
written.



I figure large corporate interests invested well over 500
Million in lobbying efforts over about 6 years to various members of Congress,
to finally arrive at the AIA. The US really needs to reconsider unlimited
campaign and lobby funding, as it is seriously goofing things up here in my
opinion. The term Lobby comes from the practice of some folks trying
to buttonhole the Congressfolks in the Lobby either before or after they have a
vote, to try to influence them one way or another.



Nearly nobody in the US Congress seems to have much of a
clue about IP rights, and even the Supreme Court here doesn't seem to understand
what they are doing in critical cases. The net result is that independents and
small entities have lost a significant portion of the value of their patent
rights.



SD~

Patentology (Mark Summerfield) said...

Ecca and Stan,

Thanks for your comments.  Clearly you have a particular perspective on these issues, as do the large corporates.  There is now an additional major lobby group rising globally, which is the body of non-users of the system who are opposed to patents in their current form, or even as a general proposition.

I suspect that the 'battle' between corporates and small actors (inventors and SMEs) is essentially over, in a manner which does perhaps favour the corporates.  However, this is in part due to a wider political push for greater global harmonisation.

However, the debate over the form and extent of IP rights generally, and patents in particular, may prove to be more significant.  It is no coincidence that 'Pirate Parties' are emerging around the world, and even starting to gain some political influence.  The Free and Open Source Software movement also has political clout in some countries. 

FOSS advocates are directly responsible for the proposed ban on software patents in the new New Zealand patents legislation.  The general discontent with 'bad' patents, patent 'abuse' and patent trolls appears to be a major motivating influence on the Australian Patent Office's current policy on rejection of 'business method' patents.  As you are no doubt aware, the 'social' pressure is becoming so great that companies such as Twitter are voluntarily imposing limits on their own patent rights through terms in their assignment agreements with employee-inventors.

Even the most well-informed and reasonable among those who consider the patent system to be 'broken' are adamant in their views that patents are too easy to get, they are too difficult to invalidate, and there are too many 'bad' patents being granted by overstretched and/or incompetent patent offices.

I cannot help thinking that with two opposed interest groups having completely incosistent views of the same system, maybe the balance is already roughly correct!

In any event, my advice to people who are involved in innovation and value creation, rather than politics and policy, is to focus on execution, which is a far greater factor in success than the existence or scope of IP rights.

The patent system is what it is.  However it is 'tweaked' or 'reformed' it will always work better for some players than for others.  A good advisor will assist you in using the system that we have (rather than the one you would like to have) to add the maximum possible value in line with your business strategy.  I find that IP strategy is often about improvisation!

Mark

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