Provisional Patent Applications as Prior Art

By Dennis Crouch

Quality patent examination demands that patent examiners first identify the closest and most applicable prior art. To that end, the USPTO has spent many millions of dollars to ensure that examiners have fingertip-access to extensive databases of prior art literature. For patent documents, the USPTO maintains a database of easily searchable patents and published patent applications updated each week. Through cooperative agreements, the USPTO also has access to digital versions of patent documents from the various worldwide examining offices.

Unfortunately, a major set of prior art documents is missing: that of publicly available provisional patent applications. Provisional patent applications continue to be an increasingly popular initial disclosure document with more than 2,000,000 filed since their introduction in 1995. ¹ Although these documents are already housed within the USPTO computer systems, they are not available in any searchable or practically accessible form. ² Thus, the proposal here is simple: create a searchable prior art dataset of provisional patent applications. ³

To be clear, I am not suggesting any statutory change regarding initial secrecy, since provisional patent applications are initially kept secret when filed. ⁴ My suggestion is simply to take advantage of the reality that the provisional application file wrapper becomes public prior art once relied upon as a priority document in an issued patent or published non-provisional application. ⁵

Three Reasons Why Provisional Applications are Useful Prior Art: An appropriate question here is whether provisional applications offer prior art disclosures that go beyond what is already available within the issued patents and published non-provisional applications that rely upon the provisional applications for priority. The answer is yes. Although preliminary, my analysis of several hundred provisional applications suggests that patent applicants regularly include disclosures in provisional applications that are not disclosed in the follow-on published documents. ⁶

Basically, a number of patent applicants have taken on the strategy of including extensive detailed disclosures within their provisional applications and then paring down those disclosures in the later non-provisional filings. The provisional filings may often do a better job of linking the disclosure with the prior art and explaining the motivation behind the invention. Similarly, many patent applicants make further advances after the provisional filing that are added to the non-provisional application, and, in that process, details from the provisional filing are left-out of the subsequent filings. Those additional lost details are often specific configurations and prior test results. It is also often true that provisional disclosures lack the legalese inherent to most non-provisional patent applications. As truer technical documents with previously inaccessible disclosures, provisional applications have the potential of serving as a useful addition to the prior art corpus. ⁷

A second benefit of provisional applications as prior art is that, once publicly available, a provisional patent application is deemed prior art as of its filing date even if the provisional application has no formal patent claim. ⁸ As with other § 102(a)(2) prior art, this filing-date basis (as opposed to a publication-date basis) amplifies the power of the additional disclosure and fits well with the purposes of our first-inventor-to-file system.

Finally, because provisional applications are patent documents, we can expect that the transitional process of incorporating provisional applications into the regular examination process (both technologically and culturally) will be more straightforward than would the addition of a further set of non-patent literature. ⁹ As with other patent documents, there is generally no copyright problem associated with the USPTO making public these submitted patent documents.

Why Agency Action is Necessary: A number of parties, including myself, Google, and Reed Tech, have taken steps toward privately building databases of provisional application file wrappers. However, the data usage limitations of PAIR have created major roadblocks to success. Agency participation is necessary in order to overcome those limits on accessing the agency’s files.

Creating the Database: The system includes over one-million publicly available provisional applications with more being filed each day. The project is logically divided into two spheres: (1) providing access to already-filed provisional applications ¹⁰ and (2) capturing newly filed applications. ¹¹ If the agency is not prepared to create the entire database, a second approach is to work with private entities. As mentioned above, the primary roadblock is that the PTO records are currently locked-up in a way that is not accessible to database creators. ¹²

Conclusions: What I propose here is quite simple: open up access to a major set of prior art that is currently housed within the USPTO, and give examiners and the public timely access to a searchable dataset of provisional patent applications.

1. The USPTO began accepting provisional patent applications on June 8, 1995 as directed by the legislation implementing the GATT Uruguay Round World Trade Organization Agreement.
   
2. In particular, the documents are housed in image-files accessible externally through the Patent Application Information Retrieval (PAIR) System. My understanding is that neither the general public nor patent examiners have access to a searchable database containing public provisional patent applications.
   
3. This proposal fits squarely within Pillar I of the enhanced patent quality initiative.
   
4. See 35 U.S.C. § 122(b)(2)(A)(iii).
   
5. See 37 C.F.R. § 1.14(a)(1)(iv)-(vi). As explained by the statute, there are a handful of mechanisms that trigger the laying open of provisional application files.
   
6. Some provisional applications of interest include U.S. Patent Application Nos. 60/322,139; 60/459,483 (500+ pages of computer code listing not found in the utility patent application.); 60/366,803; 61/672,030; 60/887,042; 60/406,837; 60/615,986; 60/464,185; and 61/867,958.
7. Of some political importance is that, although most U.S. patent applications are now associated with a foreign origin, provisional filings will continue to be primarily of U.S. origin. By using provisional applications as prior art, we help legitimately clear the path for U.S. entities for projects that they are already working on.
8. Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606, 1611 (B.P.A.I. Aug. 29, 2008) (precedential board decision) (“The fact that provisional applications require an additional step for publication does not, in our view, render them any less applicable to the legal fiction of Milburn underpinning § 102(e).”), citing Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926). See also Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006) (once open to the public, a patent file wrapper should be considered a printed publication).
9. Patent examiners are extremely familiar with the type of content and format of patent applications in a way that increases the efficiency of reliance upon those documents as prior art. I have found that most provisional patent applications are formatted in line with typical non-provisional applications. Further, because provisional applications are patent documents, the USPTO need not worry about the copyright or database licensing issues that are persistent problems with non-patent literature.
   
10. This backward looking process would involve converting the current pure image files to text-searchable format. Although this process can be computationally intensive, it is made much more straightforward by the fact that the USPTO already has scanned-image files of the prior art documents.
    
11. The process for new provisional applications would be amended to include a text conversion when image files are submitted. However, the primary goal would be to retain originally submitted text as text.
    
12. I would volunteer to assist with this process in any way that is helpful, including the creation of a pilot project.