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ARTICLE · 29 MARCH 2017

Mind The Gap – U.S. Provisional Applications

Smart & Biggar
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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...

CanadaIntellectual Property
Stephen Beney
Stephen Beney
Nicholas Aitken
Nicholas Aitken
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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.

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