While vacationing in Mexico on April 14, 2001, Henrietta invented a camera that
operated at high temperature and is waterproof. She carefully documented her invention
and filed a provisional application in the USPTO on April 30, 2001. She conducted tests
in which the camera withstood temperatures of up to 350 degrees Fahrenheit. However,
when the camera was placed in the water leaks were discovered rendering the camera
inoperable. On April 12, 2002, Henrietta conceived of means that she rightfully believed
will fix the leakage issue. Henrietta came to you and asked whether she can file another
application. Henrietta desires to obtain the broadest patent protection available to her.
Which of the following is the best manner in accordance with proper USPTO practice
and procedure for obtaining the patent covering both aspects of her invention?
(A) She can file a nonprovisional application on April 30, 2002 claiming
benefit of the filing date of the provisional application, disclosing the
means for fixing the leak and presenting a claim covering a camera that
operates at high temperatures and a claim covering a camera that is
waterproof, or presenting a claim covering a camera that both operates at
high temperatures and is waterproof.
(B) Henrietta cannot rightfully claim a camera that is waterproof in a
nonprovisional application filed on April 30, 2002, since she tested the
camera and the camera developed leaks.
(C) Henrietta can file another provisional application on April 30, 2002 and
obtain benefit of the filing of the provisional application filed on April 30,
2001.
(D) Henrietta may establish a date of April 14, 2001 for a reduction to practice
of her invention for claims directed to the waterproofing feature.
(E) Henrietta should file a nonprovisional application on April 30, 2002
having claims directed only to a camera that withstands high temperatures
since the camera that she tested developed leaks.
A provisional holds your place in line for whatever it includes in its disclosure. If
you add more stuff when the non-provisional is filed you can still obtain benefit
for whatever the two applications shared. A is the answer.
ANSWER: (A). As to (B) and (E), an actual reduction to practice is not a necessary
requirement for filing an application so long as the specification enables one of ordinary skill in
the art to make and use the invention. However, (D) is incorrect, as a reduction to practice may
not be established since the camera leaked. As to (C), a second provisional is not entitled to the
benefit of the filing date of the first provisional application. 35 U.S.C. ยง 111(h)(7).
Can somebody explain this one to me? The answer in the key only discusses why the wrong answers are wrong.
If Henrietta only figured out how to make it waterproof on 4/12/02, then why do her claims to a water-proof camera get the benefit of the 4/30/01 filing date of her provisional? Based on the facts, the spec that would have been filed with the provisional on 4/12/02 would not have enabled a PHOSITA to make a waterproof camera because, at that point, she hadn’t perfected the waterproofing aspect.
I understand provisionals are just place holders, but the explanation above says, “If you add more stuff when the non-provisional is filed you can still obtain benefit for whatever the two applications shared. –> A is the answer.” Here, the provisional and the non-provisional could not have shared the water-proofing concept (at least not a working one).
Is it enought that Henrietta claimed the idea of waterproof in the provisional, regardless of whether, at that time, she had actually perfected waterproofing? I think I may be confusing this with C-I-P requirements?
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2163.03, section III:
“Under 35 U.S.C. 119 (a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112, first paragraph.”
This is an extremely poorly worded question. I disagree with their answer choices, since (A) implies that the waterproofing fix is allowed priority of the provisional, which is absurd. Using the provisional’s disclosure, it is not clear that the spec was enabling as to the waterproofing feature.
This question would be much better if they had added something stating that one of ordinary skill in the art would have no trouble making the fix based on the original, provisional spec. Unfortunately, the knuckleheads writing this question left it ambiguous to a fault.
It is a poorly worded question. I believe the claims in the nonprovisional filed 4/30/02 get two filing dates. Claims to a high temp. camera, disclosed by the provisional, get a date of 4/30/01. Thus the priority claim to the provisional gives the 4/30/01 date to this claim. Claim to a waterproof camera and claim to a camera with both high temp. and waterproof get a filing date of 4/30/02. The answer is A but the fact that the nonprovisional’s claims have two filing dates isn’t pointed out in the answer.
Agree with Matt above, I think the benefit of the earlier provisional app could only be claimed if the error and fix were both very obvious to the posita.
I disagree with Rodney that A would be correct if it included language of multiple filing dates because the language in (A) encompasses the option of presenting ONE claim that includes both the waterproof and hi temp aspects (“… or presenting a claim covering a camera that both operates at high temperatures and is waterproof”…), and there is no way a single claim can have multiple filing dates.
Has anyone had this question recently?
Matt is wrong. The benefit of the earlier provisional app could be claimed in the new app regardless of the obviousness of the error and fix. However, the benefit of the filing date from the earlier provisional app would only extend to the subject matter disclosed in the provisional app. The answer choice might seem to imply that the waterproof element is given priority from the provisional application, but it is not. But the fact that the answer choice does not make that clear does not invalidate the answer.
Also note, claiming the benefit of the filing date of the provisional app does not change the filing date of the claim, only the priority of the subject matter.
Got this. 06.30.2012
You cannot claim priority to a provisional application. To obtain the broadest patent protection, Henrietta should include disclosure in the provisional application and the new improvement. To do so, one may (i) convert the April 30, 2001 provisional into a non-provisional on or before April 30, 2002. In addition, one may include the new improvement in the non-provisional at the time of filing (Answer choice A); or (ii) file a second provisional application on April 12, 2002, and on or before April 30, 2002, convert the first provisional and the second provisional together into one non-provisional application.