WEB PATENT NEWS--April, 2000

by contact usRobert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


In 1995, the Clinton Administration and Congress created a new type of U.S. patent application, called the provisional patent application. The intent was to place inventors filing in the U.S. on an equal footing with inventors filing non-U.S. applications by allowing them to file a simplified patent application that would establish an international priority date for the disclosed invention. In that a provisional application does not have to include one or more patent claims, the hope was that preparation of provisional applications would cost less and, hence, would allow U.S. filers to economically establish a filing date that they could rely on in countries that grant patents to the "first to file" instead of the "first to invent" as is done in the U.S. Furthermore, the filing would also allow inventors to avoid rejections of their applications based on activities (e.g., offers for sale) that bar the issuance of a U.S. patent if the activities occur more than 12 months before a U.S. patent application is filed.

While the concept sounded great in theory, some inventors reportedly found themselves caught in a variety of "Catch 22" situations after filing provisional patent applications. They had not read the "fine print" about provisional patent applications. It is the purpose of this article to explain that "fine print."

A provisional patent application only asserts priority of invention for the invention(s) that it adequately discloses. Furthermore, the filing of a provisional application asserts that fact (priority of invention) only for a 12-month period, within which a regular application must be filed (or the provisional application must be converted into a regular application) or the filing of the provisional application has no effect. In order for a provisional patent application to adequately disclose an invention, it must accomplish three things: describe the invention, enable the practice of the invention and set out the best mode of the invention.

The application must describe the invention in a way that would convince a hypothetical "person of ordinary skill in the art" that the inventor was in possession of the invention when the application was filed. The U.S. Patent and Trademark Office (USPTO) has recently proposed new (and controversial) rules that define just what is involved in meeting the "written description" requirement. An important purpose of the written description requirement is to allow the USPTO (and eventually the public) to ascertain if the inventor is claiming to have invented anything that was in common use or that was already known. It also prevents an inventor from later claiming (in his regular patent application) subject matter that he did not describe as being his invention in his provisional application.

So, Catch 22(a) has been that provisional patent applications that are slapped together without much thought can omit (or forget to include) the "written description" of important embodiments of an invention. For example, the application may only disclose a system when a process (method) could also have been claimed, had it been described. Participation of a patent professional in preparation of provisional applications costs money, but his expertise in recognizing all of the ways an invention can be claimed can make the difference between a valuable patent and a less valuable (or worthless) one.

The second requirement is that a provisional application must "enable" all embodiments (versions) of the invention that are later to be claimed in the regular application. As used in patent law, "enablement" means that a person of ordinary skill in the art must be able to make and to use the invention after reading the patent application. Thus, for example, an automotive engineer who designs carburetors for a living, upon reading a provisional patent application on a novel carburetor, should be able to actually make and use the novel carburetor in an automobile.

Catch 22(b) has been that inventors have filed provisional applications that do not enable important embodiments of their inventions. They may forget to explain how to accomplish an important step in a method (in all the ways that they want to protect) or they may omit an explanation of how to operate the invention. For example, if a biotechnology patent application relies on the deposit of biological material in a culture collection for enablement, and does not identify the deposit adequately, it can fail for lack of enablement. Or, if the inventor wants to broadly claim his invention, he can err by presenting a disclosure that does not enable the practice of the invention just as broadly as his future claims. Patent practitioners can provide invaluable assistance to inventors by helping them understand enablement requirements as they apply to specific inventions and in specific arts.

The third requirement is the best mode requirement. It simply requires that an inventor cannot conceal the best way to practice his invention when he prepares his provisional patent application. If there is a special glue, integrated circuit or algorithm that makes the invention work best, it cannot be kept a secret.

So, Catch 22(c) has been forgetting to mention (or purposefully concealing) that special element that, on the day the provisional patent application was filed, was part of the best mode envisioned by the inventor. In the U.S., concealment of the best mode is fatal, even though it is not in many other jurisdictions.

Well, with the above knowledge, you can understand why preparation of provisional patent applications has not turned out to be as inexpensive as everyone wished. The real Catch 22 is that someone must think through all the ways that an invention can be claimed before the provisional patent application is filed. That requires expertise: it takes time and time is money. So, how can the cost of preparing a provisional patent application be minimized?

The first way to minimize the cost of a provisional application is to involve a patent practitioner early in the process. Even if you are capable of preparing the first draft of the application, you might as well know the "rules of the game" in your specific situation, up front. The second way is to prepare the provisional application on a word processor using the format suggested by the USPTO for preparation of both provisional and regular applications. Not only does that approach facilitate conversion of the provisional into the regular application at minimal cost, it also minimizes cost of prosecution of the regular application because the Examiner can easily find the information he will be looking for. The results of the novelty search (which was expertly guided by the disclosure in the provisional) can be added to the (properly placed) Background of the Invention section of the regular application in a way that subtly argues for the patentability of the invention. Interestingly, a provisional application can contain disclosures for an unlimited number of inventions, so you can get lots of mileage out of your $75 filing fee. Also, the term of your regular application is 20 years from its filing date and not 20 years from the provisional filing date, if you are careful.

You will hear some patent practitioners argue against following the provisional/regular route. You can see why. It is really easy to make the mistake of providing inadequate disclosure, especially if the practitioner has a high billing rate and is working "under the gun" of an inadequate budget. Moreover, inventors can be lulled into forgetting that not only must a regular U.S. application be filed before the 12 month period is over, but any required international or foreign filings must occur during that period, too. [Of course, filing an international application under the Patent Cooperation Treaty (PCT) that "designates" the U.S. has the same effect as filing a regular U.S. application.]

There is also some advantage to filing a regular application early to gain the benefit of the adversarial examination process--those nitpicking Office actions can be helpful "wake up calls" to the limitations of your invention or disclosure. Only an issued patent can be enforced, and following the provisional route delays issue. So if someone else is making a bundle off your invention, by all means go straight to a regular application. (As of May 29, 2000, a current disadvantage of provisional applications will be eliminated. After that day, the disclosure in a provisional application can be relied upon in a "chain" of continuing regular patent applications that are filed after the provisional application goes abandoned 12 months and one day after it was filed.)

The bottom line is that careful thought must precede the filing of a provisional patent application if you are to avoid the Catch 22's mentioned above. Having a patent professional involved in thinking though possible claiming opportunities, approaches and commonalities can be well worth the money invested. Let me know if I can help with that task.


Another American "gold rush" is occurring as dot-com companies, corporate giants and independent inventors stake their claims to intellectual property in the e-commerce field. The USPTO has experienced a doubling in the filings of business method patent applications in the last year. E-commerce revenue is expected to reach $3 trillion by the year 2003 and many innovative organizations want to secure a Government-sanctioned monopoly on a share of that business. Some recently-issued e-commerce U.S. patents (ordered by issue date from newest to oldest) that are interesting (and illustrative of what is patentable these days), are the following:

6,029,141--"Internet-Based Customer Referral System"  Owned by Amazon.com, this patent covers the company's affiliate program that lets other websites send the bookseller customers in exchange for a commission.

6,006,035--"Method and System for Custom Computer Software Installation"  Owned by Network Associates, Inc., this patent discloses a method for increasing manageability of computer software across an enterprise network. The patented method has been a component of all products in the award-winning McAfee Total Virus Defense suite since 1997.

5,966,699--"System and Method for Conducting Loan Auction over Computer Networks"  Owned by an independent inventor, this patent covers a system for conducting an electronic loan auction over the Internet that provides for lenders to bid for the right to loan money to a borrower with an approved loan application.

5,960,411--"Method and System for Placing a Purchase Order via a Communications Network"  Owned by Amazon.com, this patent discloses the "One-Click" purchasing feature used on the company's website that allows purchasers to buy an item with just one click of a mouse. Amazon.com has won a temporary restraining order that prevents one of its biggest competitors, Barnes and Noble's bn.com division, from using its own single- click service.

5,948,061--"Method of Delivery, Targeting and Measuring Advertising over the Internet"  Owned by DoubleClick Inc., a leading Internet advertising firm, this patent covers the method the company uses for rotating and targeting banner ads on websites and tracking readership of Internet advertising. DoubleClick Inc has sued L90 Inc., another Internet advertising company that was about to go public, for allegedly infringing its patented Internet advertising technique.

5,924,090--"Method and Apparatus for Searching a Database of Records"  Owned by Northern Light Technology LLC and used in the Northern Light search engine, this patent discloses a specific method and apparatus for searching a database of records that organizes results of a search into a set of most relevant categories.

5,915,209--"Bond-Trading System"  Owned by an independent inventor, this patent covers a municipal bond trading system having the ability to conduct a private electronic auction of wanted bonds between a central "brokers' broker" and multiple prospective remote bidders and to maintain a reference database of accurate bond lot descriptions and identifications, notably, CUSIP numbers.

5,794,219--"Method of Conducting an On-line Auction with Bid Pooling"  Owned by Health Hero Network, Inc, this patent describes a method of conducting an on-line auction that permits individual bidders to pool bids during a bidding session.

5,794,210--"Attention Brokerage"  Owned by CyberGold, Inc., this patent is directed to an "attention brokerage" scheme that provides for immediate payment to computer users in exchange for viewing an on-line advertisement.

5,794,207--"Method and Apparatus for a Cryptographically Assisted Commercial Network System Designed to Facilitate Buyer-Driven Conditional Purchase Offers"  Owned by a partnership and used by Priceline.com, this patent covers an auction method for the sale of a product that allows consumers to name the price that they are willing to pay for a product (e.g., a ticket for airline-specified flights which gives travelers a reduced rate in return for flight-time flexibility). Priceline.com has sued to stop Microsoft from using its "Hotel Price Matcher" service that directly competes with Priceline's service.

5,774,873--"Electronic On-line Motor Vehicle Auction and Information System"  Owned by ADT Automotive, Inc., this patent covers an electronic auction and motor vehicle auction information system that allows remote users to interactively participate in motor vehicle auction sales using a personal computer.

5,774,870--"Fully Integrated, On-line Interactive Frequency and Award Redemption Program"  Owned by Netcentives, Inc., this patent covers a "ClickReward Scheme" in which on-line shoppers can earn "frequent-buyer" points by making purchases from merchants affiliated with Netcentive's award program.

5,724,424--"Digital Active Advertising"  Owned by Open Market, Inc., this patent covers a complete system for the purchasing of goods or information over a computer network that provides for secure, real-time payments completed by the use of credit or debit cards for Internet transactions.

5,715,402--"Method and System for Matching Sellers and Buyers of Spot Metals"  Owed by Spot Metals Online, this patent covers a system for managing steel inventories in order to reduce the time and expense associated with selling prime and secondary steel that is no longer needed for the original intended application.

5,715,399--"Secure Method and System for Communicating a List of Credit Card Numbers over a Non-Secure Network"  Owned by Amazon.com, this patent covers a method and system for securely indicating to a customer one or more credit card numbers that a merchant has on file for the customer when communicating with the customer over a non-secure network. The invention is an important part of the company's business model.

5,715,314--"Network Sales System"  Owned by Open Market, Inc., this patent covers the use of "electronic shopping carts" which on- line customers can use to collect items for purchase during an on- line shopping trip.

5,708,780--"Internet Server Access Control and Monitoring Systems"  Owned by Open Market, Inc., this patent covers a process for analyzing how users browse through content on a website.

It is truly amazing how the Internet and the availability of the U.S. patent system is sparking innovation in the U.S. Contact me if you have a great idea and want a "piece of the action."

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
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