Submitting source code with patent app

M. Arth...

What you suggest may actually be an economy  The unpublished application will preserve any value in secrecy.

There may be a false economy in not being legally advised, very early, in terms of at least the international consequences of the invention. Use or divulgation may destroy international rights.

The scope of protection will depend on the state of the prior art and the ultimately written claims which must be supported in the specification.

The fact that you can get a patent does not relate to the value of the patent. We have restorted to the Reality Check? As the inexpensive means to provide the insight of a professional early on to cope with the potential value of what you have.

For instance there may be more value in a trade secret than in a patent. Value may be destroyed by weaker than necessary patent claims becasue  they are not supported in the specification.

What is more you have to find a patent lawyer you can trust, who is interested, who can turn out an intellectual property patent or advice that maximizes your opportunity.

Aside from the scam industry that makes $100M a year and only one in ten thousand get back more than the pay, there are undisbarable patent lawyers make a fortune too filing and getting patents that are of no value.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
ELAINE's Workshop?
E arly L egal A dvice I s N ot E xpensive?
Reality Check?

JimIvey

I've said this many times, I've said it in this forum, and I'll say it again.  Provisional applications are useless and potentially harmful.  Don't do it.

Here's a long-winded faq on the topic:
http://www.iveylaw.com/index.php?option=faq&task=viewfaq&artid=4&Itemid=5

Provisional applications are the most misunderstood and misused aspect of patents today.  If your idea is worth protecting, file a real patent application.  

In summary, friends don't let friends file provisional patent applications.

Now, to answer your original question:  I don't feel comfortable with the notion that source code is "optional."  The reason some attorneys recommend submitting source code is to meet the "best mode" requirement.  Meeting that requirement is not optional, but submitting source code is not the only way to meet that requirement.  So, make sure your application meets the best mode requirement, with or without source code.

In terms of your provisional application (which is generally useless and identifies your application as one susceptible to validity challenges), it must meet the same legal requirements as a non-provisional application.  If it doesn't, it's even worse than useless.  If your non-provisional application needs the source code, then so does your provisional application.  If you put it in your non-provisional application and not in your provisional application, be prepared to spend some time in deposition explaining why you'd want to disclose your source code when it wasn't necessary.  Even worse, your source code could unequivocally show that your provisional application failed to meet the best mode requirement.

So, include your source code in both or neither.  Better yet, don't file a non-provisional application.  It doesn't do what you think it does.

Just to summarize my credentials on the issue, the vast majority of my 12-year practice has been in the area of software patents.  I'm a former software enigeer.  

I hope that helps.

Regards.

Z

Regarding provisional applications, I would offer the viewpoint that provisional applications can also be used as a tool. For example, an inventor/assignee can use the year to explore the viability of manufacturing, selling, licensing, etc the invention. If it doesn't pan out, the invention can be abondoned and the cost of the difference between the non-provisional and provisional application has been saved.

JimIvey

First, in the second to last paragraph of my prior post, I meant to say, "Better yet, don't file a *provisional* application."

Second, and more important, it should be understood that the provisional application doesn't buy you the time you think it does.  I hear people say they want to file a provisional application, shop the idea around, and then see if it's worth filing the non-provisional.  You don't need to file the provisional.  You can shop the idea around for a year without any application, provisional or otherwise, and still file a non-provisional application.  That year is there for you even without the provisional application.  It's been that way at least since 1953.

If you intend to use the provisional to preserve your foreign rights (patent rights outside the U.S.), you should be aware that at least Europe and Japan don't recognize provisional applications as legitimate priority documents.  In fact, I'm aware of no country which does recognize provisional applications as international priority documents.  So, any shopping of your idea around with no more protection than a provisional application will most likely cost you your foreign rights.  You had better have some non-provisional application on file if you care about foreign rights.

And, the money saved is minimal.  The difference in fees is about $300.  Relative to the cost of about $2,000 to $20,000 for the vast majority of patent applications, the $300 is almost nothing.  And, don't even think of writing a provisional application with anyless care than you would a non-provisional application; you're just asking for trouble if you do that.

And you should realize that the provisional application fee is cumulative -- you don't get credit for your provisional application fee when you file your non-provisional application.  So, the provisional application actually costs more money in the long term.

Unless you _really_ understand provisional applications intimately (and very few people do), I strongly suggest you avoid them.  They exist for one reason and one reason only: to allow applicants to delay the beginning and end of a patent term by up to one year.  

Of course, this is one person's opinion, and I acknowledge that I seem to be in the minority on this issue.  However, that doesn't mean I'm wrong.

Regards.

eric st...

 

While I agree with many of the negative reasons you point out against filing provisional applications, you failed to identify the single positive reason FOR filing a US provisional application.

The reason that provisional applications were provided to US inventors (who already had the benefit of a one year grace period) was a result of the GATT treaty which sought to give US inventors the same rights as foreign inventors as regards international novelty.

European countries, such as Sweden, have had provisional applications for quite a long time. (In Swedish it is called literally an "incomplete" application.) These applications have generally been used to preserve novelty which is fundamental requirement of Swedish (and European, and Japanese) patent law.

Say someone is to present something at a conference, or to a customer, and there is not time to file a complete application for patent. This is not an unusual situation. Filing an incomplete (or provisional) application immediately prior to the conference containing all the material to be publicly presented would preserve novelty for the information thus presented.

Prior to 1995, a US inventor who publicly disclosed her idea prior to filing a regular US application for patent would have killed her chances of obtaining patent coverage outside the US (although she could still obtain a US patent by filing an application for patent within 12 months of the disclosure.)

The US provisional application was aimed at resolving this situation. As a tool for preserving novelty they are very useful since there is frankly not always time to prepare a formal application for patent.  

To solve the question of international priority one can file a foreign application (or PCT application) at the same time one files the perfecting US application for patent (i.e., within one year of the date of filing the US provisional application.) Priority may then be claimed under the Paris convention to the U.S. provisional application without hinder.

Of course the ultimate value of this priority date has a lot to do with what is contained in the application, but filing a US provisional application will prevent the subsequent public disclosure of the material contained within the application from destroying the absolute novelty needed to obtain foreign patents.

As such, they remain valuable and indeed useful instruments for US inventors.

Regards,

Eric Stasik

patent08
patent engineering, development, and licensing services
skeppargatan 22C
114 52 stockholm
sweden

http://www.patent08.com

JimIvey

The reason FOR filing a U.S. provisional patent application is described in my FAQ on the topic which I've posted (by URL) in this forum many times.  Here it is for your convenience:
http://www.iveylaw.com/index.php?option=faq&task=viewfaq&artid=4&Itemid=5

My European counsel has informed me that Europe (and I believe Japan) do not consider U.S. provisional applications to provide priorty in accordance with the Paris Convention.  I'd greatly appreciate any updated (or corrective) information you might have about Sweden and Europe generally on the topic.

At the very least, if one expects a provisional application to provide priority for a non-US application, that person should take the time to verify the efficacy of a US provisional application in each country for that purpose.  It's at least an open question in some important jurisdictions.

So, let's suppose the goal is the postpone expiration of a U.S. patent as long as possible and to preserve foreign rights.  The only proper way to do that in my opinion is to file outside the U.S. first and then file in the U.S. within one year claiming priority of the original non-US application.

Of course, it's more expensive to go that route, but I believe you save much more than that in the long term in the form of reduced litigation costs and fewer challenges to patent validity during license negotiations.  The uncertainty of sufficiency of provisional applications is a temptation to challenge a patent's enforceability rather than to pay royalties (in my opinion).  

I think the more important point is that one really doesn't lose much (if anything at all) by ignoring provisional applications.  People try to use them for the wrong reasons -- primarily cutting corners and getting by cheaply.  I believe an apt analogy would be taking a shortcut by walking over thin ice.  Maybe you'll make it just fine and be better off.  But, you risk severe discomfort in the process.

Provisional applications are a patch, a kluge.  As a former software engineer, I have a healthy distrust for kluges.

Lastly, these are just my opinions.  People should be aware that I'm in the minority.  The majority of patent practitioners will happily file provisional applications for you and not be at all concerned about any of the risks I've pointed out.  I just don't think I'm doing my clients any favors by "going with the flow" on this topic.

Regards.

eric st...

Ivey,

Notice from the President of the European Patent Office dated 26 January 1996 concerning the priority conferring effect of the US "provisional application for patent."

With effect from 8 June 1995 it has been possible to file a provisional patent application in the USA. The "provisional application for patent" provided for in 35 USC, section 111(b), allows applicants to file a provisional application with USPTO under simplified conditions. In order to establish an effective filing date, all that need be submitted are a description of the invention and the drawings necessary for an understanding of the invention.

The provisional application cannot as such lead to the grant of a patent as it is not examined and is deemed abandoned 12 months after filing. It does however give rise to a priority date for a subsequent, regular national application for the invention which is filed within 12 months of the date of filing of the provisional application with a reference to the provisional application (35 USC section 119(e)).

Since the provisional application meets in substantive terms the requirements the EPC places on a duly filed national application in order to establish priority and because the subsequent fate of this filing is immaterial, the EPO, while acknowledging the independent decision making competence of the EPO boards of appeal and the Courts of the contracting states, recognises the provisional application for patent as giving rise to a right of priority within the meaning of Article 87(1) EPC.

http://www.european-patent-office.org/npr2e.htm

Regards,

Eric Stasik

patent08
patent engineering, development, and licensing services
skeppargatan 22c
114 52 stockholm
sweden

JimIvey

Thanks for the information.  My European associate based his opinion on court decisions which were more recent than 1996.  I'll have to follow up with him and ask how all that is reconciled.  The fact that the notice remains on the web site is encouraging.

However, in my FAQ, none of my reasoning is based on the unavailability of foreign priority.  My concern is with proper U.S. priority.  If shortcuts are taken in drafting the provisional application (most often, there are many shortcuts in PAPs), you may not end up with the protection in the U.S. that you thought you had.  On the other hand, I'm much more concerned about disclosure requirements than are many other U.S. patent attorneys/agents.

I still strongly encourage people relying on priority in other countries provided by the US PAP to check with those specific countries for the sufficiency of US PAPs for the purpose of priority in those countries.

And, I still strongly encourage people to use PAPs for their intended purpose and for that purpose ONLY.

Regards.

eric st...

Ivey,

Thank you for your reply. If there have been decisions from any of the contracting states of the EPC which contradict the position of the EPO, I will be grateful for your illumination.

While we are on the subject of provisional applications, I would like to clarify something from your FAQ.

?Suppose Application A is filed in the U.S. on January 1, 2001 and claims no priority of any earlier filed application. Enforceability of any patent issuing on Application A would normally expire on January 1, 2021 (assuming no term extensions). Thus, the time gap between the filing date (which all prior art must pre-date) and the expiration date is twenty years.

Suppose Application B is filed in the U.S. on January 1, 2001 and claims priority of a patent application filed in Mexico on January 1, 2000. The same rules for expiration apply within the U.S, so Application B would normally expire on January 1, 2021. However, the time gap between the priority date (which all prior art must pre-date) and the expiration date is twenty-one years.

Thus, U.S. law as recently modified favors foreign inventors.?

Prior art is a broad term which means different things in different countries.

I am not an expert on Mexican law, so let me slightly change your example.

Suppose Application C is filed in the U.S. on January 1, 2001 and claims priority to a patent application filed with the EPO on January 1, 2000. The European and US applications are simultaneously published 18 months later on July, 1 2002.

At this point, the published application becomes prior art to all other applications for patent both US and European.

But the U.S. application becomes prior art to another U.S. application for patent as of its DATE OF FILING IN THE U.S.. In other words, the U.S. application for patent becomes prior art to another U.S. application for 6 months earlier than the corresponding European application. Thus U.S. law favors an earlier filing date IN THE U.S..

Priority is both a sword and a shield. As a shield ? ensuring your client?s ability to obtain a patent - claiming priority to a foreign application is sufficient. As a sword ? ensuring your client?s ability to prevent others from obtaining a U.S. patent - the claim of foreign priority confers no benefit.

To further complicate matters, U.S. law has other unique features which favor U.S. based inventors. Prior art is a broad term which includes ALL activity ? not just publication. Knowledge, use, sale, offer for sale, etc. are all considered prior art activities in the U.S.. However, as regards U.S. patents, these prior art activities must occur IN THE U.S. -?knowledge or use? outside the U.S. does not have the same effect as ?knowledge or use? in the U.S.. Moreover, inventive activity which may be used to prove an earlier date of invention, is only valid for activity IN THE U.S.. By obtaining an earlier filing date IN THE U.S., foreign inventors can firmly establish a U.S. date of invention.

Assuming Application C is written in English (to avoid the complexities of when a translation is provided), if the inventor thinks she will eventually file a corresponding application for patent in the U.S. she is well-advised to file a corresponding U.S. provisional application simultaneously with the European application, thus acquiring the benefit of an earlier filing date in the U.S.. If she decides later to not obtain the U.S. patent, she is saved the expense of the filing fee and the cost of preparing the declarations, etc.

For foreign inventors, there are many advantages of the U.S. provisional application. I fully agree with you that content is key. Many inventors assume that a quickly written description of an invention filed as a provisional application will confer the same rights as a properly written regular application for patent and this is simply incorrect.

Regards,

JimIvey

Wow, lots of points to address....

First, whatever I learn vis-a-vis US PAPs as European priority documents, I'll post here.

Second, with respect to my example in my PAP FAQ, my point wasn't the use of the application as prior art to other applications but rather pointing out the gap in time between effective prior art against the application and termination of the ultimately issuing patent.  I'll see if I can clarify that point in my example at some later date.

Third, I didn't mean to say that the U.S. Law ALWAYS favors foreign inventors, just that the specific recent modification re patent term put foreign inventors in a better place than U.S. inventors.

Regarding your Application C, some of your points are well taken.  Others evidence a misunderstanding of U.S. law.

The section you're referring to is 35 USC S 102(e).
http://www4.law.cornell.edu/uscode/35/102.html

I believe that you are correct that the EPO application is prior art as of publication and the US application is prior art as of filing.  A better solution than filing both EPO and US PAP, in my opinion, would be to file PCT designating EPO and US.  The PCT publication would be prior art as of its filing date.

I have to respectfully disagree with your point that prior art includes "ALL ACTIVITY".  Within the US at least, it includes ONLY the activity identified in Section 102 (in the link above) -- excluding private experimentation, for example.  And, yes, it goes beyond publication only.  And, yes, knowledge and use is only prior art in the US.  This isn't uncommon, however.  For example, while it's my understanding that Europe considers any public knowledge anywhere to be prior art, Japan only considers public knowledge in Japan.  Each country differs on that point.

Regarding inventive activity to establish an earlier filing date, it's not open to every country but it's not limited to the U.S. either.  Here's the rule on the topic:
http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_131.htm#cfr37s1.131

Ignoring dates (since the most recent is 1996, quite a few years ago), inventive activity is relevant if it occured in the US, in a NAFTA member country, or a WTO member county.  While I haven't checked each and every member of the EU to see that it's a member of WTO, most of the big names (UK, France, Germany, Sweden, etc.) are members.

http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm

My point in my FAQ was not to suggest that US law favors foreign inventors in all ways.  In fact, in a number of ways that you've point out, US law favors US inventors.  It's just that the recent changes for GATT had a strange quirk which was fixed with a patch, rather than with a proper fix.  One possible solution would have been that patents expire on the 20th anniversary of the earliest priority date irrespective of jurisdiction.  Then, all this confusion of PAPs would just go away....

Regards.