Avoiding the Provisional Application Filing Pitfall of Narrowed Claim Interpretation
Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent and Trademark Office (USPTO) filing requirements, and providing priority dates that do not affect patent term or count toward the § 1.17(w)(1) fee for filing continuation applications. However, a recent court decision highlights a potential pitfall of filing a provisional application: restricted claim interpretation for claims of a patent claiming priority to a provisional application. In DDR Holdings, LLC v. Priceline.com LLC (Appeal Nos. 2023-1176, 2023-1177) (Fed. Cir. Dec. 9, 2024), the Federal Circuit held that when the description of a claim element in a provisional application is narrowed in a subsequent nonprovisional application filing, the claim element should be interpreted as recited in the nonprovisional filing. This article explores how patent applicants may avoid unintentionally narrow claim interpretation while maintaining the benefits of provisional application filing.
In brief, DDR involved a dispute between the parties over claim terms in DDR’s ’399 patent that also appear in the ‘399 patent’s priority provisional application. The Federal Circuit explained that, in the provisional application, the term “merchants” is discussed with respect to goods and services, whereas the ‘399 patent’s specification mentions goods but does not mention services in relation to merchants. The court found this distinction significant as an intended evolution of the term’s meaning. The court thus agreed with the district court that the definition of “merchants” only included goods and not services, thereby providing for a ruling of non-infringement.
The ruling has several implications patent practitioners would be well served to keep in mind when preparing provisional applications and their non-provisional conversions. We discuss key implications below.
Pay Attention To Claim Terms In An Initial And All Subsequent Filings
When a provisional application is filed, it is usually not clearly known what terms may appear in any eventually-issued claims. Although filing a provisional application with at least one claim is typically advisable, some provisional applications nevertheless do not include any claims at all. But even when a provisional application is filed without claims, key inventive concepts are usually known at the time of preparation. Keeping these concepts in mind and paying careful attention to how they are described in the provisional application’s disclosure may help avoid claim term surprises at any eventual post-issuance claim interpretation.
Further, in a subsequent non-provisional application, considering how terms are used in the provisional application vs. non-provisional application, whether those terms are currently in a claim or not, may also help avoid surprises. In some instances, a purposeful change in term description may be desirable. For example, it may be helpful to expand or broaden a term’s description in the non-provisional filing.
The court in DDR noted that claim element definitions that have been broadened during prosecution have been interpreted by courts as controlling. See, for example, MPHJ Technology Invs. LLC v. Ricoh Americas Corp., 847 F.3d 1363 (Fed. Cir. 2017), in which the provisional specification described a “one-step operation using a single button” in relation to the term “seamless” while the non-provisional specification described a “one-step operation” as being optional. The court in MPHJ determined that the non-provisional application’s removal of the provisional application’s description demonstrated an intentional decision and that the “seamless” claim element could therefore be construed more broadly by the court.
Also, keep in mind that, as noted in DDR, courts can use a different standard for claim construction than the broadest reasonable interpretation (BRI) standard used by USPTO examiners during application prosecution and by the USPTO’s Patent Trial and Appeal Board (PTAB). So if an examiner or the PTAB determines that language in the specification is not definitional, a court may disagree.
Make Provisional Applications As Robust As Possible Before Conversion
If possible, take the time to draft a provisional application that is as complete as possible, including a full specification that discusses various implementations of the technology, at least one claim, and a full set of figures, even if the figures do not include reference characters. If the filing timeline is short enough that only a “cover sheet” provisional application can be filed, it is typically helpful to file a follow-on provisional application as soon as possible that is more robust to help secure as early a filing date as possible for eventually-claimed subject matter. It is also important to follow up with the inventor(s) during the 12-month period before the conversion deadline, asking about updates to any disclosures that can be incorporated into a subsequent application. If the budget allows, filing one or more follow-on provisional applications to incorporate these updates may also help in securing the earliest possible filing date for any eventually-issued claims.
Keep Informed Regarding New Technological Developments
Researching competitors and analyzing how their patent filings are defining or using terms similar to key inventive concepts and any possible claim elements may help ensure that a provisional application is prepared as broadly as possible to capture the inventor’s work and possible future infringing activity by others. For example, pay attention to scopes of important claim elements, stay attuned to advances in the relevant technological field, and think about whether patent claims or claim elements could be construed to read on or recite these key advances.
Keep The Patent Family Alive For As Long As Possible
When a patent is allowed, consider filing a continuation or divisional application to pursue an additional patent with different claim scope or which uses one or more claim elements differently than in the initially allowed claims. This can help provide robust patent protection should any claim elements present in one claim but not in another claim be interpreted post-issuance more narrowly than intended.
Use Varied Claim Terms
Similarly, robust patent protection may be achieved by varying claim language from one non-provisional application to another or, in the same application, from one independent claim set to another. In some instances, using a term in a claim that is supported by but not explicitly used in the specification (provisional or non-provisional) may help avoid overly narrow post-issuance claim interpretation.
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