Claims in Provisional Applications

Many times arguments that are made during oral argument do not get any mention in the decisions of the Federal Circuit.  As a result, they can fly under the radar of the patent bar for quite some time until the argument is ultimately repeated and mentioned by the Federal Circuit in an opinion or even relied upon.  

In listening to the recording of the oral argument In Univ. of Pittsburgh of the Commonwealth System of Higher Ed. v. Hedrick, there was one such argument that caught my attention.  Appellant argued that perhaps the strongest evidence in a dispute over inventorship was the fact that the inventors of two provisional applications had included method claims in the two provisional applications but had not included any claims directed to a composition of matter.   The appellant argued that due to the omission of such claims in the two provisional applications that the inventors listed on the provisionals were admitting that they were not inventors of such a composition of matter as of the filing date of the provisionals. [Listen]

I think such an argument would be alarming to most patent prosecutors.  There is very little case law concerning the effect of provisional applications.  It’s been my experience that most practitioners write at least one claim in a provisional application but do not write complete claim sets.  In fact, many would argue that no claim is required for a provisional  that will serve as the priority document for a US non-provisional application. (Although, it seems prudent to include at least one claim — especially for future foreign filing purposes.)  So, to hear someone argue that one must essentially  include a full claim set in a provisional application is disconcerting.  As noted above, the Federal Circuit panel did not address the argument in its decision.

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