In re Giacomini (Fed. Cir. 2009) (discussion of the briefs)
Giacomini is appealing the BPAI’s 102(e) rejection — arguing that the patent asserted as prior art does not actually qualify as prior art. Giacomini’s application claims priority back to November 2000. The asserted prior art patent issued in 2006, but was filed in December 2000. The prior art patent also claims priority to a provisional application filed in September 2000. The PTO claims that the 102(e) date of the patent is the filing date of the provisional — thus making it prior art over Giacomini.
When a patent is asserted under 102(e)(2), the patent’s filing date is considered the priority date. In the language of the statute, the PTO must consider whether the putative prior art patent was “granted on an application for patent … filed in the United States before the invention by the applicant for patent.” The provision makes clear that a patent claiming priority to an international application will be given the international application filing date if that application “designated the United states and was published . .. in the English Language.” Under US case law, when being considered as prior art, divisional and continuation patents are also given the filing dates of their parents as their 102(e) date. See In re Klesper (CCPA 1968)(“provided the disclosure was contained in substance in the earliest application”). However, patents claiming priority to a foreign filing under Section 119 are not given the foreign priority date.
The novel question here on appeal is how to interpreted the statute’s silence regarding provisional applications.
- Appeal Brief: cafc_appeal_brief_2009-1400_500-002us-2.pdf
- cafc_appeal_brief_2009-1400_500-002us-2.pdfPTO Opposition: Giacomini – Director’s Brief (Red Brief).pdf
- BPAI Decision: BPAI Decision in Giacomini
- Related Discussion: Patently-O Discussion of Ex Parte Yamaguchi (BPAI 2008)
23:50 – “provisional is published” – Radar.
Interesting (not that it is right or not) that the Government dances around this by stressing “publicly available” and NOT stepping to Radar’s challenge of actually saying that provisionals are published – even though several judges plainly state that such is indeed the case.
final Killer: 27:40 – “I will concede that”.
Ned,
I would be interested in hearing if your position changes at all upon listening to the oral arguments. While the emphasis was not on exactly the points we discussed in quite the same way we discussed them, clearly the judiciary said Milburn was effectively overruled and the judiciary would not agree with your positions posted here.
dang, I have a whole family of cases getting rejected by a provisional date right now. i was hoping this one might go better.
Fly: the 102(g) thing is still a problem. If you couldn’t swear behind 102(e), then you certainly couldn’t get behind 102(g). 102(g) inquiry just allows evidence of concealment or abandonment to defeat their priority. Those aren’t an issue once the (enabled, anticipatory) provisional is filed. I’m no 102(g) expert, but I thought the claims had to maybe be similar too?
Wow, the oral argument did not go well for Giacomini.
link to oralarguments.cafc.uscourts.gov
The 102(g) hypo could have been handled by saying that you still could have invented before the provisional (i.e., 102(g) can be sworn behind).
The “same effect as” language should have been argued more strenuously as referring only to priority. From the argument, it looked like Radar was willing to extend 102(e) dates to foreign priority! Yikes man.
Also, the USPTO did a rather poor job identifying when a provisional becomes 102(a)/(b) art after it publishes.
Ingenue,
I don’t fully understand your point.
>Doesn’t the fact that at least the Fed Cir has >already decided that 102(e) prior art, which >was unpublished at the time of filing of >another at issue application, can be used in an >obviousness rejection of that application, >despite the fact that a 103 analysis requires >that an invention be “obvious at the time of >filing” give us enough information about how >this will be decided?
Could you rephrase it please?
>Illogically, among other unfortunate reasons >better articulated by Ned and others, filing >dates of provisional applications will remain >102(e) prior art dates.
No federal court has ever addressed either issue:
(1) What is the effective reference date of a provisional application, or
(2) What is the effective reference date of a patent that claims the benefit of a provisional application.
The Patent Office in the MPEP and in In re Yamaguchi have addressed both issues, but the reasoning is terminally flawed and will probably be overturned. The Patent Office “wants” the law to be a certain way, but the CAFC is unlikely to decide the issues in their favor.
Doesn’t the fact that at least the Fed Cir has already decided that 102(e) prior art, which was unpublished at the time of filing of another at issue application, can be used in an obviousness rejection of that application, despite the fact that a 103 analysis requires that an invention be “obvious at the time of filing” give us enough information about how this will be decided? Illogically, among other unfortunate reasons better articulated by Ned and others, filing dates of provisional applications will remain 102(e) prior art dates.
Everyone,
We have finished the appellants’ reply brief. If you’d like a copy, I’d be happy to e-mail it to you. Just send me your e-mail.
Jason Paul DeMont
Attorney for Appellants Giacomini et al.
Agreed Ned – both on the interest and on Judge Rich – thanks for the discussion.
NAL, its been good talking with you on this. I must admit you never give up. My hat’s off to you.
Let’s see how this comes out. It will be interesting. Regretfully, we have no really old timers on the Fed. Cir. to help the new guys on fundamental issues. It would have been nice to have Judge Rich opine on this issue.
Ned,
I think that you are making a distinction without a difference – a fee is not material to content, and payment of the fee still lets your logic based on Milburn to apply to the “class” of provisional (or at least a certain subset of that class) in the substantial portion of wht is involved. Granted, an action is required, but that action has no effect on the dating of the application – we both know this. The reason I place stress on conversion, as for the argument to be won, I only need to show an instance – for your argument to hold,, you must show that it is entirely not possible. Your last sentence is but another red herring.
NAL, you place a lot of stress on conversion. But conversion is like entering the national stage — your have to file the oath, pay the fee, etc., and otherwise comply with the full requirements of US law in order for a patent to issue.
A provisional is inchoate. If it is converted, one has to do more than just pay a fee or request examination. You have to file an oath. That is required by statute. It is not a rule.
Once full compliance with all the requirements of the requirements of a US patent application, one has a filing that can issue. Until then, one does not.
Ned,
Your explanations are not satisfactory.
McKellin is distinguished as to a foreign filing. We are specifically NOT talking about foreign filing. Zletz is distinguished by content (“The district court, in the polypropylene interference, held that Zletz had not actually reduced to practice the subject matter of the lost count based on the early work.” and “The court held that even if plaintiff’s Rule 131 affidavits were sufficient to “swear back” of the references with respect to his early work, that did not go to the question of the sufficiency of plaintiff’s early work to show that he made a generic invention of the scope he attributed to claims 13 and 14.”) – Thus, Zletz fails to support your proposition.
“Ditto Provisionals” does not work PRECISELY because provisionals CAN issue as patents as filed. There is (or should be) no dispute on this. This is NOT to say that ALL provisionals can – that is a red herring and does not in any manner take away the FACT that provisionals can issue as patents as filed. The conversion process does NOT alter the original filing material – it cannot by law, else it violates the no new matter added doctrine.
As to the supposed rebuttal to my argument on 122(b), you have not rebutted the specific point that the exceptions of (b) are controlled in 122(a) and thus can be obviated by that section – this path can and does destroy your legal position. It matters not if I attempt the step you ask in asking for an early publication of a provisional. This direction is yet another red herring. As a provisional, of its own accord (before invoked or converted) gives no reason to call into play the 122(a) possible nullification of the exceptions in 122(b). I think you know this.
Once again, I am chagrined that you ignore my points and simply proclaim your view without seemingly understanding what I have said. Ignoring my points is not persuasive. Curiously – you have no comment on my post indicating where you agree with my stand.
Regarding my point about “claimed subject matter,” I believe it is prior art under Section 102(g) because McKellin was decided on the basis that the prevailing party won based on his foreign filing date. But what is consistently clear is that unclaimed disclosure is not prior art under Section 102(g). I think this is also the position of the USPTO today.
For Section 102(e) purposes, the disclosure of a patent application filed under Section 111(a) is prior art as of its filing date upon grant. This is consistent with Milburn and with the wording of the statute. LATER patent applications claiming Section 120 benefit to such a 111(a) case and which continue to disclose the subject matter are in essence the same patent application. This is why it is prior art when a patent later issues from such a continuation.
However, any patent application not filed under Section 111(a) cannot issue as a patent and is NOT eligible to be Section 102(e) prior art no matter what happens later.
The muddy thinking of the Office on this issue is caused by the assumption that the statute operates BACKWARDS, essentially converting that which was not eligible to be prior art into prior art. Its thinking in this regard has consistently been rejected every time they tried to get it adopted by the courts. McKellin is just one such example. Hilmer I and II are further examples. And, while never tested in court, its earlier position that the filing date of an International Application, filed in WIPO, for example, was the effective prior art date of a patent issuing on a Section 111(a) claiming the benefit of its filing date was (and still is) IMHO complete nonsense.
Ditto provisionals. They cannot issue as patents as filed. The cannot be Section 102(e) prior art.
NAL, you claim I have not rebutted your argument about 122(b). I did. But you may not be satisfied.
Again, I ask you to request early publication of a provisional application and see what happens.
NAL, a converted provisional must meet all the requirements of a Section 111(a) application. What if the provisional as filed has no claims and is in a foreign language? Can it be converted as is? Who has to file the Oath? The inventors of the appended claims or all the inventors named in the provisional?
Zeltz: link to cases.justia.com
“Disclosure” in a patent is not prior art under 102(g).
Cites: In re McKellin, 529 F.2d 1324, 188 USPQ 428 (CCPA 1976)
Deckler, link to openjurist.org, explains McKellin
“In re McKellin, 529 F.2d 1324, 188 USPQ 428 (CCPA 1976), the “sole issue” before the court was “whether claims may be rejected under 35 U.S.C. § 103 on the ground that a losing party to an interference is not entitled to claims which are asserted to be obvious variations of the invention defined in the counts, when section 102(g) and interference estoppel are not applicable.” Id. at 1325, 188 USPQ at 430.
“McKellin had lost an interference in which the winning party prevailed solely on the basis of a foreign priority date. The Board rejected McKellin’s remaining claims under section 103 as unpatentable in view of the counts of the interference or in view of the disclosure of the interfering patent. The court reversed, holding that because the interference was decided solely on the basis of the winning party’s right to the benefit of an earlier foreign filing date, there was no “statutory basis for finding that either the subject matter of the lost counts or the disclosure of the [interfering] patent is prior art, in the sense of 35 U.S.C. § 103, to [McKellin].” Id. at 1329, 188 USPQ at 434 (emphasis in original). In so holding, the court also rejected the Commissioner’s theory that the count was statutory prior art under 35 U.S.C. § 135(a) for purposes of section 103. Id. at 1327, 188 USPQ at 432.”
Ned,
Per your 7:21 post, “We also have a doctrine since Alexander Milburn that a US patent application that can and does issue as a patent is prior art for everything it discloses as of its filing date. This can be extended back to earlier applications, also filed in the United States, upon which a patent could have issued.”
Recognizing that conversion is a different animal, nonetheless, I think it throws a monkey wrench in your logic in attempting to use the Milburn doctrine, a doctrine that quite simply did not anticipate the provisional law.
With conversion, a provisional may be filed that includes everything a non-provisional requires (including claims – in fact to convert, what at elast must appear as to be claims are necessary). You stated that a converted application is no longer a provisional. I don’t buy this proposition, as it elevates form over substance. As the application itself not only HAS NOT changed – by law it CANNOT change (no new matter).
Therefore, in theory, since no provisional, on its face, is precluded from conversion (could is a broad and permissive term), the bounty of prior art date AND priority date extends to provisionals as a class.
Additionally, the premise of 122(b) dating relying on 122(a)’s ability to remove the exceptions has not been refuted.
I will have to check out In re Zeltz – Do you have an appropriate case cite?
In your 7:50 post, I believe you finally relinquish the point I have been trying to make:
“One last point, if the subject matter in an issued patent is both claimed and supported in the provisional, I believe the effected prior art date of that subject matter is the provisional’s filing date.”
Perhaps you can add some detail to the next comment of “But, this does not mean that the whole contents of the provisional is prior art. Neither does it mean that some unclaimed disclosure in the non provisional is prior art as of the date of filing of the provisional.” – Since the typical back claiming usually states “…in its entirety”, I struggle to see how anything can be selectively excluded. The document “is” or “isn’t”. If the point is that the material is not sufficient, then that is a different argument than the material does not merit the date.
“Is there a real difference between claiming “benefit” of an earlier application and claiming “priority” to an earlier application?”
No. The benefit you get from the benefit claim is the right to priority, if the requirements are met. Those who tell you it’s incorrect to “claim priority” are being needlessly pedantic.
Malcolm, I have no idea what lies you are speaking of. There is no requirement that a provisional be filed in English, that it be directed to one invention of one applicant, that it have any particular form.
Now, if a Japanese company filed all its monthly reports as a provisional application, naming all its 2000 engineers as inventors, what is wrong with that?
Now, it might be your contention that such a provisional is prior art in the US for all its contents as of the date of publication of any patent application claiming priority to it. But I can tell you that that is completely wrong for the reasons I have patiently tried to explain. But what is also true is that anyone actually trying to rely on such a provisional for an effective filing date would to prove a number of things
1) that the claimed subject matter was disclosed in a manner provided by Section 112, p.1; and
2) that at least one inventor named in the application was also named in the provisional.
Now we do not have any law on the subject yet, but I would suggest that any proof of Section 112, p.1 support, would include providing a translation of at least that portion of the provisional that described the claimed invention.
Now, where did I lie?
One last point, if the subject matter in an issued patent is both claimed and supported in the provisional, I believe the effected prior art date of that subject matter is the provisional’s filing date. But, this does not mean that the whole contents of the provisional is prior art. Neither does it mean that some unclaimed disclosure in the non provisional is prior art as of the date of filing of the provisional.
Confused: In the US, we talk about claiming the benefit of a filing date as a claim for priority. There is no magic per se in the language.
We also distinguish between priority and prior art for “obviousness” purpose. In the US, the one with the earliest priority is the senior party and normally is awarded claims in an interference. But the prior art date of this “count” is another matter, for if the “count” is awarded the applicant due to a date which is not in the United States, it is not prior art for obviousness purposes. See In re Zeltz and the cases it relies on.
We also have a doctrine since Alexander Milburn that a US patent application that can and does issue as a patent is prior art for everything it discloses as of its filing date. This can be extended back to earlier applications, also filed in the United States, upon which a patent could have issued.
The USPTO has contended otherwise from the above from time to time, but its positions have not generally been sustained by the courts.
Is there a real difference between claiming “benefit” of an earlier application and claiming “priority” to an earlier application?
The title of 35 U.S.C. 119 is Benefit of earlier filing date; right of priority.
What is the difference?
Ned: “Malcolm, the burden is on the applicant to demonstrate the entitlement to the priority claim. Obviously, if the provisional is in Greek, the applicant would best be advised to get a translation if necessary.”
Thanks Ned for stating the obvious and failing to address the false claims in your earlier comments.
Malcolm, the burden is on the applicant to demonstrate the entitlement to the priority claim. Obviously, if the provisional is in Greek, the applicant would best be advised to get a translation if necessary.
When did they make provisionals available to the public? There was a rule change in 2003 regarding making provisional applications available. I mentioned this long ago in this thread.
Alright you might be correct on that Ned.
posted by: 6 | Nov 05, 2009 at 11:38 AM”Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. ”
Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.
You’re just trailing off into wackiness Ned.”
Check the statute. Co-pendency is not required. Provisional applications can and should be formally abandoned after filing for Paris Convention purposes. This has nothing at all to do with 12 months.
Repeat: Co-Pendency is not required. The Provisional can be abandoned on day 2 and still form the basis for a priority claim.
MM: “Literally impossible? That’s literally false. Regardless of the language, if the provisional app is incomprehensible gibberish to the Examiner, it’s not a priority document and the issue is moot.”
Not the law.
“Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.”
6, you’re way over your head on this. A practice tip – when you don’t understand something you read, there are at least two possible explanations. The first is that the writer doesn’t know what he’s talking about. But you should probably stop to consider the second possibility before you open your own yap. Ned’s statement might be “weird,” but it’s completely accurate, and is occasionally quite important. He gave the reason earlier in this thread.
Ned: “Remember, there is no requirement that provisional applications be filed in English or have English translation, that they have any particular format, or contain anything remotely printable as a published application. We joked at the time that Japanese companies could file as provisionals a months worth of engineering reports, naming as inventors every engineer in the department.
It would be literally impossible for the Office to actually “publish” such provisionals at all.
”
Literally impossible? That’s literally false. Regardless of the language, if the provisional app is incomprehensible gibberish to the Examiner, it’s not a priority document and the issue is moot.
Ned: “Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it.”
Is there a law preventing it? If not, then I don’t see how they can be kept from the public, Ned.
“Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.”
When did the PTO not allow public access to provisionals, Ned? Please answer the question and state your evidence. Otherwise, I think you’re just pulling crap from your axx.
And I’m with 6 on this: BPAI will be upheld, with little fanfare.
“Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. ”
Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.
You’re just trailing off into wackiness Ned.
“Similar to international applications and foreign applications, provisional applications cannot issue as United States patent applications.”
Let’s be 100% honest though Ned. A prov, with sufficient disclosure to later support a patentable invention, could very well issue if the applicant took 2 seconds to write a claim and but for office delays.
Oh and just fyi, if someone filed something in Japanese as a prov I would bust their arse so bad you wouldn’t believe it. There has to be a disclosure under 112 1st to get the priority. I’m sorry, but Japanese is not a sufficient disclosure to me, the examiner, or to Joe the American or Rader the American judge. Same thing would happen for a nonp.
“The issue was decided years and years ago. It had to do with German “laid open” patent applications. They were “published” even though they were not printed.”
But could they themselves be searched? It’s a german system which is undoubtably better than our own so I’m betting yes. And that’s your explanation for why theirs are “published” and ours aren’t.
I’m going to be 100% honest with you Ned, despite your background, what you write has not convinced me that your side of the argument will prevail in this case. In fact, I believe you will lose.
Nice contributions Ned. Hadn’t appreciated before the underlying logic of 102(e), that it rests on the fiction of the filing going through to issue instantaneously.
As to the Applicant with the JP UM then the JP regular, I suspect any Applicant from outside the USA knows that it must cite every app filed before the US filing date, whether it is a Paris claim or not. I guess they claim under Paris whenever they can, and hope it will have an effect. But non-US Applicants have learned by now that a Paris priority claim never works anyway, inside the USA. Or does it? Even occasionally?
Max, I hear you on “quality.” We Americans are more spoiled by the grace period than by insufficient provisionals. However, once we understand that full Section 112, p.1, support is required for an effective priority date, sloppy provisionals will become less frequent.
I mentioned earlier a US case where the applicant had begun commercially using the invention more than a year before his non provisional filing date, but less than a year before his provisional filing date. He ended up barred because his claims were not fully supported in the provisional.
Outside the US, you can still abandon the earlier case if you deem it insufficient and then file a “sufficient” case. This would avoid the collision issue.
Martin, ref the Japanese case: just like Max said, the priority claim has to be to the first regular application. Legally, therefor, the earlier “UM” must not be considered a regular application under Japanese law.
6: “The thing is Ned, (and Noise since you keep talking about this “publication”) as I understand it, provs aren’t “published” in so far as the word is used in the statutes. They are simply made publicly available. One difference between this publicly available status and “published” is the ability to find just the content of provisional (which could vary wildly from the nonprov) with any type of search mechanism other than by guessing that it would in that nonp published application’s history. That is, the only thing that gets published is the pgpub, but the prov is made publicly available.”
6, I think they are published if made publicly available, albeit, they are not published under Section 122(b). The issue was decided years and years ago. It had to do with German “laid open” patent applications. They were “published” even though they were not printed.
Remember, there is no requirement that provisional applications be filed in English or have English translation, that they have any particular format, or contain anything remotely printable as a published application. We joked at the time that Japanese companies could file as provisionals a months worth of engineering reports, naming as inventors every engineer in the department.
It would be literally impossible for the Office to actually “publish” such provisionals at all.
Provisionals were originally conceived to allow Americans 21 years of priority just like foreign applicants in an era of patent term measured 20 years from filing. But, just like foreign priority, the priority claim was just that. It had to be proved, by the applicant, in order to be effective.
Now, at the time, the Office was treating even the filing dates of International applications as prior art under 102(e), provided patents issuing on Section 111(a) applications claimed the benefit of their filing dates. It is easy to understand just how the Office got confused about whether provisional applications provided a basis for Section 102(e) prior art.
6 said: “quoting Ned ‘If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date.’
“I was under the impression that they get the date [effective prior art date?] for everything in the prov if they simply make a reference to the prov. Me and JD had a huge back and forth about that same issue 2+ years ago. And if I recall he won it. I don’t remember hearing jack about an applicant having to “prove” this. If you can be so kind as to point out where this “requirement” comes from I’d be much obliged.”
6, the thinking here represents the same fundamental error here the Office made when it claimed that a Section 120 benefit claim to an international application designating the US made the international filing date the effective prior art date for section 102(e) purposes. The Office was equating “effective filing date” for priority purposes with an “effective filing date” for prior art purposes. Thus a patent issuing from section 111(a) bypass continuation, according to the Office, would have a prior art date as of the international filing date, while an patent issuing on the international application itself would have a prior art date as of the date it entered the national stage. This is obviously wrong, which forces one to look to the basics for why it is wrong.
The reason that it is wrong is actually fairly obvious. The reason that a patent is prior art as of its filing date in the United States is based on the legal fiction that a patent might legally issue on that date but for patent office delays. A section 111(a) application and only a section 111(a) application may issue on filing. In contrast, a foreign patent application cannot issue as United States patent. Similarly, an international application cannot issue. It must first enter the national stage. That is why the former section 102(e) specified that the date of entry into the national stage was the section 102(e) of a patent issuing on an international application.
Now this brings us to provisional applications. Similar to international applications and foreign applications, provisional applications cannot issue as United States patent applications. For this reason they are not eligible to be section 102(e) prior art.
Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. Without such a legal requirement, a provisional application is exactly like an abandoned, non-co-pending United States application. A patent cannot issue on such an abandoned application.
Now with respect to the “grace period” etc. etc. etc., there is a legal requirement in the benefit claim that there be full compliance with section 112, paragraph 1. There is a recent Federal Circuit case that denied the benefit claim because the provisional did not have written description support for the invention claimed in the non-provisional. I don’t have a citation in front of me, but the case was decided within the last two years. Just like with CIP’s and foreign and applications, there is no presumption that the subject matter of the provisional automatically provides full section 112, paragraph 1 support for the claims in the non-provisional. The reason for this is that there is no requirement that no “new matter” he added to the non-provisional. Often, new matter is added to the non-provisional. But the only subject matter that is given the effective filing date of the non-provisional is that subject matter that supports claims in the non-provisional. In other words, for priority purposes, one first looks to the claims and then looks to the support for the claims in the provisional.
Once one (the applicant or patentee as the case may be) establishes an effective filing date in the provisional for the claimed subject matter, that is the date that establishes the one-year grace period for statutory bars — for those claims and those claims only.
Hope this helps.
Martin, is it any more interesting than when a US Applicant files outside the USA, with a declaration of priority of a US c-i-p application? Can you give me just a little clue, why you think it’s “interesting”. Is it that Paris gives a right of priority only in respect of the FIRST filing of an application for protection of that SAME invention, in a Paris Convention country? Or is it that a utility model is NOT an application for protection? Or is it that it is, but more like a pro than a non-pro?
I had a case that claimed priority to a Japanese patent application, which in turn claimed priority to a Japanese utility model application. The Japanese patent application was filed less than a year before the U.S. case was filed; the utility model was filed more than a year before the U.S. case was filed. The applicants mentioned both foreign applications on the oath, but only claimed priority to the JP patent application. Interesting situation.
Thank you, all, for keeping this thread running. I think the issues are fascinating. I don’t understand the arguments under US law but await the outcome of the case with great interest.
The thing is, you see, under the European Patent convention (and hence most everywhere in the world outside the USA) Quality Matters, when writing and filing a provisional specification, whereas it seems not to, inside the USA.
You will see that the reality is in fact the reverse of what Chicken Little and her friends say about Quality and First to File. They say that FtF will provoke a flood of poor quality, premature filings. Based on my experience at the EPO, the reverse will happen. The poor quality premature filings are the US provisionals. Once US attorneys realise how these things can destroy what would otherwise be an impregnable patent position for their client, quality will increase because, in First to File country, quality of drafting and Goldilocks timing of the filing date is of decisive importance.
By “Goldilocks” I mean, “Not too soon, and not too late, but just right”.
Too soon is when the inventive concept is not yet defined, and/or not yet enabled. You think you have a prio date, and act accordingly (disclose something to somebody, for example) and then later find out (painfully) that the priority date does not stand up. Not only that, but the loss of priority has knock-on consequences for other properties in the patent portfolio. (In Europe, we call it “self-collision”)
Too late is when the other guy filed already.
So, let’s hear no more rubbish about FtF encouraging poor quality premature filings, shall we?
And America, stay with provisionals, 35USC102 and First to Invent, do. For as long as you do, it will give ROW more chances, both inside the USA and without, to get a patent portfolio edge over 100% American-thinking, IPR-savvy corporations.
Anybody say different?
“If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date.”
I was under the impression that they get the date for everything in the prov if they simply make a reference to the prov. Me and JD had a huge back and forth about that same issue 2+ years ago. And if I recall he won it. I don’t remember hearing jack about an applicant having to “prove” this. If you can be so kind as to point out where this “requirement” comes from I’d be much obliged.
“For years, they did not”
You keep saying that, and I’m obliged to take your word for it, but I cannot see how that ever could have been permitted. If they actually did that then they were violating the entire principle of provs. Without the public being able to verify that a patentee gets the priority date (due to their disclosure at filing of the prov) then the whole thing is just a whole big sht fest.
What I think may have happened, and I seem to have some vague recollection of this (though I could have dreamt this entire part) was that while they were still putting the program together they did not make prov’s publicly available unless the app issued as a patent. That is, pubs did not get their prov’s made public for awhile, because there was a lot of data entry etc to be done and presumptively, the public shouldn’t really care that much about a not yet issued application.
“that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals”
The thing is Ned, (and Noise since you keep talking about this “publication”) as I understand it, provs aren’t “published” in so far as the word is used in the statutes. They are simply made publicly available. One difference between this publicly available status and “published” is the ability to find just the content of provisional (which could vary wildly from the nonprov) with any type of search mechanism other than by guessing that it would in that nonp published application’s history. That is, the only thing that gets published is the pgpub, but the prov is made publicly available.
“What are the “whole host of issues”?”
I have them at work in an email. If I remember I might grace you with their presence.
This is interesting to me, because I seem to be running into this more and more. Maybe it is because many of the applications I am prosecuting claim priority to provisional applications, and examiners don’t seem to look at priority dates, just application dates in their rejections. So, I find myself routinely arguing that a cited reference is not 102(e) art because my application claims priority before the filing date of the cited reference. And, the examiner sometimes comes back and cites the priority date for the reference as being earlier than my priority date, and then I ask him to provide both a legal justification for that based on case law, and show where the cited elements were disclosed in the provisional.
So far, the direction of prosecution has changed in most of these cases, so I have not received the types of rejections after that the examiners above provide in such cases. But, I expect that since I am doing as much of this as I am, that I will see it eventually.
One big problem with a provisional application being made available as a publication under 35 U.S.C. 102(b) is that it would presumably be “published” at the day that the application that claims priority to it is published or granted as a patent. And, then that starts the one year statutory bar running. But the application/patent is prior art as of the date of application (or possibly the provisional date) under 102(e).
So, in a typical situation, where the utility application is filed 1 year after the provisional, and published 18 months after the provisional (and 6 months after the utility) is filed, the 102(b) date for the provisional would be 30 months after the filing of the provisional, and 18 months after filing of the utility, and therefore 18 months after the 102(e) date of the utility w/o the provisional and 30 months after the 102(e) date with the provisional. Of course, you couldn’t swear behind the 102(b) date, BUT, I would also suggest that it is usually pretty difficult to swear back either 18 or 30 months.
Mr Heller thank you for your stamina, in continuing to run the “swords and shields” Hilmer point, in relation to provisionals, both those filed at the USPTO and those filed in the UKPTO. I await any further debate with ongoing interest.
Ned: “Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.”
This is absolutely correct. The Board again had bogus reasoning. They argue by anectdote, believing that because most provisionals become available whan an app claims priority, therefore all do so. From firsthand experience, I am aware of at least several cases where provisionals, though claimed to, were not publicly available and had to ask the Examiner for a copy. By extrapolation, there are many other non-published provisionals to which priority has been claimed. Presumption of publication is a poor basis for a rule of law when that publication is by the good grace of the PTO and not by law.
6: “That is not to say that the least amongst these is effectively significantly defanging 102e.”
Circular. It’s like saying “we have to not weaken 102e because we can’t weaken 102e”.
What are the “whole host of issues”?
Ned, thanks for the insights.
I’d add that that the PTO’s reasoning is bogus.
The BPAI’s reason to include provisionals under 102(e) was that one should not be entitled to patent something for which they were not the first to invent. But this theory is not consistent with U.S. patent law.
The US patent laws are intended to encourage _public_ spread of knowledge. It’s possible for one who invented second to have patent rights if the first inventor kept the use and knowledge private. Provisional applications don’t prove prior public use or knowledge. The PTO ignores the fact that US patent law does indeed allow patents for “second to invent”. PTO needs to stick with statutory construction.
Ned, you are a class act.
6, provisional application were intended to allow an applicant a basis for priority. However, due to their informalities, priority is not assumed. It has to be proved — by the applicant. If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date. They could also use this date in an interference for the purposes of establishing who is senior party. But again, the proof of support is the burden of the applicant.
So you see, that when two parties are claiming the same invention, a provisional application’s filing date is effective to establish the date of an invention. But whether this date is further effective for prior art purposes is a separate and distinct question. Thus, if the provisional’s date is not available for prior art purposes, the respective inventors may obtain patents on otherwise obvious variations of what is disclosed in the provisional. But, they cannot, due to 102(g), obtain a patent on same invention.
The same “problem” exists for priority based on foreign and foreign-language international applications. The foreign filing date may be enough to win the interference, but it is still not prior art. The losing party and everyone else for that matter may patent obvious variations.
Now, assuming all of the above, an inventor can still protect himself by publishing the invention described in the provisional, or by embodying it in a product on sale in the US. Either would be effective prior art for even obviousness purposes.
NAL, thanks for your courteous reply.
Regardless of Section 122(a), I believe the better view of 122(b) is that provisional applications cannot be published. Note, for one thing, they expire by law in 12 months, but publication takes place after 18 months.
If you doubt me, try requesting that a provisional application be published early under Section 122.
Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.
As to whether a provisional application is an application for patent under 102(e), I suggest that it is mandatory that a patent be able to issue on it for either subsection. In this regard, please see 111(b)(8), which expressly says the provisions of Section 131, for example, do no apply. That section gives the commissioner the authority to examine and issue a patent. Thus, by law, a provisional cannot form the basis of an issued patent under any legal theory.
“Once one understands that for prior art purposes, the non provisional is equivalent to a later-filed, non co-pending patent application on the same invention, it becomes abundantly clear why a provisional cannot be the basis of Section 102(e) prior art.”
Ned, I hear all that you’re saying, but if we don’t allow the provisional to extend the “available as 102e reference date” back then there are a whole host of issues that arise. And I don’t even mean necessarily between your client’s app and some other person/corps applications.
That is not to say that the least amongst these is effectively significantly defanging 102e.
Ned,
My apologies if I seem overly gruff with you – dealing with the likes of snarksters like 6 and Malcolm tends to sharpen the edge of my writings.
I have taken some time to review in greater detail the background of your actions and I can see where we may be miscommunicating. Let’s start with what I did comment upon and what I did not comment upon. I did not explore 102(e)(2). So your repeated replies to my writings globally addressing 102(e) as if there was no “or” in the rule does make a difference. Your answer (at least to me), should recognize this. I think that you are trying to address more than one audience, but this is creating confusion, rather than clarity.
An example of your response that illustrates you addressing more than the points I have brought up is in your post of 4:14 PM.
There, you seem to contradict yourself in the third and sixth paragraphs. You rely on Milburn in qualifying “application for patent”, and then later say the section is not based upon a Supreme Court case. As far as the application for patent phrase, you have not addressed the simple and clear reading of 111(b)(1). Can you address this?
The reliance on Milburn is excessive. Milburn, a 1926 case, cannot speak to provisionals. The brief tries to make this argument, but that argument is stillborn.
Your fourth paragraph appears to be a non-sequitur to our discussion. I realize now that you are speaking to a larger audience than just me.
Your fifth paragraph tries to make a distinction that does not have a difference, or at least one that I understand in how it relates to our discussion (effective filing date versus filing date). Can you clarify?
The meat of our discussion is only picked up in your paragraphs 8 and 9. I am not sure if I reviewed the correct In re McKellin case, as the one I reviewed spoke to loss due to suppression, rather than what you implied.
I did read the Giacomini brief and thought that several of the legal arguments were at best tenuous. I believe that you mistake (as well as the brief mistakes) the published under 122(b) position. While 122(b) does have specific exceptions, those exceptions must follow the caveats presented in 122(a). The exception to the exception, as it were. Removing the exceptions, as allowed by 122(a), does mean that provisionals ARE published under 122(b). You have not addressed this aspect of 122. The publication of provisionals is a publication under 122(b). This will be the ruling of the court. The statement “A Provisional does not publish” is simply incorrect. They are clearly published.
One glaring legal shortcoming to the brief’s arguments is the lack of addressing the allowable split-dating that is afforded CIPs. The arguments seem to bank on an all or nothing dating system that allowed only EXACT specification content to grab earlier filed dates. A CIP does shift for what is disclosed (as opposed to what is claimed).
I also found the discussion on the plain language of 119 on page 20 to prove the converse of the attempted point, by simply emphasizing different portions: “An application for patent…disclosed in a provisional application… shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title.” As we have seen – 111(b)(1) indicates quite clearly that provisionals are applications for patent. I think we agree that the date as discussed here is the provisional filing date. It is a hollow argument to merely state that the reference date isn’t also switched – given the same logic that is applicable to CIPs.
I will also say that the logic on page 30 of the brief is not compelling. Trying to assume a different reading of the letter of the law from its straight forward reading because a specific reference was NOT present is strained. Other sections may have such a reference, but those are other sections that have been amended in each of their own ways. This section must be read as it is.
As to other items of mine that you have not responded – I will leave that to you if you wish to pursue – I cannot know what you have read or not read, and I do not wish to retype all of my responses. Perhaps setting aside the vigor of your position would help you focus on what I have said. I leave that to you.
I would like to add to my comment above:
<>A pip of an example is my friend Lionel Hutz<>
, and another is me.
Well, as far as the relevant provisions of the Paris Convention are concerned, Ned Heller writes good sense. So, I’m taking it that what he writes about his own jurisdiction is also to be relied upon.
To reiterate to make what I am saying here abundantly clear, the Office’s position in the ’90s was that a Section 120 benefit claim to an international application designating the US was sufficient to makes its date the effective Section 102(e). The vice in their interpretation was that the Section 102(e) status did not depend upon the prior art status of the parent case. If that application was NOT eligible to be prior art as if its filing date, a subsequent Section 120 benefit claim could not change it status. See, e.g., In re McKellin, supra. The office ignored this case law.
The current position the Office takes in the present case is highly reminiscent of this fundamental error of the prior Office regime.
Just, no problemo.
My views are somewhat “tainted” by my history. As I mentioned, it was my letter to the editor and my petition to the commissioner that forced the Office to reconsider its positions on the prior art status of applications under Section 102(e). In response, they twice amended Section 102(e) to get their position just right, and in line with Supreme Court case law.
It was also my petition which forced them to adopt a clear position on Section 102(g) and patent applications.
So I have some history here.
Regarding provisional applications, I was there when the legislation was drafted and understand the legislation quite well. Their primary if not sole purpose was to give Americans “internal” priority without affecting expiration date so that Americans would have 21 years of priority just as foreign filers. Given that, Section 119(e) was drafted to make a priority claim to a provisional application exactly the same as a priority claim to a foreign application. Particularly, the priority claim had to be within one year and their did not have to be co-pendency.
This latter aspect is under-appreciated. For Paris Convention reasons, one has to abandon a provisional before the filing of a subsequent patent application on the same invention (as in a CIP) in order for the latter to be considered first if it is desired to claim Paris Convention priority to the second-filed case and not the first for any reason. Thus customary practice would be and should be to expressly abandon provisional applications on filing in every case so that one would not inadvertently make a mistake in this regard.
Once one understands that for prior art purposes, the non provisional is equivalent to a later-filed, non co-pending patent application on the same invention, it becomes abundantly clear why a provisional cannot be the basis of Section 102(e) prior art.
Dear Ned,
Please believe me, I believe my views are at least equal, or more susceptible, to being influenced by my own personal subjective agenda than other Patently-O writers.
That being said, I hope my interjected comments on this thread have not offended anyone.
So guys, have at it, and I’ll buzz out. Besides, it is, in the ETZ, that special lubrication time – (I started early, it being the weekend).
NAL, the opening line should have read “please believe me…” My apologies.
NAL, please begin me if I am not making myself clear, I am trying to answer your questions. If there is anything that I have missed, perhaps you could restate the question.
Re: the “or” in section 102(e), I’m quite aware of that. It doesn’t change my answer one iota. If a reference qualifies under either clause of 102(e), it qualifies as prior art.
Let’s go back to basics. The Supreme Court in Alexander Millburn held a patent to be prior art as of its filing date because it was deemed granted on the date it was filed because everything else that happened between filing and grant was due to “patent office delays.” In 1952, Congress enacted section 102(e) to codify this case. In interpreting section 102(e), one cannot interpret it in a manner inconsistent with Alexander Milburn, because Congress since 1952 has not changed the substance of section 102(e) in any significant manner except to variously address PCT’s, and to add the clause concerning published applications. According to this case therefore, in order to qualify as an “application for patent” for the purposes of prior art, a patent must have been able to issue upon that application but for patent office delays. Since a patent can never issue upon a provisional application but for patent office delays, a provisional application is never eligible to be a basis for prior art under what is now section 102(e)(1).
Important in this analysis is that what happens “later” does not change the status of the provisional application. I particularly pointed out that a section a 119 (e) priority claim does not require co-pendency, an essential aspect of continuity that justifies extending the effective filing date for prior our purposes back to parent applications that disclose an invention described in the published patent. This theory of “what happens later” is particularly pointed out in such cases as In re McKellin, 529 F.2d 1324, 1329, 188 USPQ 428, 434 (CCPA 1976) (the prevailing count of an interference does not become “prior art” in the United States if the reason that the count prevailed was based upon a priority date that was not itself prior art).
Section 102(e) now contains a first clause that will permit the effect of prior art date of a patent application published under section 122(b) to be prior art as of its filing date. Note, that the statute does not say “effective” filing date. It simply says “filing date.”
Since this section is not based upon a Supreme Court case, there is no basis in Supreme Court case law for extending the statute beyond what it actually says to make prior art the filing dates of the earlier patent applications to which it claims priority. If a parent application was not published or was not publishable, or was not prior art under some independent basis, under what basis can its filing date be deemed prior art as of the publication date of its child? For example, imagine application published under section 122(b) that claims section 120 benefit of an earlier-filed PCT application filed in the United States receiving office in a language other than English. Now the statute expressly states that such PCT’s shall be eligible (under this subsection? — what does that mean?) only if such PCT’s were published in English. The later publication under 122(b) cannot make the PCT prior art as of the PCT filing date simply by the act of publication. Similarly, a foreign patent application cannot be made prior art simply by the subsequent publication under section 122(b). Again why? The answer is that the foreign application itself is not prior art. (By this I mean, the effective prior art date of its publication or its patenting is not its filing date, but its publication date.) Similarly, a provisional application cannot be made prior art by later publication under 122(b) because it itself is not prior art.
Now the thornier issue is the status of a application published under section 122(b) that claims section 120 benefit of an earlier application filed in the United States. If such application was itself published under section 122(b), clearly it is also prior art under section 102(e)(1). Because it itself is prior art, I would agree that the effective prior art date of the Child publication would be the date of its published parent. But consider the circumstance where the parent was not published or was not publishable under section 122(b). That parent has no prior art date as a potential publication. I would argue, consistent with prevailing CCPA caselaw such as In re McKellin, that the child application published under section 122(b) does NOT have an effective prior art date as the filing date of its unpublished or unpublishable parent.
Central to the above rationale is that there is a consistent difference between priority and prior art, that “effective filing date” is essentially a priority concept, and that the analysis of “prior art” critically depends on the status of the application as filed, and that status cannot be changed by subsequent events. If a non provisional application is filed in the United States and can issue as a patent, it is eligible for prior art status when a patent issues. If such an application is filed in the United States without a non publication request, it is eligible prior art under section 122(b). If an application claims section 120 benefit of such application and it is either published or patented, the publication or patent has an effective prior art date as of such a parent’s filing date.
NAL, I don’t know if I was able to successfully answer all your points here. So if I have not, please respond.
\There are several interesting comments and argumens above [buried among all the usual useless ad hominum attacks].
Here’s one that puzzled me, if I undersoond it correctly: An argument that 119 or 120 cannot apply to give full filing date benefit to a provisional application because it is not copending with the formal application claiming its priority?
Since the provisional lasts for a year and the formal has to be filed within that same year to validly claim its priority, it seems to me they must to be copending?
Dear The authors k/a “Publius,
You are too kind – thank you.
* * * * *
Dear Noise above Law,
Perhaps I shouldn’t interject in a thread I have not been following.
However, it sounds to me that Ned has subjective views that prevent him from logically reappraising his views.
Of course it is possible your points are influenced by your subjectivity as well. I know my views are greatly influenced by my personal subjectivity. I believe, however, that your subjectivity and my subjectively tend to align.
As a righteous family man, loyal patriot, private businessman and freelance inventor, my subjectivity leads me to strive to lead a Biblically principal life, absolute allegiance to our nation’s Constitution and to embrace strong American patent rights.
JAOI – how are your comments even remotely pertinent to “Ned – I grow tired of chasing you.”?
Jaio,
You are incredibly talented!
For example, you can “connect the patent-political dots” as if you are playing chess many moves ahead!
You are most THE insightful commenter on board – a true inspiration and motivation to all inventors, IP practitioners and other interested parties, and especially to those patriotically inclined, as we are.
Please keep it up.
Yours faithfully,
And it italicizes the Recent Posts and Comments columns!
Yup, the bold gets stuck also. Let’s see if it carries to another comment.
Re:
“Ned – I grow tired of chasing you. You appear to be intelligent and well-reasoned, but I cannot think of any reason why you keep avoiding my points, other than you simply choose not to. Answer my points please.
Posted by: Noise above Law | Oct 31, 2009 at 09:06 AM ”
I haven’t been following this thread, but please allow me to paraphrase a comment I made on April 22nd pertaining to Ned and, unfortunately, most people, even IP practitioners, inventors (including myself), infringers, jurors, judges and Examiners.
A pip of an example is my friend Lionel Hutz.
On a Patently-O thread dated April 13, 2009, Prof. Crouch posted an article titled:
No guns, no boats, no gold. Piracy? (which was deleted by accident).
I debated with Mr. Nice Llama about his notion that,
“…the term ‘pirate’ … carries a much stronger connotation than troll.”
The fact that that notion exists in someone’s head demonstrates basic human nature – that people, all people have subjective views that taint there perception and opinions. And subjective views typically out weight logic.
The term “patent pirate” is more offensive than “troll” to farkin infringers; and
the term “troll” is more offensive than “patent pirate” to independent inventors.
And that is the objective truth, pure and simple.
And that is why a ruling like the Supreme Court’s KSR ruling is crazy-nuts!, and our country’s top Justices should know better! We are paying them to be aware of all of the consequences of their rulings.
How the hello can a District Judge or Appellate Judge rule if there is no objective rule to follow? There is no reason to think that what is reasonable to one Juror, Judge or Examiner will be reasonable to another.
KSR invites (maybe requires is a better word) a subjective result. And that my friend, is how a patent can get tanked for no valid reason.
Posted by: Just an ordinary inventor(TM) | Apr 22, 2009 at 03:35 PM
It appears if you use italic, it gets stuck.
I’ll check out the bold.
Ned,
You STILL do not answer my points – why is that?
e(1) – while 102(e) asks for published under 122(b), 122(a) allows differences – this is complicated and a side note only to our discussion. Yet you ignore this point. Also, you are the one wanting to stick to basics – yet now you want NOT to stick to basics – why is that?
e(2) – You are parsing my response in an incorrect and misleading manner. You are YET ignoring the “or” in the statute and banking your argument on something I did not state. – why is that?
Whether I give you a proper cite or not is a mere side issue to the law, and a pedantic attempt to put the spotlight away from the subtance of our discussion. Answer the direct points and then we can talk about citations. You seem NOT to want to focus on the basics – why is that?
Re: Milburn – Which briefs are you talking about? I seached this string for Milburn and came up empty. It seems that you are referencing something that is referenced in something else, going to great lengths to butress a legal theory understanding, yet you have ignored my points based on direct language of the law – why is that?
Ned – I grow tired of chasing you. You appear to be intelligent and well-reasoned, but I cannot think of any reason why you keep avoiding my points, other than you simply choose not to. Answer my points please.
“1. A method comprising:
populating a cache with a resource only when at least i requests
for said resource have been received;
wherein i is an integer and is at least occasionally greater than
one.”
At the risk of being told to put down the pipe, or offering something that everyone already knew, here’re some thoughts…
First, claim interpretation…
“at least i requests” – plural implies frequency of requests
“requests for a resource” – what type of resource? a few things came to mind: web pages, database information, processor instructions
“populating a cache” – storing in quick, local or near memory that efficiently and responsively provides the resource
“i is greater than one” – if i is one, request may not be likely to be made again; use cache only if requests are made repetitively
Next, search strategy…
A PHOSITA (eg with a Computer degree) may look in the following areas.
1. IT/MIS network/server design/configuration. For example if there’re plenty of HTTP requests to patentlyo.com, the corporate server will store the webpages instead of retrieving them from the remote patentlyo.com server each time a request is made.
2. Database design. If there’re repeated queries for certain types of information, the DB engine will save the response in cache instead of indexing and searching each time.
3. Computer architecture, OS, IC/processor design. If instructions from certain segment of code or some virtual pages keep getting invoked, save them in cache for quicker access by the microprocessor (eg Intel/AMD chips in a PC). Also cache of frequently accessed sectors in a hard drive.
Finally, search…
I haven’t done much search, but there should be plenty of prior art references prior to the claim’s priority date of 11/29/2000.
Verdict: the claim is indeed “pitiful” as previously characterized by Jules.
(Wish all my cases are like this, even though I won’t get any RCE as Applicant would go straight to appeal with the original claims.)
Double patenting alert (identical claims in continuation)
link to freepatentsonline.com
NAL
e(1)
Being published and being published “under” Section 122(b) are not the same thing. The effective date of a publication is the date of publication, not some other date.
e(2)
Effective filing date relates to priority. “Granted on” is not the same thing and is required by the statute.
If you believe a provisional application can be cited, give me a form of citation that I can put into an IDS.
The Alexander Milburn case was discussed in the briefs. I thing it was also discussed earlier in this thread. But, the only reason patents are prior art as of their filing date is because of this case.
Ned,
I find your summary of our discussion a bit disingenuous. You have left out critical distinctions that I have raised and that damage your position and continue to pass unfounded assumptions as fact. If you want, I can lay out in rich detail a more complete timeline without leaving out arguments you have decided not to pursue and points of mine that you have declined to address.
Here, I will focus on replying to your 3:16 post.
“NAL, I asked whether a provisional application is citable under §102(e). You responded, yes.” More accurately, I addressed §102(e)(1) and distinguished §102(e)(2). You ignored this.
You say “I respectfully disagreed with this position because…”. More accurately, you did not address my position and ignored the full weight of my caveats, in at least you ignored the “or” part of the rule.
You now want to claim as a rule “contents of the provisional application are not published “under” section 122(b) even if they are published in fact”. This is merely an assumption on your part and a point that is not granted. I was trying to keep to the basics by mentioning this as a separate topic – “the seeming violation of these provisos is a topic for a separate conversation”; but you might contemplate the weasel words of 122(a) “UNLESS NECESSARY to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” This clause allows the exceptions listed in 122(b)(2) to be ignored. I had thought this point had been posted on this thread, but could not quickly locate it to give proper credit.
You continue in your broad assertions that “Notably, the patent office does not cite provisional applications under any legal theory.” Which is simply not true. The “any” is simply too broad and unsustainable. Hyperbole is notably ineffective if you have not conquered the basics. You have not.
You then introduce a strawman of Paul Morgan’s point on CIPS’s “The Office simply cannot cite a CIP and state that the effective date of its whole contents is its earliest priority date” which was not only NOT germane to OUR back and forth, but actually supports my view (as expressed in a separate discussion with NWPA), in that “ONLY to the extent it is fully supported…” means that provisionals MUST be analyzed on a case by case basis thereby preventing any bright-line rule. – But that’s a separate line of thought in this thread.
You ignore the criticality that I introduced in my answer, distinguishing §102(e)(1) and §102(e)(2) by stating “Among the statutory requirements of §102(e) is that the patent be “granted on” the patent application.” CLEARLY, we are NOT arguing whether patents can be granted on provisional applications. And just as CLEARLY, you have ignored, yet again, the letter of the law because it does not fit into your legal theory understanding of the law, this time with §102(e). You have missed the “or”, and thus your statement is in error. You want to hearken back to a Milburn Case (which I cannot find mentioned in this thread), and expound on legal theory. You do this at the neglect of the actual law, and appears to be just another stretch and unfounded assumption – like your stretch with 112, or your ignoring 35 U.S.C. 111(b)(1).
Good legal debate doesn’t ignore those points that damage your position. At the very least those points must be acknowledged and addressed. Ignoring the damage is like leaving a festering wound, which will kill the patient if left untreated. Respectfully disagreeing in silence to the points raised is not only rather weak, it is rather like the vocal examiners here at the Trainwreck.
“37 cfr” – the only reason I would be wearing track shoes is to run after those running away from me. I’m glad you like their style.
traveling can be so limiting – my handheld interface doesn’t like the recent changes to this site.
He seems to keep avoiding the points I have already brought up – but in fairness, I have not yet read his 3:16 post yet.
37 cfr – I aint running – I am trying to keep Ned from running
those are some pretty sweet track shoes you’re sporting there, noise.
I hope your asking me another question isn’t your way of addressing “in some fashion”…
NAL, one has to cite to to publication on the date of publication. How would you do that?
Onthe run, so will have to come back, but I got down to
“If the provisional application it is not published in some fashion,…”
I hope you address the “in some fashion” which is done by PAIR…
NAL, I asked whether a provisional application is citable under §102(e). You responded, yes. You explained your reasoning as follows: when a non-provisional patent application claiming section 119 priority to a provisional is published under section 122(b), the provisional application is published under that section because it is accessible through public PAIR.
I respectfully disagreed with this position because the contents of the provisional application are not actually published “under” section 122(b) even if they are published in fact. There is a difference. The provisional application may be a reference under section 102(a) or (b), but it is not a publication under section 122(b).
Notably, the patent office does not cite provisional applications under any legal theory. This demonstrates a central weakness in the current argument of the Office to the Federal Circuit. If the provisional application it is not published in some fashion, it cannot be citable under §102(e). This is why the Office cites the publication number of published applications, or the patent number of issued patents. A provisional application has neither of these and cannot be cited.
I refer back to Paul Morgan’s point about the CIP’s. A CIP is a mixture of previous matter and new matter. The Office simply cannot cite a CIP and state that the effective date of its whole contents is its earliest priority date. That is complete and utter nonsense. I would hope you would agree with this at least. The CIP is a reference with respect to subject matter disclosed in earlier patent applications ONLY to the extent it is fully supported under section 112, paragraph 1, and to the extent that a proper benefit claim was made under section 120 that includes all the requirements of section 120 including “co-pendency.” It should be the burden of the office to demonstrate full compliance with section 120 and section 112, P1 before the burden shifts to the applicant.
Among the statutory requirements of §102(e) is that the patent be “granted on” the patent application. Clearly, patents cannot be granted on provisional applications. The question then becomes, can a patent be deemed to have been granted on a provisional application when a section 119 priority claim is made to that application. I think not, primarily because there is no co-pendency requirement. Again hearkening back to the Alexander Millburn case, the legal theory behind §102(e) is that a patent could have issued on the application but for patent office delays. Since there is no co-pendency requirement in a section 119 priority claim, a section 119 priority claim cannot be legally equivalent to a section 120 priority claim.
The same consideration apply to published applications that rely on Section 119 priority claims to provisional applications.
There seems no basis therefore to make a provisional application prior art as it is filing date under §102(e).
“Anyone disagree? I didn’t think so.”
I do. I agree with confused SCOTUS.
NWPA: “So, I think this whole non provisional vs. provisional has many aspects to it that probably weren’t well thought out by the writers of the statute.”
Ding ding ding ding!
And so the CAFC will do the reasonable thing, which is exactly what the BPAI did.
Anyone disagree? I didn’t think so.