February 22, 2017 | IP Buzz

Long Live Provisional Applications?

4 min

Following the enactment of the America Invents Act, many legal scholars pondered the effect that the switch from the "first-to-invent" system to the "first-inventor-to-file" system would have on the filings of provisional applications. For example, would the prevalence of provisional applications increase in the race to the U.S. Patent and Trademark Office under the "first-inventor-to-file" system? The recent Federal Circuit decision in MPHJ Tech. Invs. v. Ricoh Ams. Corp. (Fed. Cir. 2017) may offer guidance to Applicants who regularly rely on provisional filings.

In this case, MPHJ appealed the decision of the Patent Trial and Appeal Board (Board) that claims 1-8 of U.S. Patent No. 8,488,173 (the '173 Patent) are unpatentable over the prior art. MPHJ argued that the Board misconstrued the claims in coming to its decision.

The claims of the '173 Patent essentially require a scanner capable of "seamlessly" storing and transmitting a file upon selection of a "GO" button. MPHJ stated that the claimed "seamless" transmission should be interpreted narrowly to require sending and scanning to occur in a single-step operation without human intervention. The petitioner argued that these operations could be performed separately.

In support of its single-step argument, MPHJ stated that passages from the '173 Patent and its Provisional Application No. 60/108,798 (the '798 Provisional) support such a narrow claim construction.

The passage cited from the '173 Patent states:

VC extends the notion of a copier, which simply replicates the image of an original document onto another piece of paper using a single GO or START button, to do a similar operation in software so that the image gets seamlessly replicated into other devices or applications or the Internet.

The passages cited from the '798 Provisional state:

Patent: The IMAGinE Virtual Copier Interface: A Simple Method of Presenting to a User the Complex Operation of Copying Files or Electronic Images to and from Digital Imaging Devices and/or Software Applications in One Step.

The IMAGinE Virtual Copier can copy paper from a physical device directly into a third-party software application in one step. Using other applications, such as Visioneer's Paperport or Xerox's Pagis, the user must first "import" or scan paper into the capture application and then drag or direct the output to another location. With the IMAGinE Virtual Copier, a single button (the Go button) directly copies paper from a scan-like device (either a copier with a scan attachment or a scanner) and places it within the third-party application.

In its finding, the Federal Circuit acknowledged that the contents of the provisional application can contribute to the understanding of the claims of the granted patent. However, the court stated that the deletion of the above passages from the non-provisional application contributes to the understanding of the non-provisional application's intended scope, and that the non-provisional application stated that the single-step operation is optional, not required. As such, the court stated that a person of skill in the art would find the omission of the above passages from the non-provisional application to be significant and, thus, reasonably conclude that the inventor intended the single-step operation to be optional in the granted patent.

On this basis, the Federal Circuit affirmed the Board's construction of the claimed "seamless" transmission as not being limited to a single step, and maintained the Board's decision that the challenged claims are invalid.

Although the ruling of this case was not beneficial to the patentee, it demonstrates that potentially limiting statements in a provisional application may not always lead to a narrow claim construction in a subsequent non-provisional application. Rather, it appears that the intended scope of the final application will be determined by what a person skilled in the art would reasonably conclude in view of the provisional application and any additional disclosure contained in the final application. While it is preferable to avoid limiting statements, and to broadly describe innovative concepts in provisional applications, this case may alleviate some of the concerns Applicants have had about limiting statements in provisional applications.