The Dangers of “Stuffing” Your Patent Applications with Undeveloped Ideas
Many companies build an IP portfolio around particular products, and the portfolio evolves over time as new refinements and improvements to the original concept are developed. This sometimes raises the question of whether various different inventions should be consolidated into a single application or split into separate applications. One benefit to consolidation is that it may be easier to propose combination claims during prosecution (at least in the US) if the prior art discloses features individually.
However, we have run into situations where cost-conscious clients believe it is preferable to stuff every improvement or refinement that they are currently working on into an application, even if the ideas are not well developed or enabled. Product development is an on-going activity, and particular features will generally proceed from conception, to development, to prototyping, to testing. Some clients fear that if they exclude certain features, someone else may file a patent application on them first, even though the features are in the preliminary conception stage and are not well developed.
This strategy can back fire, as the client may dump features into an application and create prior art against its own future applications. For example, if a feature is at the conception stage and is disclosed in a first application, once the first application publishes it may be treated as prior art against a later application in which the feature is fully developed. Bear in mind that this will not always be the case. Under current U.S. law, if the first application published less than a year before the second application was filed and if both applications have the same set of inventors, this prior art effect will be avoided. However, if those assumptions do not hold, the first application may indeed act as prior art against the second.
This can produce a conundrum. If the idea disclosed in the first application is not well developed, it may be difficult to draft definite claims directed to it. If such claims are submitted, the Examiner may reject them for lack of enablement. In another scenario, if the application issues as a patent and is litigated, an accused infringer may attempt to invalidate claims directed to the idea for lack of enablement. Later applications that disclose the enabling features of the idea may be deemed anticipated and/or obvious by the first application. Moreover, the disclosure of those enabling features in the later application will likely be used against you to show that the idea was not enabled in the first application.
But, you say, if the idea is not enabled in the first application, it will not be prior art against the second. That is not necessarily true. Under U.S. law, for a particular piece of prior art to be anticipatory, it must be enabled. However, references can be asserted in an obviousness rejection without proof that they are individually enabled. More importantly, do you really want to argue that your own earlier patent application was not enabled? If the earlier application issues as a patent, an infringer could use such a record against you (not to mention the fact that it is somewhat embarrassing). Thus, by “stuffing” your applications with undeveloped ideas, you can end up in the unfortunate position of having dedicated those ideas to the public domain without being able to obtain enforceable rights to them.
The moral of the story is that some thought should be given about when to include evolving product features in a patent application. It is not necessarily wise and may be quite harmful to dump every feature that has been thought of into an application. Instead, some ideas should wait until they are more developed and made the subject of follow-on applications.
What about filing a separate provisional that is “stuffed” with features and then filing your non-provisional a few days later that claims priority to that provisional? Since the provisional would never publish I assume it can’t be used as prior art but you can have it waiting in the background to pull in those features if needed. I haven’t had my coffee yet so perhaps this idea is half baked.
That strategy would work fine. A provisional will not be deemed prior art against a later application that claims the benefit of the provisional. If the second application is a continuation in part application of the first, that may work also. However, my understanding is that the parent can serve as a 102b/103 reference against the CIP claims that rely on new matter if the CIP is filed more than one year after the parent application publishes or issues.
Brad is correct stuff all ideas into provisional, in fact this is the strategy that most of the people fallow.
It works fine, under limited circumstances. If you hit the one year mark and the application is full of features that remain undeveloped, the same problem arises. The post was motivated by a client that wanted to “stuff” undeveloped ideas at the time we filed the non-provisional.
The issue is not complete without consideration of the best mode problem. If the under developed ideas are nevertheless what the inventor knows to be the best mode, (that is why he is now headed in that direction); they have to be disclosed originally. The bottom line is there is a real problem of encountering the inventor’s own original publication as the best prior art against him. The US caved into the international publication of application requirments and this is the negative result.
The US PTO officials and polititians all wanted to make patent law an international issue and jumped on the international unification bandwagon. They got lots of trips to Europe and got to wine and dine International delegates at taxpayer expense. But now there is this difficulty which goes to the heart of actually getting a patent on the best mode of the invention. The US system set up by our forefathers was better without the international unifcation. The American Invents Act does nothing to help the situation. The polititians have sold out the US inventor.
Fair enough, but I’m not sure in the typical case these types of under developed ideas would rise to the level of the “best mode.” I would argue that the inventor would not have a basis for subjectively believing it to be the best mode if he or she is not even sure how to enable and use the underdeveloped ideas. In any event, the AIA also takes the teeth out of the best mode issue by removing the failure to comply with it as a basis for invalidating a patent.