Dazed and confused: Second U.S. provisional application followup

Not long ago, I posted a followup article in response to questions about United States provisional patent applications. This is my second followup article addressing questions about U.S. provisional patent applications in the European Patent Office [EPO] and the Indian patent office.

Businesspeople and inventors must initially be aware of the single and exclusive legislative purpose of U.S. provisional applications: To place domestic applicants on an equal footing with foreign applicants with respect to the lifetime of an issuing patent. That being said, provisional applications are inappropriately filed in international venues in which their legal significance and effectiveness must be evaluated. Two of those venues are the EPO and the Indian patent office.

As a preliminary informational matter, the EPO issues what is designated as a European patent in twenty signatory nations to a unifying agreement. These patents are enforceable in these countries, although the European patent is interpreted and enforced under national laws. A European patent application must contain, among other requirements: (i) a description of the invention; (ii) one or more claims (sentences that define the scope of the invention to be protected); (iii) if appropriate, drawings that are referenced in the description; and (iv) an abstract.

In particular the description of the invention must include:

(1) Disclosure of the invention as claimed so that the technical problem and its solution are understood, as well as any advantages of the invention over the previous art;
(2) A brief description of the drawings;
(3) A detailed explanation of at least one manner of practicing the claimed invention by examples where appropriate and drawings if necessary; and
(4) An explicit explanation of why the invention is capable of use in industry.

In a European patent application, an invention is sufficiently disclosed if at least one manner clearly enables the skilled person to practice the invention, and the claims are explained by the technical description. The application must be written so that a person of ordinary skill in a particular technology or art can practice the invention solely on that skill and the information in the application. Moreover, the applicant cannot add new or more accurate substantive information after filing the original application.

Because a United States provisional application lacks claims, on this basis alone the provisional application would not qualify for European patent status. Moreover, the description must be sufficiently comprehensive so a person can practice the invention based solely upon skill and the patent’s disclosure. As a practical matter, most United States provisional patent applications are fatally abbreviated and would not survive the enablement requirement of the European patent.

The Indian patent office requires an explanation of the economic significance and/or technical advance of the invention disclosed in the application. India also requires an enabling disclosure with figures and claims, as well as the best manner in which to practice the invention. No new matter can be added to the Indian patent application after it is filed. Consequently, most United States provisional applications would not survive the Indian patent office for the same reasons as for the United States and EPO filings.

© 2011 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com


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