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Photo courtesy of Danilo Rizzuti and freedigitalphotos.net

     Provisional patent applications.  In the world of intellectual property, they have the allure of being the quick, the dirty, the cheap.  What’s not to love about them? The Patent Office filing fee is relatively low, they don’t require drafting patent claims, nor are formal drawings or an application that is formally organized required. But mention your love for provisional patent applications to a patent attorney and you’re likely to see furrowed brows and a worried look appear.

     Often, a business owner will file a provisional patent application before an important event (e.g. a trade show) to protect the company’s product/idea.  Although the product/idea at issue may be fully developed and ready for sale (or licensing) the company often files a bare-bones provisional patent application, lured and lulled by the lack of formal filing requirements. The potential patentee has a false sense of security until, well, that brown ‘stuff’ hits the proverbial fan. More about that in a bit…

     No one, however, will deny that provisional applications are an important option in developing a patent portfolio. That rings even truer since enactment of the “First-inventor-To-File” provisions of the Leahy-Smith America Invents Act (the “AIA”) in March 2013.  As a first-to-file system, those provisions of the AIA require a filed patent application in order to prove priority of invention.  As Dennis Crouch of Patently-O notes, this change is likely to lead even more companies to choose filing provisional applications as a core tactic in their patenting strategies. Dennis summarized in a nutshell every potential patentee’s dilemma: with a few specific exceptions, under the AIA, an inventor’s early filing date is important because any disclosure by a third party before that filing date will normally be treated as prior art that can negate patentability.

     So, there you have it. Provisional patent applications are more important than ever.  But let’s get back to when that ‘stuff’ might hit the proverbial fan.

     Provisional patent applications, as priority documents, create serious problems when they are unable to provide support for subject matter in a later-filed patent or patent application. This situation might crop up when the patentee is going through the patent examination process at the Patent Office, or, more likely, it might arise during litigation. For example, in litigation, an alleged infringer could claim that the patent-in-suit is invalid because it isn’t entitled to the provisional’s filing date. If proven, that could be fatal to the plaintiff’s case and the patent could be declared invalid.

     That’s just what happened to Novozymes when it sued DuPont Nutrition for patent infringement in May 2010 (see Novozymes v. Dupont Nutrition (Federal Circuit July 2013)). Novozymes’s case was filed pre-AIA, but the lessons there are even more relevant since enactment of the AIA. The Court found Novozymes’ patent invalid because the provisional application did not provide support for Novozymes’ claimed invention in its patent-in-suit.

     Novozymes’ provisional application at issue did in fact contain a lot of detail, or “formal textual support” as the Court put it. But the Court also found that the provisional did not explicitly describe Novozymes’ actual invention, only a “slew of competing possibilities.”  In short, the provisional did not provide support for Novozymes’ patent in light of the Written Description requirement (35 U.S.C. section 112, paragraph 1 of the Patent Act). That provision of the Patent Act requires that a patent applicant ‘convey with reasonable clarity, to those skilled in the art, that, as of the filing date sought, he or she was in possession of the invention.’  According to the Patent Office (see USPTO Manual of Examining Procedure, Section 2163), applicants can make this showing by “describing the claimed invention with all of its limitations” via, e.g., describing testing of the invention.

     In the Novozymes case, both parties were in the business of developing and marketing enzymes used in commercial manufacturing to break down starches.  For example, breweries use the enzyme (alpha amylase) to keep grain mash liquified during the brewing process.

Photo courtesy of Ahmet guler and freedigitalphotos.net

Photo courtesy of Ahmet guler and freedigitalphotos.net

     Both Novozymes and Dupont had been searching for the holy grail of alpha amylases; one that could function at high temperature and in highly acidic conditions without degrading. In November, 2000, Novozymes filed provisional patent application No. 60/249,104 directed to, at least what it believed to be, such an improved alpha amylase. Later, U.S. Patent No. 7,713,723 issued, claiming priority to the earlier provisional application. Novozymes had approached its search for the improved alpha amylase by determining that certain sites on the enzyme molecule were useful for substituting a different amino acid for the one present in the native molecule. Novozymes’ provisional application included a list of these sites and also a list of possible amino acid substitutions. However, the Court found that Novozymes’ provisional application did not disclose which specific amino acids should be substituted at which specific sites to obtain the improved alpha amylase that the ‘723 patent claimed.

    Ultimately, the Court agreed with Dupont that Novozymes’ provisional application disclosed only a ‘theory’ or ‘a laundry list of potential solutions’, and, as such, did not support the claimed subject matter in the ‘723 patent rendering it invalid. While it   must have been a devastating loss for Novozymes, the provisional application didn’t show that Novozymes was in possession of the claimed invention at the time the application was filed.

Stay tuned for Part II, where we’ll take a deeper look at the contours of the Written Description requirement and its relationship to provisional patent applications.

This post is intended to convey general information only and should not be construed as a legal opinion or legal advice.  We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and  any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.

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