The Real Lessons of Pfaff v. Wells Electronics:
File Early, File Often, File Provisional
It is still winter in Wisconsin well into March and April, and each member of our team is shivering and stamping snow off their feet as we huddle in the crowded cement blockhouse on the outskirts of Madison. I'm supposed to be leading this motley group, and I'm only in my second year of Law School. For a young Patent professional, this is to say the least, an unusual assignment.
Our expert witness, a telecommunications expert, huddles over an equipment rack, aided by his two bemused sons. What has Dad gotten himself into now? The object of our attention is a breadboarded prototype we have put together from schematics provided during the Discovery phase of our Patent Litigation. The schematics are dated from a time which predates our alleged Offer for Sale. If we can prove the device worked as of that date, we might have a good argument for invalidity under 35 U.S.C. §102(b).
I look over the rest of our group - two video technicians from a production shop on the outskirts of Baltimore, wishing they were home. They are surrounded by boxes of commercial Beta equipment to videotape our demonstration. They look bored, but are not complaining about this easy and profitable work.
Our breadboard is hooked up, and we videotape a quick demonstration in the blockhouse - the system works there, at least. We do two more takes using different signals and lighting and then throw all of our equipment into a series of inexpensive rental cars and tear across icy Wisconsin back roads to tape the rest of our demonstration.
At a remote location, we setup and start the whole procedure again. The breadboard circuit works, and we get two more takes "in the can". Time to go home.
Many hours and tens of thousands of dollars later, we have produced a videodisc for trial demonstrating that the circuit designed by the inventor, as of the date of alleged sale, was operative at that time. Fortunately for us, our opponent delayed filing their application by almost a year - enough time to possibly invalidate their patent.
Before Pfaff v. Wells Electronics, __ U.S. _____ (1998), such extreme efforts were the norm if one wanted to overturn a Patent on the grounds of "offer for sale" under 35 U.S.C. §102(b). Defendants who cannot afford expert witnesses, breadboarded prototypes, and camera crews could do little to invalidate a patent, even where it is clearly apparent that applicant had filed too late.
Fortunately for Defendants, the Supreme Court has changed all of that. Simply stated, the test of whether an invention has been reduced to practice is now based upon whether the inventor had produced sufficient materials to file for a Patent Id at 12. The threshold for "offer for sale" has been considerably reduced.
Given the ample schematics we had in the above example, it is readily apparent that such extreme measures as breadboarding and testing would not have been required to invalidate a Patent under "offer for sale" under 35 U.S.C. §102(b) under the Pfaff test. The schematics alone might have been enough to bury our opponent.
Undoubtedly, the Pfaff decision will generate controversy for months to come. Many in the Patent community are vehement opposed to the Pfaff test, including the AIPLA. Unfortunately, as a Supreme Court decision, it is unlikely to be overturned soon. Fortunately for Patentees, there are easy ways to protect your rights in the post-Pfaff era.
The solution is to file early and file often This simple and sound advice is often lost on Patentees, who let immediate concerns (such as budgets, product introductions, and the like) delay patenting of inventions. A delay of even a day or two can be deadly.
And unfortunately, delays in filing Patent applications occur far too often in our business.
Most Patent firms (if that are any good) have a substantial backlog of cases and amendments to file. As a Patent practitioner, I cannot push aside an application for one client in order to meet the needs of another. It is not unusual or unheard of for a typical Patent firm to take several weeks to even months to complete a Patent Application to the point where it is ready for filing.
Unfortunately, in some Corporations, invention disclosures can sit for weeks or even months before an attorney is contacted to draft the application. In some instances, well-meaning in-house counsel intend to draft the application themselves and call outside counsel only as a last resort. In other situations, it may take weeks or months before in-house Patent Committees approve funds for filing.
Such delays can be deadly, as the Pfaff case illustrates. Even a delay of a week or two, or even a single day can compromise an application. In the semiconductor and computer arts, it is not untypical to see co-pending applications directed toward the same or nearly the same invention, filed within days of one another.
Fortunately, we now have a powerful weapon (not available to Mr. Pfaff) in the form of Provisional Patent Applications. Unfortunately, many attorneys are afraid of using Provisional Patent Applications - due mostly to folklore rather than sound reasoning.
Shortly after enactment of the GATT implementation legislation (providing Provisional protection in the U.S.), visiting EP "eurocrats" made some very unfortunate comments regarding provisional applications. Provisionals, they said, would not likely be granted priority in the EP, as without a claim, there is no "subject matter" to grant priority to.
These comments were, of course, unofficial and flat-out wrong. Provisional Application practice, of course, is a European, not U.S. invention. Although the EP and UK have since issued official statements disclaiming these off-the-cuff remarks, the lore that Provisionals are worthless continues.
Similarly, many practitioners take the view that a hastily prepared provisional application is a poor substitute for a properly filed "formal" U.S. Patent Application. A Provisional Application which does not provide sufficient support under 35 U.S.C. §112, first paragraph (for both enablement and best mode) may not be sufficient to support a later formal application.
In that regard, I agree. However, the Provisional Application should not be viewed as a substitute for formal filing - rather, it is an insurance policy which can be used to back up your formal application.
The Pfaff case, in my opinion, gives additional weight to provisionals as priority documents. In Pfaff, Justice Stevens wrote:
"Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention." (Id., at 12)
Thus, the court provides a powerful and simple test for enablement, and a Catch-22 for your would-be opponent. Under Pfaff, if a litigation opponent alleges that your Provisional Application is not enabling, such an argument could be construed as an admission that the invention was not "reduced to practice" as of that filing date (and thus any alleged offer for sale would not invalidate the Patent).
If the invention is alleged as being "reduced to practice" by virtue of the inventor providing materials to a Patent Attorney (to prepare the provisional) then it would be difficult for an opponent to argue, in the same breath, that the Provisional springing from those disclosure materials, is non-enabling.
In short, Pfaff provides the unexpected benefit of giving Provisionals a bit of respectability - and a much needed shot in the arm.
There are, of course, law firms which already have embraced Provisional practice. I am aware of at least one firm which, as a policy, immediately files a provisional from invention disclosure materials provided by an inventor. Under the enablement test provided by Pfaff, such a practice makes sense. Perhaps, after Pfaff, to not file such a provisional (and afford your client the earliest possible filing date) could be considered malpractice per se.
