Since US patent law switched from a first-to-invent to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate why the invention is novel over the prior art or, still worse, fail to highlight the significance of the differences between the invention and the prior art. It is imperative to know the prior art before filing a patent application to avoid these pitfalls.
The recent case MPHJ Tech v. Ricoh (Fed. Cir. 2017)[16-1243-opinion-2-9-2017-11] is illustrative of the avoidable pitfalls a quickly-prepared provisional application can generate. The court instructs that a “provisional application can contribute to understanding the claims…[and that in] this case, it is the deletion from the [provisional]… that contributes understanding of the intended scope of the final application.” The patentee was unsuccessful in arguing for a narrow claim construction to avoid a prior art reference because its provisional patent application was drafted unnecessarily broadly, ostensibly without consideration of the prior art that the patentee was unable to overcome. Continue Reading