Penumbra v. RapidPulse Inc.
The USPTO Director’s designation of the decision in Penumbra v. RapidPulse Inc., IPR2021-01466, as precedential marks a significant shift in patent law, especially regarding the written description requirement in provisional patent applications under post-AIA standards. The America Invents Act (AIA), enacted in 2011, introduced key changes to the U.S. patent system, including regulations related to provisional applications. This decision clarifies the level of support needed in provisional applications to secure priority dates for patent inventions.
Provisional Disclosure
The core issue in the Penumbra case was whether the provisional application provided adequate support for the specific claims at issue. Under the post-AIA standards, the PTAB found that the provisional application did not adequately support the claims, affecting the patent’s priority date. This stands in contrast to the pre-AIA era, where the standard for written description, as exemplified in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), demanded a more explicit textual correspondence.
This decision signals a more flexible approach in the post-AIA era, focusing on whether the provisional disclosure indicates that the inventor had possession of the claimed invention rather than demanding a literal match of text. By rendering the Penumbra decision precedential, the Director has clarified the threshold for the written description in provisional applications post-AIA. This is a vital guideline for anyone drafting provisional patent applications, emphasizing the importance of clearly demonstrating possession of the claimed invention in the disclosure.
I am Michael Jones, the managing member at Jones Intellectual Property, focusing on all aspects of intellectual property, including patent, trademark, and copyright law. If you need guidance on how to navigate these changes in patent priority standards or any other IP-related matters, feel free to reach out to me at mjones@jonesipl.com.
