In New Railhead Mfg. v. Vermeer Mfg. (Fed. Cir. July 30, 2002), the Federal Circuit invalidated a patent whose priority provisional application failed to adequately support a claim limitation.

***NOTICE of September 26, 2011: a number of changes have occurred in the patent landscape subsequent to the preparation of the post below, as noted at Patent Eligibility and Reform.***

A patent directed to a drill bit was filed as a continuation-in-part application that claimed the priority date of a provisional application.  The patent owner sued for infringement.  The parties did not dispute that commercial embodiments of the patented drill bit were sold more than one year before the filing date of the non-provisional application, but not more than one year before the filing date of the provisional application from which the non-provisional application claimed priority.

On appeal, the Federal Circuit held that the patent was not entitled to the priority date of the provisional because the disclosure in the provisional specification failed to adequately describe the invention claimed in the patent as required by 35 U.S.C. §§ 112 ¶ 1 and 119(e)(1).  To claim priority from a provisional application:  “Identity of description is not necessary.  Identity of that which is described, however, is necessary.”  New Railhead, slip. op. at p. 9.

The claim limitation at issue recited:  “the unitary bit body being angled with respect to the sonde housing…”  Deposition testimony by those most familiar with the invention admitted that their understanding of the “heel-to-toe angle” came not from any showing in the provisional drawings, but rather from their knowledge of the device.  When one of ordinary skill in the art must make the invention before being able to ascertain the claimed features, the specification is inadequate.  Id. at p. 8-9.  The court noted passing references to “high angle of attack” and “high included angle offsets” without any discussion of the bit-housing combination in the provisional.  This disclosure was inadequate, so the commercial sales constituted a § 102(b) bar which invalidated the patent.

Recommendation:

It is critical that upon filing of a provisional patent application, the disclosure show that the applicant has invented all concepts of the invention to be protected, including each feature that will ever be included as a claim limitation in any patent that will rely on the provisional patent application for priority.

August 28, 2002

Text Copyright © 2002 Bob Brill et al. and Notice Copyright © 2011 Bob Brill

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