The issues associated with U.S. provisional and CIP patent applications continue to become more and more complicated. In Ariosa’s fight with Illumina over prenatal testing technology, the PTAB instituted an inter partes review of the Illumina patent, finding that the Fan prior art reference, published in a patent application, created “a reasonable likelihood that [Ariosa] would prevail” in showing that all claims of the Illumina patent were anticipated. The Fan prior art reference claimed priority back to a provisional patent that had been filed seven months before Illumina’s patent. But the Board ruled that Ariosa “did not meet its burden of persuasion of demonstrating that the Fan is prior art” because “it failed to demonstrate that the claims of Fan were supported by the disclosure of the provisional in compliance with 35 U.S.C. § 112.”
The Federal Circuit agreed, ruling in 2017 that a published application can count as prior art as of its provisional filing date — but only as to features actually claimed in the application. After the Federal Circuit denied rehearing and rehearing en banc this spring, Ariosa filed a petition for certiorari to the U.S. Supreme Court in July, claiming that in this decision the Federal Circuit misread the patent statute and Supreme Court precedent.
In addition to Ariosa v. Illumina, another significant Federal Circuit opinion, Dynamic Drinkware v. National Graphics (2015), also illustrates that the use and legal standing of provisional patent applications is complex, and there are still major unresolved issues that may lead to patent invalidation. Our expert panelists will discuss potential pitfalls associated with U.S. provisional or CIP patent applications. Problems may arise not only when there is failure to fully claim the invention, as in Ariosa, but if there is a failure to: (1) list all of the inventors in a provisional application, (2) timely assign the provisional application, or (3) properly list the applicant(s). Similarly, if the timing is not right, CIP applications are often dead on arrival and, even if done correctly, may needlessly sacrifice patent term. The panel will address PCT traps, as well as the circumstances when filing a provisional or CIP application instead of a standalone utility application can be a sound strategy.
- Courtenay Brinckerhoff, Foley & Lardner LLP
- Charles Chesney, Qualcomm Incorporated
- Roland McAndrews, Bookoff McAndrews PLLC