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Mind The Gap – U.S. Provisional Applications

March 20, 2017

By Stephen Beney and Nicholas Aitken

MPHJ Tech v. Ricoh is a 2017 decision of the U.S. Federal circuit, which should caution patent applicants and agents that differences between a provisional and regular filing can have profound effects on claim construction. 

MPHJ Tech is the owner of U.S. Patent No. 8,488,173 (the US’173 patent) which claims a system that scans and “seamlessly transmits” (e.g. emails) a document after the press of a “Go button”.  MPHJ Tech had sent out demand letters to over 10,000 businesses demanding upwards of $1,000 per employee for infringement of their patent. In response, Ricoh, Xerox, and Lexmark, who manufactured the allegedly infringing printers used by the accused companies, filed a request with the USPTO for inter partes review. The Patent Trial and Appeal Board (PTAB) ultimately ruled that the challenged claims were both anticipated and obvious.

This case is an appeal of the PTAB decision. At court, MPHJ Tech argued that the claimed ‘seamless’ scan-and-send operation necessarily implied a ‘one-step operation without human intervention’, contrary to the PTAB claim construction which allowed the operation to be done in multiple steps as in the prior art. In support, MPHJ Tech cited a passage from an earlier filed provisional application that allegedly limited the scope of the invention to a one-step copying and sending process. The court affirmed that “a provisional application can contribute to understanding of the claims”. However, in this case, the court found that the removal (i.e. omission) of the cited statements from the US’173 patent and addition of ‘an optional single step operation’ would lead a skilled person to conclude that a single-step operation is optional. Thus, the claims were broadened due to differences between the earlier provisional and the US’173 patent to include multi-step operations as in the prior art. Consequently, the court affirmed the PTAB claim construction and invalidity decision.

MPHJ Tech v. Ricoh demonstrates the importance of filing quality provisional applications, drafted to the standard of a regular application. Any differences made in preparing a later filed regular application should be carefully considered for their potential impact on claim construction. In this case, the changes made broadened the claims in a way that led to their invalidity for anticipation and obviousness by the prior art. However, in other circumstances, broader claims may beneficially allow a patent owner to capture a competitor’s product. 

In Canada, claim construction is limited to the four corners of the application, and an application cannot incorporate an earlier filed priority document by reference. Still, a quality priority document, whether provisional or regular, remains critical to ensuring that the claims of the Canadian application are sufficiently supported to benefit from the priority date as their claim date. Unsupported claims will have the Canadian filing date as their claim date, and will need to overcome any prior art that arises between the priority and filing dates. This can be particularly problematic for subject areas, such as consumer electronics, where technology develops rapidly.

Content shared on Bereskin & Parr’s website is for information purposes only. It should not be taken as legal or professional advice. To obtain such advice, please contact a Bereskin & Parr LLP professional. We will be pleased to help you.


Stephen Beney Stephen Beney
B.Sc. (Physics)
Managing Partner
905.817.6102  email Stephen Beney
Nicholas Aitken Nicholas Aitken
B.A.Sc. (Mech. Eng.)(Hons.), J.D.
416.957.1620  email Nicholas Aitken