By: Kammie Cuneo

More often than we'd like to hear, inventors refer to provisional applications as place holders—as though filing of the provisional application reserves some right to complete the invention at a later time or to supplement it after filing. But inventors should be cautioned against this attitude.

The provisional application is filed under 35 U.S.C. § 119(e) and has the effect of preserving the inventor's filing priority if and only if the subject matter is described the manner provided by 35 U.S.C. § 112(a). Section 112(a) is the statute that governs the sufficiency of all patent disclosures, including those in a provisional application, and states the following:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

Section 112(a) imposes, for simplicity's sake, two requirements on the disclosure: (1) that the subject matter be enabled, and (2) that it provides notice that inventor had possession of the invention. Therefore, the provisional application acts as a “place holder” for only the subject matter which is properly described and enabled according to section 112(a).

The Federal Circuit has repeatedly held that a claim, in a patent whose provisional disclosure failed to satisfy § 112(a), cannot benefit from the filing date of the provisional. In New Railhead Manufacturing, L.L.C. v. Vermeer Manufacturing Co., the patented claims were stripped of their earlier provisional filing date because the provisional application failed to sufficiently describe the geometric relationship between a part and its housing. 298 F.3d 1290 (Fed. Cir. 2002). In 2019, the Federal Circuit again found that Purdue Pharma was not entitled to the provisional filing date for a compound which was not adequately described in the provisional application. 767 F. App'x 918, 925 (Fed. Cir. 2019).

Inventors and patent applicants should remember the perils of a scant disclosure when filing their provisional applications.