First to Disclose: A Caveat to the Patent Reform Act of 2010

David French has been writing about the proposed change to a first-to-file system in the Patent Reform Act of 2010. Mr. French was closely involved with Canada’s 1989 switch to a first-to-file system.

Rather than moving to an absolute novelty system, the proposal calls for a limited grace period for “disclosures made one year or less before the effective filing date of the claimed invention.” To qualify for the grace period, the disclosures must either (A) come from the inventor(s), either directly or indirectly or (B) disclose subject matter that had already been publicly disclosed by the inventor(s), either directly or indirectly.

Section 102(b) EXCEPTIONS:

DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION

A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art to the claimed invention under subsection(a)(1) if

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

In a limited sense, this rule promotes pre-filing disclosure because the grace period is only available for those who publicly disclose the invention before filing. I am confident that the prudent approach will usually be to file the patent application as early as possible.

It is unclear to me how the provision would operate during a nonobviousness determination. I.e., what if the inventor disclosed INV-A; then a few months later someone else disclosed INV-B; and then the inventor filed on INV-A? Would the grace period apply to “knock-out” the INV-B disclosure as prior art?

I would personally prefer the addition of a caveat (C) to the grace period that “the subject matter had been previously invented by the inventor or a joint inventor.”

28 thoughts on “First to Disclose: A Caveat to the Patent Reform Act of 2010

  1. staff,

    Obviously you have not been paying attention, infringers have rights too.

    Especially innocent infringers.

  2. Just visiting, Agreed.

    Perhaps if we reworded section b as follows:

    “B) the subject matter had, before such disclosure, been

      disclosed in application to which priority is claimed under (list statutes, including 120) or

    publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”

  3. “What we NEED to do is fix provisionals so that a subsequent disclosure of whatever they disclose by a third party is not prior art.”

    Why should provisionals work this way? Should we “fix” priority claims from non-provisionals to work that way as well?

  4. Another thing that bothers me, big time, is that a prior public disclosure of “subject matter” will eliminate subsequent public disclosure or patent application disclosing that subject matter from being prior art; but a provisional application will not have the same effect. The provisional application will only be effective with respect to an claimed invention, meaning the claim will have to be fully supported in the provisional to eliminate prior art. This is a whole different animal than “subject matter.”

    So what we have here is a system that rewards public disclosure (which kills the applicant abroad) and, at the same time, severely penalizes the use of provisional applications because THEY are not public disclosures.

    To make it simple, suppose the “subject matter” is species A. The claim is to the group consisting of A and B. The public disclosure is of A. The provisional application is of A. The third party disclosure is of A.

    The non provisional would not get the benefit of the provisional because A and B are not both disclosed. However the public disclosure of A by the inventor would eliminate the subsequent disclosure of A by another from being prior art. I.E., public disclosure works the way provisionals should work.

    This is NOT right.

    What we NEED to do is fix provisionals so that a subsequent disclosure of whatever they disclose by a third party is not prior art.

    Think about this long and hard. The proposed legislation is an abomination.

  5. Indeed it is confusing. Why part (a) at all? Part (b) seems enough. Indeed, it is the very presence of (a) that causes confusion.

  6. The first time I read this provision (several years ago), I initially thought that it was doing 2 things: (1) negating the inventor’s own disclosure as prior art if w/in 1 yr of filing, and (2) giving the inventor a true grace period by implicitly providing for swearing behind prior art using the inventor’s earlier disclosure w/in the 1 year window.

    When I ran that by several colleagues at the time, they didn’t read it that way. And I never heard anything about the PRA including such as “first to disclose” feature, so I thought this initial read must be wrong.

    Today’s column shows that the provision is far from clear. A “first to disclose” approach does make sense from a policy standpoint. It encourages earlier public disclosure–one of the purposes of the patent system. And it removes the penalty imposed on researchers and academics who would lose their rights by publishing their invention in technical journals before filing a patent. Again, seems to make sense, policy wise….

  7. “you can extend the effective monopoly by one year under current practice by manipulating 102(b) and (g)”

    ???

    Hey TJ, wake up man, where’s my latte?

  8. Lovely comment from Petersen. Reminds me of Section 5(1) of the UK Patents Act 1949, blown away by harmonisation and EPO jurisprudence.

    Gob, it is Section 32(1)(c) of the 49 Act I had in mind. One ground for revocation is that the patent was “obtained” in contravention of the rights of the petitioner. Thus in those good old UK days, a derivation dispute was called an “obtaining” action.

  9. Canada and Mexico are the hat and socks of the United States. Hats have been out of fashion for years. Now we’re supposed to follow Canada’s 1989 switch to a first-to-file system because the French thinks we should? Not on my watch.

  10. This scenario is what I had referred to as the “springing public disclosure exception” in my Matrix article on FITF. The amendments have fixed the springing (i.e., measured looking one year forward) part of the exception by now limiting this 102(b) exceptions to disclosures occuring 1 year or less before the effective filing date (i.e., measured backward one year).

    In order to give effect to the concept of a grace period, the exceptions do operate to allow INV A to “knock out” INV B, even if INV A is second to file, so long as INV A was first to publicly disclose. The exception must rely on “disclosed” language, not “claimed” language, because the public disclosure does not need to be a patent or patent application.

    In essence, the exception provision operates as a default swearing behind proviso, i.e., if INV A publicly discloses subject matter then we will assume that INV A could have sworn behind an effective of INV B that was after the date of the public disclosure of INV A but before the filing date of INV A.

    What won’t be available is the ability to swear behind current 102(e) art of others that has an effective filing date more than a year before the filing date of the application.

    The bottom line seems to be that US only filing inventors will still have the option, perhaps risky, of publicly disclosing an invention, by sale, publication or otherwise, of waiting up to a year after that event to file a US application with the knowledge that the grace period will remove under the new 102(b)(1) exception any public disclosure art (current 102(b) art).

    The best practice changes that are likely to result occur in the context of using a provisional application followed by conversation to a utility application. My expectation is that best practice will be file a provisional on a base concept, then immediately publish the base concept, then convert to a utility application adding additional disclosure that fleshes out the base concept. The middle step of publishing the base concept serves to potentially trump any intervening disclosures between the provisional and the utility where a claim is directed to ancillary subject matter that was not in the provisional.

  11. Max–I’m curious–what exactly were the negative connotations of “obtain” in the old English patent laws? I have only ever heard of “obtain” being used in a neutral way in patent law. It makes me wonder what else I’m missing when I read decisions and laws from over there, even if they’re originally written in English.

  12. You know, some things are simply irreconcilable. Example: 35 USC 102/3 (whether mucked about or as is) and FtF. I am reading this thread with gob-smacked, jaw-dropped, open-mouthed amazement, how laws are made in the USA.

    Or do I see it wrong? Is this Bill only a first tentative draft, with much re-drafting still to come?

    In the UK, prior to European harmonization in 1978, one of the grounds of revocation was “obtaining”. The draft Section 102(b) exceptions language above uses the word “obtain”. Does the word “obtain” as so used above carry its normal neutral dictionary meaning, or does it carry any of the negative connotations of theft that were in the old English patent laws? If so, how can that be, when the Bill encourages a full year of open disclosures by the inventor, no strings attached, with no equitable duty on the part of the receiver of the subject matter to refrain from further dissemination of the subject matter.

    I had thought 18 months between filing and A publication was a black hole quite long enough. I should have thought that a black hole nearly three years long, three years!!!, is quite a long time to wait for the A publication and therefore a meaningful clearance opinion.

    Or am I wrong about that too?

  13. The point made earlier that INV-A would not be patentable outside the US is well taken. Who and what this grace period is attempting to protect is not instantly apparent. Certainly big companies would file first to protect their international rights. Small companies ditto, although they would prefer first to invent.

    Universities?

    It is not all that clear why we need it?

  14. My two cents: Assume INV-A and INV-B disclose the same subject matter. INV-B is not prior art provided that INV-A was disclosed, directly or indirectly, first by the applicant. The source of INV-B is irrelevant.

    The provides the statutory presumption, true or not, that INV-B was derived from INV-A.

  15. Dennis,

    I now can see how the text supports your view, and it hinges on the fact that the exclusion is probably too narrowly drafted. An intervening disclosure is excluded only if the subject matter *of the disclosure* was first publicized by the patentee. What they probably should change it to is to make the exclusion apply if the “subject matter of the claim” was first publicized by the patentee.

  16. TJ – I think that your interpretation doesn’t quite align with the text of the proposed statute.

    Namely, the proposed grace period eliminates certain disclosures from the prior art, but in each case the disclosure being eliminated is for subject matter disclosed by the inventor or else subject matter derived from such a disclosure. (see text above in pink).

    From the statute, I don’t see how to make the leap that disclosure of other subject matter would also be knocked-out – even if that other subject matter is used in an obviousness rejection. (except to say that’s how we’ve always done it).

  17. Good point, Paul, I was being rather imprecise about the swearing back rules. The public disclosure should either be a public demonstration, or a printed publication with solid evidence of actual reduction to practice, for the reason you point out.

    But the basic point remains: you can extend the effective monopoly by one year under current practice by manipulating 102(b) and (g); and it seems to me that the new bill is attempting to preserve that ability.

  18. “INV-B would be knocked out under the current system, because you could swear-back to the disclosure made at Time A.”
    A common misunderstanding re present Rule 131 “swearing back” declarations is that one’s prior publication, or other concept disclosure, is a completed invention date.* It’s evidence of a prior conception date, if sufficiently complete, but absent the additional 102(g) required evidence of continuous dilligence to an actual, or constructive [by filing], reduction to practice, not validly effective.
    *See, e.g., In re Katz, 215 USPQ 14 (CCPA 1982).

  19. And to answer Dennis’s specific question: of course it would knock out INV-B. INV-B would be knocked out under the current system, because you could swear-back to the disclosure made at Time A. My understanding is that this provision essentially preserves swearing back, up to 1 year and only if corroborated by a full public disclosure (instead of the currently messy corroboration rules). Dennis, is there any reason (textual or policy) that you think otherwise?

  20. Make an intentional public disclosure and immediately kill your possible patent rights in most other countries…

  21. I read it as pretty clear, but directly contrary to what PCTM thinks it means (so I guess it might not be so clear after all).

    Under this provision, the public disclosure at time A essentially puts a “stake in the ground” just as filing a provisional application does. If you really want to maximize your effective monopoly, the thing to do is to
    1. Make a public disclosure of INV-A, with notice that you intend to file a patent on it.
    2. Wait 364 days.
    3. File application on INV-A.

    Of course, this strategy is risky, in the sense that nothing quite beats actual filing in establishing priority. But I am not seeing why it is vague or problematic that the new section 102(b)(B) codifies this strategy in a modified first-to-file system.

  22. Dennis – I think you’re right. I was reading “the subject matter had, before such disclosure, been publicly disclosed by the inventor” as excluding only the actual subject matter disclosure by the inventor. That reading makes any non-deriving 3d party’s disclosed subject matter in the grace period prior art, even if the inventor discloses first. But this doesn’t jive with subsection (A), because it makes subject matter = disclosure and makes subsection (B) have the same effect as subsection(A). Thanks for clarifying.

  23. My understanding is that the inventor is free to claim any subject matter supported by his public disclosure of A (because it was “before such disclosure”), but any subject matter first disclosed in B is prior art.

    Interestingly, the Canadian statute doesn’t appear to let the inventor reach back to his own earlier disclosure once there has been a disclosure by another before his priority date.

  24. Personally I prefer none of these nonsensical exceptions. The current nonsense is bad enough.

    Btw, that app I thought I might have to do an interference on just went abandoned :)

  25. PCTM — I’m not quite sure what you are saying.

    For Anticipation (INV-A = INV-B), then INV-B would be excluded from consideration because the inventor had already disclosed INV-A. This falls under the new 102(b)(1)(B) “shall not be prior art if . . . the subject matter had, before such disclosure, been publicly disclosed by the inventor.”

  26. “what if the inventor disclosed INV-A; then a few months later someone else disclosed INV-B; and then the inventor filed on INV-A? Would the grace period apply to “knock-out” the INV-B disclosure as prior art?”

    This would work the same as in an anticipation scenario (INV-A = INV-B): INV-B is valid prior art for anticipation and obviousness, assuming no derivation in INV-B. Am I missing something?

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