Absolute Novelty, First-to-File, and Foreign Bias

Patent.Law068The comments to my recent post on the First-to-File legislation raised several important issues that need some unpacking. 

Separating First-to-File from Absolute Novelty: There is a tendency to conflate a first-to-file system with a system requiring absolute novelty.  At the surface, these two systems may appear linked — Both rules shift the legal inquiry from the date of invention to the date of application filing.  This natural linkage has been reflected in the various patent laws: first-to-file countries generally also require absolute novelty, while the US (the first-to-invent country) allows a grace period. 

Despite their usual link, the two policies are separable. We could implement a first-to-file system that conclusively determines competing priority claims by looking only to effective filing dates but, at the same time, allow a one-year grace period when judging novelty and nonobviousness.  From my experience, the concerns of most patent applicants are more focused on the problem of novelty rather than rare interference issues.

As Mark Lemley has noted the current legislation already does this in two ways: (1) granting a grace period for inventor-originated disclosures; and (2) providing that the first-to-file system will only be implemented after the rest of the world adopts the grace period (in House bill only).

Patent.Law067When you try to help, you actually harm: One of our European readers commented that the American grace period is essentially a subsidy to the rest of the world.  According to the story, the grace period lulls American inventors into disclosing prior to filing for protection.  Those inventors can still pursue US patent applications, but will be unable to obtain patents elsewhere. The quote: “Thank goodness USA perseveres with the grace period. Otherwise ROW really would be dominated by US IPR.”

Rule 131 Declarations: How weak does your patent become after filing a Rule 131 declaration? If you received an office action rejection and had solid arguments of both (1) your prior invention and (2) nonobviousness.  Would you rather (1) file a Rule 131 declaration and avoid characterizing the reference and your invention; (2) explain why the claimed invention is not obvious even in light of the asserted art; or (3) both.

34 thoughts on “Absolute Novelty, First-to-File, and Foreign Bias

  1. “It’s rare that you’ve got a major breakthrough that wasn’t developed by multiple people at about the same time,” said Mark Lemley, professor of intellectual property at Stanford Law School.

  2. Oh, yes, Max I did forget the old CIP priority trap. Plenty of big American corporations fall in that one.

  3. Herr MaxDrei,

    With all due respect, you’ve got one thing going for you big time—no one posting here is as incorrigible as are you (I mean that in the most strenuous way it may be taken ;-).

    And you had been doing so well there for a while – - -

  4. Rodrigo, it’s not just individuals. Don’t you also find that American corporate applicants routinely claim Paris Convention priority from an application that is not the “first”, such as a continuation, continuing application or C-I-P? Then, when in Europe they face an “intermediate document” they are dismayed to find that their priority declaration is not useful, and their claims lack novelty. Here is another example where US corporations lose patent rights outside the USA because domestic US law is more forgiving to inventors and their attorneys than the international standard. Dennis mentioned “subsidy”. Giving home industry a “subsidy” (it’s called having a “strong” patents system isn’t it) is a two-edged sword. It seems to help but it also deprives home industry of the skills to work to the otherwise universal ground rules, on the level playing field away from home. All fine for an independent inventor depending exclusively on the domestic US market for his pay-off. Not so fine when corporate profits depend on market share beyond the frontiers of “the homeland”.

  5. “Show me the large corporation that has lost important patent rights abroad because it 102(a)ed itself.”

    Not a large corporation, but two American brothers lost at least their German patent because of a paper they had submitted to the Western Society of Engineers before their filing. Their names were Wilbur and Orville.

    As a patent examiner at the EPO, I routinely searched the papers published by the inventors. I found relevant prior art quite a few times that way, and not only with small applicants.

  6. Long Live Klayton said:

    “… but it does potentially leave a huge chink in one’s patent.”

    I thought chinks were notoriously small

    … by which, of course, I mean only that the expression “a chink in one’s armor” means a small vulnerability in an otherwise robust defensive apparatus…

  7. Joyless, I’ll answer that one: it’s not infringement, but don’t let that stop you from suing me and stomping all over one of the constitutional rights that you claim to hold so dear. I’d wager that Niro or Ward would be happy to represent you on a contingency basis.

  8. Question: If
    “Just an ordinary inventor(TM)” were a registered trademark, would
    “Just an ordinary jingoist(TM)” be an infringement?

    Anybody?, anybody?, Bueller?

  9. Right on, JAOI . We all know it’s impossible that someone who’s not a red-blooded yank has a good idea. They should all shut up and get off this board.

    BTW, is it true that JAOI is pronounced “joyless”?

  10. Dear Alun Palmer,

    Please forgive me if I seem dense by asking:

    Why should America compromise?
    What does that buy Americans?
    Where is the quid pro quo?

    Historically, America has led, not followed.
    America was founded by Leaders.
    Would our Founding Fathers’ advocate acting like Lemmings?

  11. Not many realise this, but Europe does have a six month grace period, albeit only for international exhibitions that meet the (very narrow, so as to be nearly useless) definition in the treaty on international exhibitions. Perhaps if European laws were revised to make the existing grace period actually work that might be enough? The Japanese have a six month grace period limited to disclosure by the inventor, so perhaps if the EPO and EU national laws adopted the Japanese law that might do it?

    Or does it have to be a year? But hardly anyone has a one year grace period, so maybe the US should cut it to six months? That is something I could see as a reasonable compromise that most countries could live with, i.e. everyone give six months grace for disclosure by the inventor only, as per Japan, but, as usual, I fear it is the US that would baulk at such a suggestion.

    For the record, I am a US patent agent, but an expatriate Brit.

  12. “One of our European readers commented that the American grace period is essentially a subsidy to the rest of the world…”

    Completely silly. Right now Americans have 4 choices, 1) publish to cut down the trees, 2) file first then publish, 3) publish first then file when circumstance changes, 4) file and keep it secret. The senate bill does away quite a bit of Americans’ advantage. US ought be careful when Europeans are gleefully exhorting the “reform”!

  13. GP, you obviously haven’t met Kayton or taken any of his courses. He did prep/proc for many years before starting to teach, and he’s probably helped more currently practicing members of the patent bar pass the patent bar exam (including yours truly) than anyone else. And in my experience, his company puts on CLE courses that are far above those of the competition. So I for one would appreciate it if you would refrain from disparaging him, particularly on the basis of how someone one else characterized what he said.

    I don’t know that Kayton has said verbatim one should file for cert before filing a 131 declaration, but the sentiment isn’t difficult to understand: as other posters have noted, a 131 declaration leaves a cloud of uncertainty over the patent, since you won’t know until you’re well into litigation whether the patentee is likely to prevail as the first inventor. This isn’t to say that sometimes it may be the most cost-efficient way to go during prosecution, but it does potentially leave a huge chink in one’s patent.

  14. FTF under this proposed plan does not extinguish the right of parties to claim stolen inventions. The only way to do this is by 60 days advanced notice of intention to file. As the deadline passes so does the right to claim stolen invention. No individules unable to produce the filed intellectual materials found in the notice filers application will be considered as litigants for patent rights.public information applications will list catigory of invention name place of invention and belief of applicant as to weather the invention is devulged or undivulged.FTF would certantly be a crooked plan if all individuals have an epual right to be named the inventor since only one is the actual conciever of the intellectual materials and the others are developer theftors.

  15. David French writes:

    For those who are interested, the meaning of “available to public” under Canadian law is set forth in the following decision:

    Canadian Federal Court of Appeal – Canwell Enviro-Industries Ltd. v. Baker Petrolite Corp. (2002)
    link to decisions.fct-cf.gc.ca\(1\)a

    I predict that some of these provisions will prove troubling.

  16. David French:

    Swearing back of a reference using a section 131 declaration is an instance where the present patent law does not fully resolve entitlement to a patent. It remains to be settled as to who is the first inventor and whether there has been a public use or an on-sale bar. These issues are left to litigation.

    My point is that we should not pretend that patent examination has been, or has to be, complete.

  17. If it’s important, explain why it’s not obvious almost every single time. Ultimately it’s up to the client paying the bills in private practice.

    I work in-house and for an invention I personally believe is really trivial and making an obviousness rejection would be difficult, I might think of doing a 131.

  18. To Anon, and the Inventor A, party B situation, four questions.

    What if A invents and discloses to X, thinking that X is not going to breathe a word to anybody. Next, B publishes an enabling disclosure of something within A’s claim; let’s call the publn D1. Next, A files at the PTO (before the end of the statutory grace period) and then the PTO cites D1 as a novelty destroyer. Question 1: has D1 really taken away novelty? Question 2: would it make any difference to the answer to Q1 if it could be proved that B had “derived” his knowledge from A? Question 3: how often will such disputes about “derived” occur? Question 4: when such a dispute happens, will it not be far more difficult to resolve than a little old interference (as somebody in an earlier thread has already worked out)?

  19. to examiner no 6 I need to correct your perception of where and how inventions are produced.Your entry states that hundreds or perhaps thousands of persons have the ability to create patented inventions. Major invention conceptions occur to only one person in that persons lifetime.Only Four high federals since 1790 have produced all major and minor I.P. conceptions since then except not exclusivley in discovery chemical compositions art design software instructions music combinations.These ideas are have been taken form us byevery dirty trick in the book including this badley in need of reform patent act.

  20. Under my new patent reform plan there is no deprivation hearing or second window reexaminations. intellectual materials are awarded to the applicant after an immediate check of master lists of inventions.The inventor note only one can create the original conception may add to this original material package until he feels it has attained the maximunm value that his sub invention conceptions are able to produce.After this auctioning would occur at pto meetings 1-5 years after original conception recording. Bidders could conduct there own R.D. or market study to determine fesibility and bid amounts of %of profits.This plan is nessary because anytime R+D occurs before recording intellectual materials happens then industrial spying and evesdroping steal the invention from the actual inventor. this provbision allowing shopping and devulgements causes desputes to evolve in almost all cases.

  21. “For most inventions, the inventor is one of perhaps 100s (or thousands) out of the billions in this world who has conceived of the same (or a close variant of) invention independently.”

    LOL, now tell us you’re a lawyer and that you’ve seen 1000′s of cases in your career. And in so doing blow all this “omfg patents promote early disclosure that could have taken year, decades, even CENTURIES to come up with otherwise!” nonsense out of the water.

  22. “As I understand it, under the proposed legislation, she would have to prove the other filers derived their inventions from her. They could legitimately say: ‘I saw her invention and that stimulated me to get my patent application on file.’”

    Based on older drafts of the bill that I have reviewed and based on Prof. Lemley’s comments as described in Dennis’s post, this is not how things would work.

    Any given inventor only benefits from a grace period for disclosures he/she made. If inventors A and B independently invent and A discloses, B is immediately barred from obtaining a patent, regardless of whether B’s work was in any way “derived” from A’s.

    I believe that the derivation provisions are mainly relevant to non-public disclosures that would not constitute prior art.

  23. Dennis, has this stuff on this thread and the earlier one ever been aired before? You see, FTF and GP don’t sit well together because everybody starts wittering on about “derivation” suits. Whatever are they (rhetorical)? They are more or less unknown in ROW FTF because WE DONT HAVE A GRACE PERIOD. Put FTF together with a GP and you have the explosive mixture that commentators on this blog are starting now to recognise and explore. There are some in Europe who innocently suppose (based on 100 years of domestic law in JP and DE) that a GP will sit with FTF. They haven’t learned yet what aggressive US lawyer litigators can do with that business opportunity. Woe, I say. Woe to all of us, in a FTF + GP world.

  24. In my view FTF does diminish the safety of the grace period. For most inventions, the inventor is one of perhaps 100s (or thousands) out of the billions in this world who has conceived of the same (or a close variant of) invention independently. If the inventor tries to test the market before filing her patent, relying on the grace period, she is vulnerable to one of these other legitimate inventors (and of course illegitimate thieves) seeing her marketing efforts and filing on their inventions ahead of her. As I understand it, under the proposed legislation, she would have to prove the other filers derived their inventions from her. They could legitimately say: “I saw her invention and that stimulated me to get my patent application on file.”

    I don’t think FTF would be an improvement over what we have now, but if it does become law, the simplest thing is to take away the grace period to eliminate the likely false hope that an inventor can market first (and address the ROW issue). In such a case, I’d like to see a serious government media campaign educating people that they now need to file first before disclosing (full page ads in PopSci, PopMech, etc.).

    While I’m dreaming, they should also start charging for provisional applications based on what they actually cost the Patent Office (maybe $10 for the first ten pages; a copyright registration form is more complex to examine than a provisional application and the constitution calls for promotion of the arts and the sciences).

    And for my third wish, how about a one month grace period for the patent attorney to be deemed to have diligently filed a patent application as a matter of law, so long as she files within one month of receiving full payment for the fee quoted to prepare and file the application. Otherwise, I foresee a nasty pile of malpractice lawsuits against attorneys who lost the race to the Patent Office (each case where the examiner’s cited art is filed after the first meeting with the client and before the application is filed).

  25. Michael R. Thomas:

    You are joking right?

    In a FTF world the fight becomes ones of derivation, and that requireds more litagion and discovery because the evidence will be held mostly by the one accused of derivation.

    In a FTI world, one’s proof lies mostly with evidence held by themselves.

  26. Absolute novelty is the only way to corectley determine inventorship. Disclosure to anyone creates disputes of inventorships and the formation of large packs of liars to steal inventions from the correct inventor.world wide open form televised intellectual materials registering correctley establishes whose original idea it was.Non allowance of disclosure or R+D before meetings coupled with inventor security and master lists of all catigorized inventions to date and updated immediatley bewfore meetings ensures correct crediting to the right inventor. World wide recognition of conceptions leads to proper issuance of worldwide patents after R+D rights awarding by auction at 1-5years after conception hearings.The need to act quickley on the new system is imperative to restore the flow of new inventions of all types as a three year black hole has formed due to the anti inventor provisions and circumstances of the present and proposed legislation.

  27. “According to Professor Kayton, appeal it all the way to the Supreme Court before using a 1.131 declaration.”

    Spoken like a true professor.

    I’ll be sure to tell all the clients that, based on the good professor’s opinion, I’ll be preparing writs of certiorari to SCOTUS for the cases we’ve dropped 50k into to have reviewed at the CAFC rather than simply file a dec at PTO stage.

  28. ““Thank goodness USA perseveres with the grace period. Otherwise ROW really would be dominated by US IPR.””

    Show me the large corporation that has lost important patent rights abroad because it 102(a)ed itself.

    Does not happen to big players.

    FTF all the way.

    No grace period, no nothing.

    I like absolute novelty.

    Simple, fair, effective.

  29. According to Professor Kayton, appeal it all the way to the Supreme Court before using a 1.131 declaration.

    In reality, if your client has an actual reduction to practice (and it embodied all of the claims), then I don’t see a problem with it. Without an actual reduction to practice, since diligence (including the attorney’s diligence!) becomes an issue, it should only be used as a last resort. A 1.131 in the file history relying on diligence, in my opinion, grossly devalues the patent.

  30. I would file the 1.131. As long as you can support it, I would be more inclined to do that versus characterize a reference.

    I am not sure why people think it is weak. In my experience, the PTO will not pass a lightly supported dec through.

    Of course in litiagation it becomes an issue, but so does everything else.

  31. Lemley and the House got it right. Level the playing field. Jump to FTF when the ROW adopts a grace period. Till then do no harm, stay as you are. Dennis, you characterize “interference issues” as “rare”. My hunch is that they are anything but “rare” in any corporate patent dept. An “interference issue” is analogous to a “54(3) issue” here in Europe, and they’re everywhere. And so they should be, in a healthy, competitive, innovative society. But they’re easily and quickly resolved under the EPC. The number of interferences declared is a few percent of the huge number of potential interferences. The corporations resolve the issues in ways other than formal interference proceedings at the PTO.

  32. First to Invent, provides more than a priority system. As pointed out in earler posts, it is a system of equity. FTF is a bright line test, and like all bright line tests, will produce inequities. Under FTF each competing inventor has a fighting chance to win the patent right, and in most cases, the parties settle and split the rights.

    By the way, the FTI, as currently implemented is a huge advantage to non-US inventors. They can blow a priority date and still get a patent in the US by proving prior invention using the [non] priority filing as a constructive reduction to practice. ROW should be very much against the reform.

    Regarding the comment about loss of non-US rights by US inventors due to their disclosures, the ability to get a US patent often times is sufficient becuase of the size of the US market, and due to the fact that all of the imports are subject to the US patent. What this proposed reform does is to diminish our US inventor’s ability to get a patent in the one country that matters most to them.

    Regarding 131 swear behinds, I say it depends on the closeness of the dates. That is to say, if one can swear behind by a sufficiently long period of time, then it is easier, and perhaps better to simply swear behind.

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