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Inherency of Provisional Application to Support Later Non-Provisional Application

Jim Ruttler, Patent Attorney

Posted Tuesday, September 27, 2016 by Jim Ruttler

The Federal Circuit Court of Appeals decided a case this week that enhances the value of provisional patent applications.

Essentially, in Yeda Research v. Abbott, the Court held that a provisional application doesn’t have to disclose all the details so long as those details are inherent based on a later filed non-provisional which includes the details. This amounts to allowing general disclosures in provisional applications to have their gaps filled by later filed non-provisional applications having more details. The significance of this is that the provisional application retains its priority date despite the fact that it doesn’t include all of the details that are added later via a non-provisional date.

The case here involved a provisional application by Abbott that didn’t include the specific amino acid sequence of a protein. Right after filing this application, a reference surfaced with that amino acid sequence. Then, following this intervening art, Abbott filed a non-provisional with the amino acid sequence specifically spelled out. The provisional application was therefore important because otherwise Abbott’s patent application would have been filed after the intervening art. The Court allowed the provisional application to serve as priority despite the fact that there was no actual disclosure of the amino acid sequence under the theory of inherent disclosure.

Based on this decision, filing provisional applications - even if all the detail isn’t yet available - is good practice because there is a chance that that provisional application can help you overcome art that may surface while prototyping and engineering.

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