30Apr 2019

Silvia Salvadori - Provisional Patent Application Lessons: Adequate Specificity Provisional applications are generally used to provide a valid priority date for an invention claimed in a subsequent non-provisional application. However, even a well drafted provisional application may fail to describe the claimed invention with “adequate specificity.”

In a recent case, Purdue Pharma L.P. v. Iancu, the main claim was directed to a controlled release oral solid dosage form of oxycodone. The patent was challenged and found invalid as obvious. The plaintiff appealed.

The patent at issue derived from an application which claimed priority to a U.S. provisional application filed 13 years earlier.

The Federal Circuit, inter alia, analyzed whether the specification of the provisional application satisfied the written description and enablement requirements of 35 U.S.C. § 112 — with regard to the subject matter claimed in the patent.

The Court considered a paragraph from the provisional application in which the applicant had described a “laundry list” of possible gelling agents, without specifying any preference for how many and which gelling agents to combine.

The court concluded that the list did not provide enough specificity to justify written description support for the claimed subject matter and thus for the claim of priority. Accordingly, since the claims were not entitled to the filing date of the provisional application, they were invalidated on intervening prior art.

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD