Converting a Patent Application from a Provisional? Take Care to Convert Everything.

Written by Theresa Rakocy

Rakocy 4Non-practicing entities, or patent trolls, as they are colloquially known because they lurk waiting for an unsuspecting individual, bring a sense of anger, frustration, and foreboding to patent attorneys. A patent troll owns one or more patents with the intent to license the technology or product, but does not actually make or sell any product covered by the patent(s). Enter, MPHJ Technology Investments, LLC. For all intents and purposes, MPHJ is a patent troll. A Google search for this company turns up many lawsuits filed by MPHJ for infringement of its “scan-to-email” patent. The “scan-to-email” patent was the subject of a recent February 13, 2017 decision in the U.S. Court of Appeals for the Federal Circuit.

MPHJ’s patent U.S. No. 8,488,173 (the ‘173 patent) is entitled “Distributed Computer Architecture and Process for Document Management” and described a system and method that “extends the notion of copying from a process that involved paper going through a conventional copier device, to a process that involved paper being scanned from a device at one location and copied to a device at another location.” The patent described what it referred to as a “Virtual Copier” that allowed businesses to scan a document which is replicated by the Virtual Copier seamlessly to other devices or web-based applications. MPHJ argued that the patent used a one-step operation without the need for human interaction between steps.

During an Inter Partes Review before the Patent Trial and Appeal Board (PTAB), the Board found claims 1-8 anticipated by Xerox Network Systems Architecture General Information Manual, dated April 1985, Xerox 150 Graphic Input Station Operator and Reference Manual dated January 1985, U.S. Patent 5,515,126 (Harkins) and/or obvious in view of the combination of Harkins and U.S. Patent 5,818,603 (Motoyama). On appeal, MPHJ argued that claim 1 of the ‘173 patent claimed “seamless” transmission without human intervention and emphasized the “interfacing between at least one of said scanner, digital copier or other multifunction peripheral and email application software” of claim 4[1]. It was MPHJ’s assertion that, unlike the Xerox, Harkin, or Motoyama references, these features meant the operation from scanner to email destination occurred in a single step and it was irrelevant whether components existed between the scanner and application software. MPHJ argued that the PTAB misconstrued the claims as “including scanning and emailing, whether in separate steps or in a single step, with or without user intervention by human or by machine”[2] and further argued that the terms “interfacing” and “GO button”, referenced in the ‘173 patent, represent and define the single-step operation. MPHJ relied on its provisional application No. 60/108,798 (‘798 Provisional) to support this assertion. The ‘798 provisional states:

The IMAGinE Virtual Copier can copy paper from a physical device directly into a third-party software application in one step. Using other applications, such as Visioneer’s Paperport or Xerox’s Pagis, the user must first “import” or scan paper into the capture application and then drag or direct the output to another location. With the IMAGinE Virtual Copier, a single button (the Go button) directly copies paper from a scan-like device (either a copier with a scan attachment or a scanner) and places it within the third-party application.

The Court of Appeals held that while a provisional application is available to assist in claim construction, in this case, the ‘173 patent, which draws its priority from the provisional, did not include this single or one-step requirement. The court reasoned that the wording of the ‘173 patent expressly listed the one-step operation as optional and therefore not required. The omission, or more accurately, change from the provisional application with a one-step requirement to an optional one-step function in the patent suggests that this was an intended change and that the one-step function is now optional and not obligatory.[3]

So what does this mean for you? A provisional application is a patent application filed with the U.S. Patent Office, that is not examined, but allows the filer to establish an early effective filing date. It does not mature into a patent unless further action is taken by the filer.  The filer has 12-months from the date of filing the provisional application to file a non-provisional application. Provisional applications are useful in cases where a public disclosure of a product is planned but a decision, i.e. financial or business, whether to invest the time and money to pursue a non-provisional has not yet been made. A provisional application does not provide any indication of the patentability of a patent application, but can offer peace of mind of an earlier filing date for those in business. In the event that a decision to proceed with a non-provisional is made, all information should be disclosed in the non-provisional, even if it was previously disclosed in the provisional application. While seemingly obvious, as was shown in this case, a provisional application and the prosecution history can be referenced for understanding of claim construction, but disclosures made in a provisional application are not automatically carried forward. If it was important enough to include in the provisional application, it should be included in your non-provisional application.

[1] MPHJ Tech. Invs. v. Ricoh Ams. Corp., 2016-1243, *6 (Fed. Cir. Feb. 13, 2017).

[2] Id. at *8.

[3] Id. at *11.

Theresa is an attorney with Fay Sharpe LLP. If you have questions about the subject matter of this article or IP law in general, you may reach Theresa at or 216.363.9207.