Urban Legends

///Urban Legends

Urban Legends

When I was growing up there was a rumor that went around school:  a fast food restaurant had somehow deep fried a rat instead of a chicken piece and served it to a customer.  I have my doubts on the veracity of that one, but it sure spread around.

A similar thing seems to have occurred in the patent world.  Sitting with a group the other day reviewing start-up pitches, someone remarked that the founder could just get patent protection by filing the slide deck as a provisional application.  That is another urban legend.

It is true you can file a slide deck with the US patent and trademark office (PTO), along with the required coversheet.  No one is going to stop you (although if you read on you might see that someone should stop you).  You can practically file a ham sandwich with the PTO as a provisional patent application.  Ok, not really because it’s all electronic filing, so there would be some technical challenges, but certainly a photo of the sandwich would get there.  However, like the slide deck, it’s not a sufficient priority document.

What do I mean by that?  Provisional applications don’t get examined by the PTO.  They just sit there, like a paperweight, with the key function of setting a marker in the ground for when you described your invention and set the dividing line for where “prior” art starts and stops.  But that line can only be drawn where your innovation is sufficiently described to encompass the breadth of the patent claims you eventually seek. [1]

Take for example a polypeptide you might be interested in for use in treating disease.  Perhaps it is one of a family of proteins with the desired function.  There may be particular domains of the polypeptide that would function in isolation or in fusions with other proteins.  Does the slide set describe this breadth?  Not just a list of names, but an explanation of the variations and derivatives that could be used.  What about the range of conditions to be treated or routes of administration?  While the slide set may describe a generic concept, it may lack identification of sufficient examples to provide support for broad claims. Or the slide set might describe the family of proteins of interest by function, but fail to give any or only a very few actual protein sequences falling within these bounds.

If the support isn’t there in your filed “ham sandwich,” you have a false sense of security.  You may think you have preserved the priority date when in actuality, you haven’t provided sufficient written description in your filing to demonstrate the full scope of your invention.

Does this mean you should never file your slide deck, draft manuscript or the like? Sometimes there is no choice.  Because you are off to a meeting or other presentation and suddenly realize you have nothing on file to protect the impending disclosure, you may need a stop-gap.  But think of it exactly as just that, a temporary fix which you will need to reinforce as soon as you return home, with an updated provisional application filing providing additional breadth and depth.

There are some additional considerations when filing slide sets or invention disclosures and other summaries as a “patent application.”  Many of these other types of documents contain admissions about the prior art, the uncertainty of the scientific conclusions or the unpredictability of extending the discovery to broader bounds.  These statements can all be used against you when the patent is examined.[2]

So, what to do? Here are a few considerations:

  • Plan ahead. If you are off to a meeting, about to submit a manuscript to a journal or giving a public presentation, give yourself and your patent attorney sufficient time to draft a provisional application and get in on file before the public disclosure.
  • When filing a provisional application, think about the scope of the patent claims you will seek. It will be a balance between the broad scope you desire, the limitations imposed on what is already disclosed (by you and others), and what you can support with examples and data. Examine whether you have sufficient exemplary species to represent your broader more generic description.
  • If your initial provisional filing is sparse, for example, only one species of a broader genus, plan to enhance the scope by filing additional updates to the provisional before the 12 month clock to the non-provisional filing runs down. While these updates may only provide a later priority date from the initial filing, they can help fill out the scope and make for a more robust non-provisional/PCT application.

 

The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.

[1] See Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017) explaining that “for a non-provisional application to claim priority to a provisional application for prior art purposes, ‘the specification of the provisional [application] must contain a written description of the invention … in such full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.’ ”

 

[2] See e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.”)

By | 2019-03-05T01:28:22+00:00 March 5th, 2019|Blog, Groundworks|0 Comments