Federal Circuit Clarifies Role of Provisional Applications as Prior Art
In Re Giacomini (decided 7/7/10)By: Andrea J. Gabert
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What This Means to You
- If you have filed a patent application and a later-filed application with the same subject matter claims priority to a provisional application that precedes yours, there are steps you can take to prevent the shift of the patent-defeating date to that of the provisional application.
- Determine whether the original provisional application taught all of the elements of your claimed invention.
- Establish whether the provisional application contained adequate written description support for the claimed invention.
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Overview
In this case, the US Court of Appeals for the Federal Circuit (Federal Circuit) established that U.S. patents or publications will be considered prior art as of the filing date of a qualifying U.S. provisional application.
In In Re Giacomini, the Federal Circuit upheld a decision by the Board of Patent Appeals and Interferences (“the Board”) that subject matter described in a patent application filed after the petitioner’s application qualified as prior art because the patent application claimed priority to a provisional patent application filed before the petitioner’s application.
Background
The Giacomini application was filed on November 29, 2000 and claimed a technique for selectively storing electronic data in a readily accessible memory called a “cache.” The Tran patent, describing a caching technique based on an anticipated demand for data, was filed on December 29, 2000, but it claimed priority to a provisional application (“the Tran provisional”) filed on September 25, 2000, thereby preceding Giacomini’s filing date.
The Board found, and Giacomini does not dispute, that the Tran patent teaches all of the claimed features in Giacomini’s application. Giacomini argued that, although a provisional patent application can shift a patent application’s priority date, it cannot alter its effective reference date under 35 U.S.C. § 102(e). The Federal Circuit disagreed. The opinion stated that the Tran provisional showed that Tran, not Giacomini, was the first to invent the claimed subject matter and concluded that the patent-defeating date is the filing date of the provisional patent application.
Giacomini based many of his arguments on an earlier case (In Re Hilmer) that had a similar timeline of filings; however, the Federal Circuit distinguished Hilmer from the current case, as Hilmer relates to a foreign priority document and not a U.S. provisional patent application.
Takeaways
It should be noted that Giacomini 1) did not dispute whether the Tran provisional patent application taught all of the elements of Giacomini’s claimed invention and 2) did not raise the question as to whether the Tran provisional patent application contained adequate written description support for the claimed invention.
These two points need to be met to shift the patent-defeating date of the patent application to the filing date of the provisional patent application and should be considered in similar situations as possible ways to prevent the shift of the patent-defeating date to that of the provisional application.
