The Inventor Who Signed a Nondisclosure Agreement After Filing
On March 3, 2023, inventor Dana filed a provisional application describing a novel chromatography column, including a claim-style paragraph and one figure. On August 12, 2023, Dana presented the column at a trade show and sold two units. On January 29, 2024, Dana filed a nonprovisional application claiming priority to the provisional. The nonprovisional adds a new dependent claim reciting a frit porosity range that was disclosed only in the provisional's figure legend, not in its written description. A competitor's product, publicly sold starting June 2023, discloses everything in the nonprovisional except the frit porosity range. Dana asks you whether the provisional supports the new claim and whether the June 2023 sale is prior art. Dana also wants to add a claim to a second embodiment conceived in May 2023 but never disclosed in the provisional.
1. Does the provisional application provide written description support under 35 U.S.C. 112(a) for the new dependent claim reciting the frit porosity range?
Read the worked answer
The test is whether the provisional's disclosure reasonably conveys to a skilled artisan that the inventor possessed the claimed porosity range (Ariad v. Eli Lilly; MPEP 2163). A range appearing only in a figure legend is weak but not automatically fatal: if the legend states the range and the figure depicts the frit, a skilled artisan may find possession. However, if the legend merely labels a part without expressing the range as a feature of the invention, support likely fails.
Key point: the provisional need not comply with the claim format of 112, but it must satisfy 112(a) for the subject matter relied upon. Because the range is the only new limitation and the competitor discloses everything else, a failure of support means the new claim gets the January 2024 filing date, and the June 2023 sale becomes prior art under 102(a)(1). Advise Dana to check the legend's exact wording; if ambiguous, the safer course is to argue the range is inherent in the disclosed frit or delete the claim.
2. Is the June 2023 public sale by the competitor prior art against the nonprovisional, and does the answer change for the new claim?
Read the worked answer
For claims fully supported by the provisional, the effective filing date is March 3, 2023, so the June 2023 sale is not prior art (it postdates the effective filing date). For the new frit-porosity claim, if support fails, the effective filing date is January 29, 2024, and the June 2023 sale is prior art under 102(a)(1) (public use/on sale/sale in ordinary course of business).
Note the AIA 102(b)(1) grace period does not help here: the June sale is by a third party, not the inventor, so the inventor's own August 2023 sale is irrelevant to that disclosure. Also confirm the competitor's sale was public and the product embodies the claimed subject matter (MPEP 2152.02). The practical lesson: provisional support determines which side of the prior-art line each claim falls on.
3. Can Dana add a claim to the May 2023 embodiment to the nonprovisional?
Read the worked answer
No new matter may be added to a nonprovisional application (35 U.S.C. 132(a); MPEP 608.04). The May 2023 embodiment was never disclosed in the provisional, so it is not entitled to the provisional's filing date and cannot be inserted into the pending nonprovisional.
Options: (1) file a separate application (provisional or nonprovisional) for the May embodiment, accepting that its effective filing date is the new filing date - the August 2023 sale and June 2023 competitor sale may then be prior art; (2) if the May embodiment is an obvious variant of the disclosed embodiment, argue it is inherently or implicitly supported, but this is risky; (3) abandon the added claim. Advise Dana that conception alone creates no disclosure; reduction to a written description in a filed application is what matters.