USPTO Director's Precedential Decision in Penumbra Case: A Key Shift in Patent Priority Standards

The USPTO Director's designation of the decision in Penumbra v. RapidPulse Inc., IPR2021-01466, as precedential marks a notable shift in patent law, particularly for the written description requirement in provisional patent applications under post-AIA standards. This decision emphasizes the support needed in provisional patent applications to claim priority dates.

The Penumbra case centered on whether the provisional application adequately supported specific claims at issue. Applying post-AIA standards, the PTAB held that the provisional did not sufficiently support the claims, impacting the patent's priority date. This contrasts with the pre-AIA era, where the standard for written description, as seen in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), required a more explicit textual correspondence.

The decision in Penumbra reflects a more flexible post-AIA approach, focusing on whether the provisional disclosure conveys that the inventor had possession of the claimed invention, rather than requiring a literal match of text.  By making Penumbra precedential, the Director has clarified the threshold for written description in provisional applications post-AIA. It is a crucial guide for those drafting provisional patent applications, underlining the need to demonstrate possession of the claimed invention in the disclosure.

Michael Jones is the managing member at Jones Intellectual Property. His practice specializes in all aspects of intellectual property, including patent, trademark, and copyright law. He can be reached at mjones@jonesipl.com.

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