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ARTICLE · 10 FEBRUARY 2025

Avoiding The Provisional Application Filing Pitfall Of Narrowed Claim Interpretation

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
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Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent...

United StatesIntellectual Property
Christina Sperry
Christina Sperry
Neil Supnekar
Neil Supnekar
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Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent and Trademark Office (USPTO) filing requirements, and providing priority dates that do not affect patent term or count toward the § 1.17(w)(1) fee for filing continuation applications. However, a recent court decision highlights a potential pitfall of filing a provisional application: restricted claim interpretation for claims of a patent claiming priority to a provisional application. In DDR Holdings, LLC v. Priceline.com LLC(Appeal Nos. 2023-1176, 2023-1177) (Fed. Cir. Dec. 9, 2024), the Federal Circuit held that when the description of a claim element in a provisional application is narrowed in a subsequent nonprovisional application filing, the claim element should be interpreted as recited in the nonprovisional filing. This article explores how patent applicants may avoid

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