The Relevance of Invention Date in Patent Prosecution: Part I

I am traveling over the next few days and so I pre-wrote a handful of blog posts relating to an article that I wrote for the Michigan Telecommunications & Technology Law Review (MTTLR). The article has the perhaps overly provocative title: Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U.S. Patent Law, 16 Mich. Telecomm. Tech. L. Rev. __ (2010).

The abstract reads as follows:

Abstract: The US first-to-invent patent regime is unique in that it allows a patent applicant to assert priority rights back to the invention date. The level of reliance on inventorship rights is important because it informs the longstanding policy debate over whether the US should conform to a first-to-file system as well as for patent applicant strategy. Prior studies have considered the use of inter partes interference proceedings. However, that approach necessarily ignores ex parte prosecution.   

This paper presents a normative study of patent applicant use of invention-date rights during ex parte prosecution. Three sources inform the primary results: the prosecution history files of 21,000+ patent applications filed in the past decade; a survey of 1,000+ patent practitioners regarding their use of the novelty provisions of the Patent Act; and a collection of 11,000,000+ prior art references cited in recently-issued patents. Additional compilations of prosecution file histories for patents identified as either (1) valuable or (2) worthless supplement these data sets and allow for an evaluation of the differential importance of the novelty rights. Finally, a set of opinions from the Board of Patent Appeals and Interferences (BPAI) evidences the difficulty of proving a prior invention date.

During prosecution, most patent applicants are faced with non-102(b) prior art that could be antedated. Yet, very few applicants actually attempt to assert prior-invention rights. A miniscule 0.1% of cases in my large sample included an assertion of novelty rights that directly led to an issued patent. The process of claiming priority to a pre-filing invention-date requires that an applicant prove prior conception and due diligence or reduction-to-practice. The difficulty of attempting to prove these elements are laid-out in a set of administrative patent appeal decisions where 77% of attempts to antedate references were rejected by the administrative court.

Given the difficulty of asserting invention-date-based novelty rights, it is unsurprising that applicants are more likely to assert such rights in cases of highly valuable inventions, choosing not to waste money in less valuable cases. Furthermore and perhaps contrary to conventional wisdom, my findings suggest that individual inventors assert invention-date-based novelty rights relatively less often and less successfully than large, publicly traded companies. Lastly, a practitioner survey of 1000+ patent law professionals reveals, inter alia, a shared concern that attempts to antedate prior art leave patents open to challenge during litigation by providing “fodder” for validity challenges.

Notes:

147 thoughts on “The Relevance of Invention Date in Patent Prosecution: Part I

  1. Alright Ping, I scanned thru the two Ariad threads and all five of the Invention Date threads and could not find any post where you cited a case to support your views.

    This is not to say that you did not support your position. I just cannot find your support.

  2. Ping, I understand you to say that proof of “prior invention” requires proof of full Section 112, p.1, support in the very drawings that are sufficient to enable one of ordinary skill to make and use the invention so that a sale of a device embodying the invention would place the invention “on sale.”

    Do you have any authority to support this view? If you are right, you should have some case support.

    What about the Eaton case cited in Ariad? There the applicant described a machine that embodied the invention, but made no effort to distinguish old from new. Such a description was found lacking for a patent application, but should be sufficient to prove prior invention. Clearly, if that description were published prior to the filing of the patent application, it could be cited against the claims of the applicant. Why shouldn’t the applicant be entitled to state that the description in the reference is MY INVENTION?

    Take for example description in other patent applications. We have a right today to file a declaration to the extent that that description is that of the applicant’s.

    I have never heard once, ever, that in demonstrating that these descriptions in published references are that of the applicant we have to say more than the description is applicant’s, but to go one to say that the description meets the full requirements of Section 112, p.1. That would, on its face, be ludicrous.

    But we are met with the apparent assertion that if a reference is that of a third party that we have to do more than show proof that we invented what the third party invented first. What we have to show are proofs that amount to a patent application — full section 112, p.1, support for the claims.

    I have never heard of this. If you have a such a case please provide it.

  3. Ned,

    I say the same thing again and again: Pick up the baggage:

    If the drawings of Pfaff were sufficient to show the invention AS CLAIMED

    If the drawings of Pfaff were sufficient to show the invention AS CLAIMED…”

    Claims rule – full support is required. If you can somehow get full support out of mere drawings (and good luck doing so with 112 paragraph 1), more power to you.

  4. Ping, OK. Reference shows everything claimed. Your proof have to show prior invention of everything claimed. QED.

    But these proof do not need to show everything required to prove an effective filing date which, I think, is the natural result of Pfaff v. Wells. If the drawings of Pfaff were sufficient to show the invention was complete and ready for patenting, then they in turn should be enough to show prior invention against prior art less than a year old.

    What say you to this?

  5. Ned – you mistate my position.

    My emphasis is full support for the claim under scrutiny.

    The focal point is an applicant’s claimed invention in battle with some supposedly prior art.” – nowhere do I indicate that the prior art is anything less than the claimed invention. your attempt at shoehorning a genus/species battle is not warranted. I am simply not proffering an example along the lines of your beloved In re Stempel, which I agree is still good law.

  6. Ping, you state that a Section 131 affidavit must show support for the entire claimed invention. That was the very issue before the CCPA in In re Stempel. It was decided adversely to your proposition. All that has to be demonstrated is so much of the invention as disclosed by the reference.

    Stempel, being a CCPA desision, can only be overruled by an en banc Fed. Cir. decision or by the Supreme Court. Nothing like that has occurred. It is still good law.

    I still think you are conflating and confusing the requirements for an effective filing date and a date of prior invention. One is required by statute. The other flows out of case law as old as the United States.

    Now it would be strange indeed, and I must agree with you here, if the patent specification could constitute a constructive reduction to practice of the claimed invention but not at the same time support an effective filing date. But that apparently is the law.

  7. Maxie,

    It is on this blog that I hang out.” – now I see your problem. Nothing but ne’er-do-wells here (proudly, yet humbly including myself).

    My income depends on survival of the patents system” I think closer to the truth is that your survival depends on a particular patent system – and that particular system ain’t the US one. The US is a competitor, one in which you have an interest in seeing weakened because it is better than the blimey one you have.

  8. Perverse is exactly the word I was searching for. Thanks, ping. It is on this blog that I hang out. By the way, how is re-examination going, on some of those patents asserted against RIM. Its CEO was told he was “daft” to fight, and crazy not to take a licence.

    Look, I’m NOT viscerally anti-American, that’s just your take on my comments. Try looking at my comments and imagining that I’m simply anti anything which brings a patent system into disrepute. My income depends on survival of the patents system. I enjoy my career and I want to go on enjoying it.

  9. but evidently invalid claim

    It is my impression that this is what people mainly mean

    Maxie, you are a bit daft with your impression. I am not sure where along the line you became so anti-american, but to equate strength with ability to use an evidently invalid claim is downright peverse.

    What kind of friends are you hanging out wth?

  10. Readers, this is my reply to ping at 5.35pm.

    This started when I wrote that the USA has more corporate global titans and more Nobel science prizes, but not because of the US patent system. As far as I can recall, I did not use use the word “better”. Therefore, I continue to think that ping is challenging me to defend a position which I never took. Which is why I do not feel inclined to rise to it. This is not a political blog, or one on sociology, or economics.

    As for “stronger” patents, I will assume that we are addressing the issue of “potency”. To repeat. Europe doesn’t do c+c, or punitive damages. To “bet the farm” by working inside an issued but evidently invalid claim is a concept well understood in the US, less so in Europe. It is my impression that this is what people mainly mean, when they drool on about the US having a “strong” patent system.

  11. Maxie,

    crystal baby – shine on my difficult friend – but let me say, don’t ask me questions if your reply is going to be “I don’t understand what you are on about“.

    Your statement to the effect of “universal” provisions of patent law are full of crap. You have your blimey laws and the US has its better laws (with its better and stronger patents). Since you dodge any attempt at why you might thiink otherwise, kindly stfu, capish?

    Is that clear enough for you?

  12. ping, if I could understand what you are on about, I might reply. The thing is though, when I write to this blog, I don’t have your pseudonym in mind as my readership. You give me feeds, and then I write, if I please, with the general readership in mind. I write to amuse it, not you.

    So, “Homey don’t do answers” is just fine with me.

    Is that clear enough for you?

  13. So, ping, is…

    Maxie, like I told you before, Homey don’t do answers.

    supports my contention that patent law can be reduced to a set of legal provisions that are universal

    Yeah, I’ve noticed that you keep making that mistake and NAL keeps correcting you (for example – c+c music factory). Why are you trying so hard to bring NAL out of her seclusion? Not enough 400 count threads going for you?

  14. So, ping, is the American wd in any way comparable with Article 84 of the EPC (claims must be supported by the description) even while it serves as the US counterpart to Art 123(2) EPC (no amendment to extend the subject matter beyond that originally disclosed) and features in a Section of the US Statute which, broadly, corresponds to Art 83 EPC (disclosure of the claimed invention must be sufficient to enable the skilled person to carry it out)?

    I think this supports my contention that patent law can be reduced to a set of legal provisions that are universal, but different countries give them different names.

    I think we are lucky that, in Europe, Art 84 EPC (clarity and support) is NOT a ground on which an issued patent can be revoked. When was there ever a patent issued by any Patent Office that was 100% clear. Clarity and support is an area in which courts can lose their way, and start handing down garbled jurisprudence and confused messages. I’m all for a patent law reduced to the irreducible minimum of provisions, for the sake of clarity and legal certainty.

  15. Maxie and Ned,

    Having fun with the Ariad decision, I found the following that should help (well, “should” might be too strong of a word, but one can dream, eh Maxie?).

    The term ‘possession,’ however, has never been very enlightening. It implies that as long as one can produce records documenting a written description of a claimed invention, one can show possession. But the hallmark of written description is disclosure. Thus, “possession as shown in the disclosure” is a more complete formulation. Yet whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”

    There are, however, a few broad principles that hold true across all cases. We have made clear that the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement. Conversely, we have repeatedly stated that actual “possession” or reduction to practice outside of the specification is not enough. Rather, as stated above, it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement..” citations omitted, emphasis added.

    The baggage that Ned does not pick up can be summarized as follows: The focal point is an applicant’s claimed invention in battle with some supposedly prior art. In an attempt to overcome this prior art, the object of a provisional filing, 131 declaration, or combination is offered. The lynchpin is that anything being offered in this matter must fully support the claimed invention that remains at the heart of the matter. Ned’s rather loose “possession” seems to be devoid of the essential full support that is required.

    Not an answer, mind you – just an observation.

  16. Max,

    Yes, you do not have to put up with a niggling patent office coupled with the nuanced and imaginative arguments used in litigation here in the US. I do envy that.

    Rule of reason will never happen unless there is a dramatic change in the patent office here.

  17. Lionel, I have lost count of the number of times I have run on this site the contention that “full enablement” means one thing in the USA (thanks to FtI) and quite another in ROW (thanks to FtF). Yes, one does need in Europe an “enabling” disclosure to:

    1) substantiate a claim to Paris priority or

    2) substantiate a novelty attack, or

    3) defend a prosecution amendment.

    And it’s the same enablement concept for all three. But it’s different from US-style enablement. If you have all the time in the world to draft and file, then woe betide you if you omit to include something relevant. If it’s a race to the Patent Office, the judgement whether your app as filed is enabling is (for some Americans) surprisingly pragmatic and free of nonsense.

    I’m wondering what you mean by “full” enablement. You remind me of the former German law on obviousness. Partial obviousness enough to get 20 year patents revoked but 10 year patents go down only when fully obvious. Of course, under European scrutiny, that distinction proved untenable, so now it’s swept away.

  18. Dear ping, I’m not asked but in view of the emerging recognition that (apart from the grace period) filing date games in the USA and those in other jurisdictions are not a million miles away from one another, I will venture a comment from Europe.

    A quick and dirty pro is potentially a game winner in Europe.

    Many in the US would say that a full-blown PCT drafted in Europe is also (by US standards) very quick and very dirty. But, nevertheless it works.

    It depends what you mean by quick and dirty.

    What I mean is a filing that includes a Statement of Invention, that recites a combination of technical features that defines the invention relative to the state of the art, followed by a paragraph that tells of the technical effects delivered by that feature combination, some paragraphs that recite optional and preferred features, some brief words of description what one sees in the drawing, and at least one drawing sheet.

    The key to it all is that you have to reveal what is your invention. That is exactly what patent attorneys in Europe are trained to do. Getting good at it requires years of study, training and practice. An hourly rate for drafting a quick and dirty pro should be higher than any other task we tackle. It it like putting the chalk mark in the right place, on the malfunctioning giant machine – not everybody can do it. F & P practitioners of the world unite: get it across to your clients how your time is worth more than that of a journeyman litigator.

    But tell me, ping, Ned, others, what do you mean by “quick and dirty”?

  19. Ned,

    I see I thought I made a mistake, but I was wrong.

    Actually, I do see where you acknowledge my reading of In Re Stempel, and I did miss that. What I do not see is how you think that case helps you when the point I keep making is that you have to pick up the baggage of the invention as claimed in any of your antedating examples. The genus/species discussion is a smokescreen to the level of enablement issue, specifically the level in a provisional application.

    Do you still think a quick and dirty provisional is a good thing?

    Good for what?

  20. Oh and one more thing,

    FTF has absolutely nothing to do with whether there is a grace period in the US or not. Obviously, it will not matter for anyone intending to file overseas anyway, but Ned, if you are concerned about the ability to disclose and later claim, then you really should be pushing for the 102(a) and 102(b) rules to remain as they are. The only difference being that you could not swear behind a 102(a) reference any more. The 102(b) section can be absolutely unchanged.

  21. I just realized my last sentence contains an error.

    I was not addressing disclosures BEFORE an original filing

  22. Ned,

    I understand FTF. I believe you need to go back and review the words you posted earlier, because that was what I was addressing.

    To wit:

    “Look, we have been around this block previously. What you are doing clearly works in FTI environments but should not work in FTF jurisdictions for the reason that any new embodiments are NOT entitled to the priority date of the original filing.

    “Further, any generic claims that depend in any way on the added mater are not entitled to the benefit of the priority document. (The same is not true in FTI countries.) I would include in the class of generic claims means plus function claims that cover new embodiments.”

    Here, specifically, you were referring to disclosures occurring between an original filing and a subsequent filing claiming priority. This was what I addressed and where I believe you misspoke for all the reasons I previously stated.

    I was not addressing disclosures between an original filing

  23. Max,

    “It” referred to the inventor. Sorry, in a hurry at that point.

    It is unremarkable. You seem to be missing the point.

    Ned was saying the situations were different between FTI and FTF. He was specifically saying that an applicant’s ability to add matter was more limited under FTF. I was pointing out that was incorrect.

  24. Ping, this is what I said in my M28, 1:33pm post:

    “Ping, I see you do understand In re Stempel. You have to show the entire invention if that is what the reference shows. If not, all you have to show are the species the reference discloses.”

    You can see that I said I thought you understood In re Stempel, not the other way around. We actually agree.

    If a reference discloses a species of a claimed genus, it may be overcome under Stempel by a showing of prior invention of that species.

    Lionel, it may take you awhile to actually pause and consider what we are talking about, but in FTI, so long as a references is NOT a statutory bar, we have a right to show prior invention. This is NOT the same thing as showing the right to a priority date in a prior application. In contrast, in a FTF system (ala Europe) there only the benefit of filing date — no prior invention and no grace period. In effect, everything is a statutory bar. It is an entirely different regime. I assert many in the US do not understand the differences. Your apparent lack of understanding of what we are talking about is proof in point.

    Regarding PCT, the prior invention proofs will be good in the US national stage, but not elsewhere. Therefor, a prior disclosure of the subject matter of the provisional will kill any PCT claim that relies on added subject matter — out side the US. The same is not true in the US because we can show prior invention of the subject matter of the provisional by simply asserting the provisional is the invention of the applicants.

  25. Lionel, can we define “it” in your kind attempt at 09.37 to clarify?

    In FtF it is bog standard to file at the end of the Paris year, with all the subject matter of the pro, and more besides. In such circumstances, all those claims of the PCT get the date of the pro, that are directed to the “same” invention as that of the pro. Claims directed to the matter that is added during the Paris year, by contrast, don’t get the date of the aforesaid pro. What could be more mundane and unremarkable than that?

    But it’s not what you wrote, or what Ned wrote, is it?

  26. Max,

    Also, and I am not sure if this actually makes a difference, I do not believe Ned was limiting himself to the subsequent application being PCT in nature.

  27. Max,

    Also, and I am not sure if this actually makes a difference, I do not believe Ned was limiting himself to the subsequent application being PCT in nature.

  28. Max,

    I do not understand your comment. Ned was stating that new matter could be added between an initial application and a subsequent application claiming priority to the initial application, and the subsequent application would be entitled to priority under FTI. He was also stating it would not be so entitled under FTF. I was pointing out it would not be entitled under either.

  29. Seriously Maxie?

    Truth be told, all you need to understand is that quick and dirty provisionals are a very bad idea. Ned is simply wrong about the level of support needed, and if you bank on finding support after your provisional, but still obtaining the date of the provisional, you will be in for a rude awakening.

  30. ping now I don’t understand you. Are we not discussing what is or is not “true” under “FtF”? Ned? Lionel?

  31. Maxie,

    Consider what “all that is in his provisional” means, especially in light that there typically is no claimed invention in a provisional.

    Lionel and IANAE are correct – you are limited to what you put in the provisional. Quick and dirty becomes dirty real quick.

  32. Lionel, you write “This is simply not true” but I thought it was true.

    Ned is postulating that the inventor makes available to the public all that is in his provisional, one day after he files his provisional, and in so doing sets up prior art effective against any claim in his PCT that is not entitled to the date of the pro. Right Ned?

  33. Ned,

    If you doing a simple electromechanical device and you have drawings detailed enough such that anyone skilled in the art could create the device, then the device would be covered.

    Of course, you do realize that you will only be entitled to priority for exactly the combinations shown in the drawings. For example, you cannot try to claim priority for a subcomponent that is not separated out in its own drawing (unless you have sufficient written description)

    Generally provisionals should be as close to a fileable application as possible.

  34. Ned Heller wrote

    “It is also quite apparent that many here in the US still do not understand just how the “grace” period works. One can file an application on day 1, disclose the invention on day 2, and one year later file an application with all the improvements and goodies that occurred in the interrim period without the disclosure being effective prior art to the added subject matter.

    But not so at all in FTF. The disclosure of the invention operates as prior art to any subsequently filed new matter, or to any “old matter” that depends in any way on the new disclosure.”

    This is simply not true. At least officially – perhaps in practice practitioners and litigants can get away with such behavior – I do not know.

    Under current FTI, if you file an application and subsequently amend and modify it, any new matter is not entitled to any priority under FTI. That includes new embodiments and examples. I am not sure where you got that impression.

    When you file a CIP, any old matter that is dependent upon the new disclosure gets a priority date as of the CIP filing date.

  35. Ned, Ned, Ned,

    After you make me go through the actual work of looking at In re Stempel, all you have to say is that I do not understand it? Oh, I understand it all right. I understand that you are floundering in your own case cite. You keep on tripping over the same baggage. Just because you refuse to look down and see it, doesn’t mean that it will magically disappear. It only means that you will keep on tripping over it.

    You say “You have to show the entire invention if that is what the reference shows.”. Ned – that is my point. Try again with “the best way to understand this is to consider the exact same fact pattern except now give the cited reference a genus rather than species claim. The holding, then, would have been applied that to antedate the cited reference, the instant invention as claimed, would require full support for the genus claim. Try not to parse out the “as claimed” part of the invention.

    Somehow you think that In re Stempel supports your earlier view, that’s why you brought it up. I have shown you that it does not support your view and all you can do is repeat what I told you and then I don’t understand it? Keep in mind that “entire invention” means “entire invention as claimed.” As noted to Maxie, there is only one level of enablement, and as noted in In re Stempel, people often “unnecessarily confuse two distinct propositions of law”. Sloppy case inclusion and sloppy analysis of my analysis. If you really want me to play your game, you cannot be so sloppy. I am only too happy to return to my witty one liners about sharks with laser beams.

    Your hypo still sucks too. You did not address the shortcomings I pointed out with the white paper (think timing). And you have now added because the claim also includes the novel car elements. that were absent in your first post of claim 2: “Claim 2 is to the process of making the car glass with the preferred process.” With best mode info is how to make the glass, a known process, outside of the claim. Conspicuously absent from your initial post is any such inclusion of novel car elements in the claim 2 process.

    Even though I have pointed out to you that you are making a glaring and fundamental error, you continue to proclaim that “In the US currently, proof of prior invention does not require full Section 112, p. 1 support, only a demonstration of possession plus diligence, and/or a reduction to practice, which includes the filing of a patent application on the conception documents.”. which is dead wrong, or at least seriously misleading – as shown by In re Stempel where full disclosure to the level (species or genus) of the claimed invention is needed to match the level of the cited reference. You keep on parsing out the as claimed from the “invention as claimed” in trying to talk about “invention”. Possession of what – Ned? The same thing that you achieve with your priority date is the limit of what you will achieve in your showing of posession. That is the baggage of the claimed invention you keep tripping over.

    There is no invention without the claims, because it is the claims that define the invention, and you in fact do need full Section 112 p1 support to whatever level of “claimed” invention that you are antedating, be it genus or species.

    I say misleading because while you parse out “invention as claimed”, you sneak back into your statement filing of a patent application as a reduction to practice showing your demonstrated possession, and you may be trying to slide in the full required support in such language of demonstrated possession without admitting that such language defeats your earlier premise. – That early premise was something about how a quick and dirty provisional with just a drawing would suffice. Oh yeah: “ Now consider that a provisional application, even if it does not have full written description support of the invention, might still be sufficient to show a constructive reduction to practice of the invention prior to the reference. The quick and dirty provisional may still have some utility in the United States so long as we have first-to-invent.

    Back to square one Ned. Don’t make me write long posts like this again.

    IANAE is correct yet again – you will need to rely on the strength of your provisional because that will limit both your priority date and your antedating possibilities. Anything else is simply unsupported [pun intended].

  36. But, what is certain, the provisional is better than nothing, which is the only other option.

    I can’t disagree with that. However…

    In our company, we had patent committees that could take up to six months to even approve the filing of a patent application. Assuming 3-6 months to get the patent application on file, that put us near the one year anniversary of the provisional. We then filed PCT, not US.

    There’s your problem right there. If patents are important to a company, there’s no excuse for inventions to languish in committee for six months. And if you’re filing PCT you clearly have some FTF/absolute novelty countries in mind, so you should have even less tolerance of a bare-bones “proof of inventorship” provisional that won’t get you a filing date before you feel free to disclose the invention. Inventors should not blame the law if their inefficient internal procedures result in a loss of priority.

    I hope you won a lot of interferences on the strength of your provisionals and it was all worth it.

  37. IANAE, what I would do and what I had my company actually do is file a provisional on the invention disclosure and then do what was necessary to spend the money and effort to file a patent application. In our company, we had patent committees that could take up to six months to even approve the filing of a patent application. Assuming 3-6 months to get the patent application on file, that put us near the one year anniversary of the provisional. We then filed PCT, not US.

    Now we know that 7 times out of 10, the provisional may not be sufficient to get us an effective filing date, but it might be enough to prove prior invention. That is good enough to remove references and to win interferences.

    But, what is certain, the provisional is better than nothing, which is the only other option.

  38. The major difference, IANAE, is that now we can simply file the drawings.

    Sure you can. But as we’ve discussed at length, that’s still a bad idea even under the current system. Your filing date is also important for overcoming prior art, and you don’t get one of those (that you can defend in court) without a half-decent provisional. Look at this case, where the patent was invalidated for want of a priority date even though earlier inventorship could not have been in question.

    I understand that people are in a hurry to show off their cool new invention, but if patents are important to them they need to take a little bit of time to make sure their patent application is in order. When would you ever advise a client to submit only a set of drawings as a provisional, unless it was absolutely the last minute on the day before he was already scheduled to disclose the invention and he literally had nothing else relevant in any condition to file?

    I submit that most of these problems only arise after the fact, when people try to argue their way toward priority or prior inventorship based on provisionals they surely knew at the time were woefully inadequate. Ounce of prevention, and all that.

  39. The major difference, IANAE, is that now we can simply file the drawings. In a FTF system, we need to write the patent application, which takes money and some time.

    Other than the money and time, the two systems are in reality fairly equal. But money and time are important in the race to the patent office. Time is important to everyone. Money is important as well, but more important to the small business and inventor.

  40. Under FTF (US variety, and assuming the new statute retains the requirement of full Section 112, p. 1 support for a benefit claim), claim 1 fails because the priority claim fails:

    … because the provisional fails.

    Had the applicant known at the time that he was filing a provisional in a FTF jurisdiction, he’d have done a better job than simply substantiating that he invented some undisclosed thing by showing a picture of it. You don’t need a $40k provisional to do that either, and you don’t need claims. You just need to explain what you invented in sufficient detail.

    You can’t say FTF is bad because people’s FTI-based habits would get them into trouble. Same goes for those small business owners who feel the need to tell everyone their invention without NDAs so they can get funding or whatever. People will need to adapt if the law is changed, but that in itself is not an argument against changing it.

  41. Ping, I see you do understand In re Stempel. You have to show the entire invention if that is what the reference shows. If not, all you have to show are the species the reference discloses.

    Back the car example. I assume the white paper describes the car, how to make it and how to use it. However, the glass process disclosed in the drawings is not the one disclosed in the non provisional. Also assume the glass process is not disclosed by the competitor’s car. The glass process they used is uncertain.

    Under FTF (US variety, and assuming the new statute retains the requirement of full Section 112, p. 1 support for a benefit claim), claim 1 fails because the priority claim fails:

    1) the provisional, consisting of the drawings, do not have a written description of the invention even if they have a description of how to make and use;

    2) the provisional does not disclose the best mode for making the car (assuming the use of the one process rather than any other was known at the time of filing of the provisional);

    3) claim 2 is not disclosed at all in the provisional, so claim 2 falls even if, for some reason, the provisional is deemed to provide sufficient support for claim 1, as it might in Europe: In Europe, without a strict Section 112, p. 1 requirement, the provisional application might be sufficient to support the claim to a car in the non provisional.

    In the US currently, proof of prior invention does not require full Section 112, p. 1 support, only a demonstration of possession plus diligence, and/or a reduction to practice, which includes the filing of a patent application on the conception documents. For this reason, either the drawings or the provisional will show prior invention of the claim to the car, and their filing as a provisional will add the constructive reduction to practice proof — thus removing both the white paper and the competitor’s car as references to the claim to a car.

    Now the case of claim 2 is a bit of a problem. I would argue that In re Stempel applies. If so, the provisional removes all car references. Claims to the car’s glass made by a particular process would be patentable because the claim also includes the novel car elements.

  42. Maxie,

    Rather than an apology which is not necessary, I would rather see you give an answer to Ned’s question about making the stonger US patent better or an answer to my question of why is the US better.

    Both would please me.

  43. Maxie,

    No big deal – this is fun so there is no reason to be upset over any admonition. You are taking this way too seriously if what I say upsets you. Either that or you are misplacing your feelings (you realize that you are wrong and you are transfering the anger to me).

    Ned,

    A point of clarification in your hypo – you state that the process of making glass in claim two is known. I take this statement to mean that it is old in the art and thus not patentable. If that is so, then in neither system, would claim two survive (if independent from claim one), as you have added nothing to the mix (the “for a type of car” not being a sufficient limitation – intended use of a known thing).

    Your hypo is also unclear in that details of the white paper being published are not clearly stated – Does the white paper have all pertinent information (e.g., glass process)? Is the white paper published before either sale? Since provisionals are not published, the provisional will not impact the white paper (I think).

    Not answers, mind you – just observations.

  44. Okay the Baseball. Have you ever taken one apart. To see what is inside? So what are you going to put inside that is “DIFFERENT?”To apply at least thae same result.
    Same is nothing.
    I can put wax paper or saran wrap to produce that same result with the same insides in a microwave. And I can even alter the insides in definition and get the same result with the same inside in the Microwave. AND?

  45. But if someone discloses a Baseball with “different material,” that makes it better.

    Utility isn’t enough to get a patent. You still need novelty.

  46. I happen to think the Baseball is fine as it is. But if someone discloses a Baseball with “different material,” that makes it better. Well then that should take uUTILITY into account.

  47. I had a suspicion that Ned’s point might have been the banal one, that a prior art disclosure of the general (say, metal) doesn’t necessarily deprive of novelty a later claim to something specific (say nickel-titanium shape memory alloy) whereas a prior art teaching of NITINOL is definitely enough to deprive of novelty a later claim that recites “metal”. I suppose this is the same point in the USA, under the terminology genus/species?

  48. dammit Ned, you made me do some actual work. And because of that, I have not looked at your preceeding hypo.

    However,

    I observe (note that this is NOT answer, as Homey don’t do answers), that after I take the dust off of the 1957 In re Stempel case, that that case speaks to a different point – the Genus/Species debate and specifically overcoming a species as given in the cited reference (the reference lacking the genus).

    I find these paragraphs especially telling:

    The much quoted statement from this court’s opinion in In re Steenbock was nothing more than a reiteration of the then well-established rule that, in composition of matter cases, “the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining generic claims, although the disclosure in an application of a species may not be sufficient basis for a generic claim,” (which seems to be an unnecessary confusion of two distinct propositions of law).

    The metamorphosis of this statement, through repeated application to unrelated problems without due regard to the circumstances of its origin, into the proposition here applied by the Board that a Rule 131 (or 75) affidavit, to support generic claims, “must show as much as the minimum required by [of] a patent specification to furnish such support,” without any regard for what the reference sworn back of discloses, is wholly unwarranted.

    What the Board is here saying, in effect, is that the invention, the completion of which must be shown by a Rule 131 affidavit, is the invention defined in the claim the applicant is asking for and, if it is a generic claim, prior completion of the generic invention must be shown, whether or not the reference discloses the generic invention. “

    This speaks only to the comparison of content of the reference to be overcome – and is not a dismissal of the invention “as claimed”. Sufficiency of a generic’s claim support works against your stand, not for it.

    The best way to understand this is to consider the exact same fact pattern except now give the cited reference a genus rather than species claim. The holding, then, would have been applied that to antedate the cited reference, the instant invention as claimed/b>, would require full support for the genus claim. In essence, you are repeating the converse of the metamorphosis mistake, which in itself is still a mistake. You have over-applied the case and are trying to have it say something it simply does not say.

    The baggage is still there waiting for you to claim it. [pun intended].

  49. Ned, two questions, if I may.

    1. How is it that claim 1 fails?

    2. Am I to assume that the car of claim 1 is a particular car, or that the invention is the “car” as a concept, as such? If, prior to the pro filing date, how to make the glass was known, and a “car” as such is known, how can claim 2, even under FtI, and as of the pro filing date, be anything other than obvious?

    Seems to me then, that under both systems claim 1 is tenable but claim 2 not.

    But then I would say that, wouldn’t I?

    ping, you win. As you say, I’m the lazy one. All the same, I’m a bit upset by your admonition to:

    “stop horning in on my role as the lazy one”

    because I had not appreciated that I had even started.

  50. Hypo for ping:

    Invention is a car. Drawings are complete. They are filed as a provisional. The car is then sold and a white paper published.

    A competitor then sells the same car to the public.

    Within a year of the filing of the prov., the inventor files a non provisional with a full written description. The description adds critical best mode information not in the drawings. The best mode info is how to make the glass, a known process, but not the one described in the drawings.

    Claim 1 is to the car.

    Claim 2 is to the process of making the car glass with the preferred process.

    Examiner rejects both over the competitor car and claim 2 in view of the known process.

    In the US, prior invention maintains all claims. In a FTF system, ALL claims fail.

    Why?

  51. Ned,

    Can you read it for my and outline the points that you want me to understand?

    I have way overextended myself with Maxie (on your behalf), so you owe me.

  52. And Maxie,

    I note with a smile that you are so eager to accept good ‘ol Ned’s propositions when they suit you and ignore his questions to you when his propositions do not.

    I am specifically thinking about the non-answer of yours when Ned asks you why or how the stronger US patent is made better by this proposed change to FItF.

    Answers like “easier”, “less complicated”, and “harmonization” are not answers as to why or how the stronger patent is made better – they are answers as to why others want the system to change for the system’s sake with allegedly “no” or only some small detriment to the patent. There has not been an answer to Ned’s question as to the patent’s sake.

    Why such selective adherence?

  53. Ping: “You cannot separate invention from the claimed invention, no matter how many times you parse the phrase to make it roll off the tongue, the as claimed is always there. Trying to ignore that one small bit at a time or not is still ignoring it.”

    Read, in re Stempel. Then let us discuss further.

  54. Maxie,

    A quick reaction without substance is as about as useful as being wrong in a tenth of the time, and repeating that being wrong ten times.

    About enabling, rather than repeating the nonsense of what you read (without checking the veracity), spend some time and research to give me credible answers (and stop horning in on my role as the lazy one).

    Take your time and unleash your imagination.

    For example, think about the Quid Pro Quo. You like many others have no qualm about taking the quo and making that quo public before full consideration of whether quid will follow or not. Hey, more power to taking all you can get and then, maybe, and maybe much later, doling out some quid. If the suckers want to play by that deal, they will play. It may affect some people’s sense of fairness and equity that quo is taken and published no matter what (with samll limitations as previously noted), but the system is voluntary, is it not? A crooked deal is still a deal.

    Your assertion that the patent system is not the reason why America is better is noted. It is also noted that you give no reason why America is so much better. Most people will not create, and maintain, a logical vacuum. What then would you fill in the place of the patent system? With no small enjoyment, I would love to hear from this Brit why America is better.

  55. Thank you both, Ron and ping. In haste, a quick reaction:

    Ron, thanks for the link. You say I have failed to identify any flaw in your reasoning. Where we are both handicapped is that neither of us knows what would happen, if American courts and patent lawyers (and their clients) were suddenly to be deprived of current US patent law and given instead the patent law of the EPC (or if mainland European lawyers were suddenly required to function within the framework of the substantive patent law of the USA).

    My imagination is limited, because I only know FtF in a jurisdiction where there has never been anything else. Why are US patent apps so much lengthier than those written for Europe, when the revocation of one of those compact European ones, in litigation in Europe is as rare as a hen’s tooth? My explanation for the difference in specification length is the First to Invent system. My impression is that the extra length brings no benefit to the reading PHOSITA, but might to the legal profession.

    The longer time it takes, before the FtI app is PTO-published is detrimental to the progress of useful arts. Where I come from, the PHOSITA does actually scrutinise emerging A publications, for the fresh contributions to the technical field that they contain.

    ping: I have read elsewhere in this blog about a double standard in the area of sufficiency and enablement. For a prior disclosure to be a novelty destroyer it must be enabling (I had thought). Support for your own claim has to be enabling/sufficient. But are the two standards exactly the same? Sorry I can’t pin down with any more specificity the point that is sticking in my memory, but Ned Heller will know what I am alluding to.

    As to the quo, I would just repeat what others have written earlier. Either there is a contribution in your app, or there isn’t. If there is, you can patent it. Perhaps one in five hundred apps at the EPO is finally refused. If there is no contribution, there is no quid.

    Yet again, I will assert that the US patent system is not the reason why America has more Nobel science prize winners and global titan tech companies than other countries. The EPC is not the reason why Europe has less.

  56. In particular, I’m attacking the B jurisprudence that results in two standards of enabling disclosure; the lower one that is good enough to destroy the apps of others vs the higher one that is needed to support one’s own app.

    Maxi,

    Not sure what you mean by this statement.

    Specifically, what is the enabling disclosure that you speak of that destroys the apps of others and how is that enabling disclosure different in standard?

    Per chance are you confusing enablement as a statutory requirement for a solitary application and the novel/obviousness standard when comparing an application with either another application or prior art? I’m pretty sure that teh law and rules do not have more than one level of enablement.

    Also, do not forget that the US Patent system still has the capability of withholding the quo (or preserving non-publication as you might also consider putting it) for the life of the examination with a non-publication request. Your comment of “no 18 month black hole. All to the good kinda gives away which side of the fence you are on in the quid pro quo scene. I hear you bro’ on that one – take the quo as early as you can!

  57. MaxDrei,
    We have been through this discussion on the purported benefits of early disclosures you cite. You have made these points before, and you received detailed responses explaining where your assumptions are wrong and what you seem to continue to ignore. You have never addressed the substantive points I raised and have never pointed out flaws in my reasoning. Read my previous response to you again: link to bit.ly.

  58. I think we need to distinguish in patent law between concepts (A) that are universal (and useful), and those (B) that are a feature of the US patent law landscape that are superfluous and complicate it unnecessarily.

    In particular, I’m attacking the B jurisprudence that results in two standards of enabling disclosure; the lower one that is good enough to destroy the apps of others vs the higher one that is needed to support one’s own app.

    Seems to me that the grace period is useful only for an inventor with an idea, not yet enabled. (If it were enabled, it would be ready for filing at the PTO). I understand that some inventors need to approach companies. Otherwise, they can’t get as far as enabling their brainwave.

    Some contributors to this thread are of the opinion that what society should reward, with a 20 year monopoly, is a brainwave, the earliest conception as opposed to the earliest reduction to practice. I see a parallel here with copyright law, the idea and the expression of it. I’m of the view that the ideas will come, patent system or no, that the hard part is enablement, and the patent prize should therefore go to the enabler who is first to the PTO. Good grief, in Europe it takes precious little enablement to support a valid patent, an amount well within the compass of an isolated but imaginative engineer with a clever new and useful idea.

    So, I still don’t see why society needs to accept the murderous complexity of a grace period.

    One more thing though. This “first to publish” lark is an awfully clever riposte to those who advocate FtF over FtI. For it gets the enabling disclosure out to the public with no delay at all, and who does it reward? Why, that first discloser. Good, no?

    With FtF the delay is 18 months till the A publication. With the present FtI and a grace period it’s 30 months or more. Zero delay, and no 18 month black hole. All to the good, no?

  59. IANAE:
    It is clear that we come to this debate from different experiences. Ping touched on this disconnect and I will rephrase and sharpen it.

    You apparently still don’t get it. You appear to have no clue about how bootstrap startups must often operate during the first year, during which your option 1 is cost prohibitive for every new idea in development and your option 2 is unavailable for those who need to raise investments to survive. I repeat for your benefit what I explained above in this thread:

    Small businesses and startups are significantly more exposed than large firms in this regard because they must rely on far greater and earlier disclosure of the invention to outside parties. This is often required for raising investment capital and for establishing strategic marketing partnerships, licensing and distribution routes. In contrast, large firms use internal R&D investment funds and their own marketing, sales and distribution chains. Therefore, they need no early disclosure of their inventions to outside parties.

    The publication may not be only by the “big scary companies.” I have seen too many instances where information on a hot new technology developed by startups, found its way into the public domain by trade news publications. These often appear as descriptions of the results and speculations as to how the new invention might be working. You appear to dismiss such references as prior art, but will you advise your clients under KSR to ignore such a prospect and take advantage of the weak grace period in S. 515? I doubt it. You would probably recite your two-option list above, which would do no good to many small business startups. You might have done this even under current law, which is probably why you have no such clients.

    It is clear that we come to this debate from different experiences. I have encountered the problems myself when public reports of my first startup’s technology surfaced right after we have had our roadshows for potential investors and potential strategic partners. This was understandable and perhaps inevitable considering how investors perform their due diligence. They cannot keep it to themselves. They must ask experts and industry gurus, who are often the source of the leaks. However, by that time, we had filed a patent application only on one aspect of our system, not having the investment resources to do the simulations required for its full operation and having no funds to engage counsel to prepare and file other applications, although we had pertinent development records. Without being able to rely on these development records and the grace period, we would not have been able to safely engage and succeed in raising our Series A funding round.

    The patent system is not used in the same way by everyone. It is most important for the little guy and the early entrant. Patent law should protect and accommodate the legitimate needs of those who most depend on it. IANAE, is this concept so hard to understand?

  60. IANAE,

    That’s easily avoided by the independent inventor (1) filing a patent application, and (2) not telling anyone his invention before he does.

    You have walked directly into the Ron K trap.

    His extensive slideshow expressly shows that these two steps you propose as “easy” are exactly what is wrong with the proposal (and just for jakes, Mr. Heller will ask again what is the benefit to the US applicant for making the change – you know, that benefit that we will be even stronger than the rest of the world when we have the same system that the rest of the world has).

    For 1), Ron will tell you that the filing of patent applications that would need to be undertaken in the change of system are prodigious, costly, and too time consuming (time is money) for the small entity. There will also be the inadvertent side effect of deluging the patent office with even more applications having even lower quality. Hardly a win-win combination.

    For 2), Ron will tell you that “not telling anyone” is exactly what will hinder a small entity who must tell others in order to drive capital. It is just such advice that suits the “big clients” with enough internal resources to play the sport of kings, that such advice suits and directly (and negatively) impacts your far less important small-entity patent applicants.

    And when did it become the national pastime to make up random crazy opinions about me not listening?

    Worth repeating: “Big clients [are](the ones with most of the really valuable inventions that would create the most liability if lost).

  61. A third party publication dated after your invention date within the year before your filing date will count as prior art. It may be non-enabling to support allowance of a claim but entirely adequate to enable anticipation of your claim. In re Hafner, 410 F.2d 1403, 1405 (C.C.P.A.1969).

    Have you read In re Hafner? It does require that a reference enable making the invention, but not necessarily how to use it, in order to anticipate. Not an earth-shattering revelation, and not enough to allow your proposed “non enabling disclosures of speculative “paper inventions””.

    And even if In re Hafner did say what you thought, companies could do that now and FTF wouldn’t be the source of the problem.

    An inventor can antedate the reference by corroborated evidence of prior invention and diligent reduction to practice.

    Yes, but only if he can actually show prior invention. You seem to be describing a case where big, scary companies know that someone has invented something but not yet filed his (as yet unpublished) application, so they go around disclosing that invention to pre-empt his patent. That’s easily avoided by the independent inventor (1) filing a patent application, and (2) not telling anyone his invention before he does.

    If big, scary companies are going to go around disclosing speculative things without specific knowledge about someone’s prior invention or lack of unpublished pending application, that’s something they can do already.

    I have explained above why small business startups who make business decisions every day about early private disclosure and how best to save every $20k-$40k that would otherwise go to a premature patent application during their first year, often have no alternative but to rely on the current grace period. It is apparent that you do not understand the plight of small business startup patentees,

    Do these startup patentees have anything worth patenting at all? If it’s worth building a business around an invention, and someone else is going to consider that business worth funding, surely filing a patent application isn’t “premature” at that stage.

    More importantly, if they’re not actually disclosing their invention to the public, how is a big scary company going to know to disclose that same invention just to grief the poor, oppressed independent inventor?

    as you apparently believe that none exist to legitimately claim the special relief provided by law for small entity fees.

    When did it become the national pastime to make up random crazy opinions and attribute them to me?

  62. believe that none exist to legitimately claim the special relief

    Darn tootin’. IANAE says “Big clients [are](the ones with most of the really valuable inventions that would create the most liability if lost)“.

    We should obviously gear the system to the wishes of the big clients who have the really valuable inventions (or will when the patent system is rigged).

    I for one, listen to IANAE. More people should. He has the answers.

  63. IANAE: ”What part of S. 515 makes non-enabling disclosures prior art?”

    Answer: The part of S. 515 that makes your filing date the controlling date. A third party publication dated after your invention date within the year before your filing date will count as prior art. It may be non-enabling to support allowance of a claim but entirely adequate to enable anticipation of your claim. In re Hafner, 410 F.2d 1403, 1405 (C.C.P.A.1969).

    IANAE: Why is this tool “new”?

    Answer: Because under current law such publication does not count as prior art. An inventor can antedate the reference by corroborated evidence of prior invention and diligent reduction to practice.

    IANAE: If the grace period is not an effective grace period, let’s all ignore it like we do small entity fees and all the other dubious and highly conditional optional benefits of the law

    Answer: You and your clients apparently can afford to ignore the grace period and file many more applications. I have explained above why small business startups who make business decisions every day about early private disclosure and how best to save every $20k-$40k that would otherwise go to a premature patent application during their first year, often have no alternative but to rely on the current grace period. It is apparent that you do not understand the plight of small business startup patentees, as you apparently believe that none exist to legitimately claim the special relief provided by law for small entity fees.

  64. a new patent blocking tool to incumbent firms, who by preemptively publishing non enabling disclosures of speculative “paper inventions” including desired results, will bar patents of real first-inventors.

    1) What part of S. 515 makes non-enabling disclosures prior art? Other than on-sale events, which already are, but don’t start the clock until you can make an enabling disclosure.

    2) Why is this tool “new”? The only real obstacle to using it now is that your disclosure might coincidentally find itself wedged between someone else’s invention date and their filing date, but surely it’s still worth a try. Oh, and you’d wind up anticipating a lot of your own patents, if the invention is at such an early stage.

    This can’t be what people are really afraid of in FTF. If the grace period is not an effective grace period, let’s all ignore it like we do small entity fees and all the other dubious and highly conditional optional benefits of the law. If you want a patent, file a patent application.

  65. Yes, Max, it is all about the grace period, which is measured from the date of invention. This argument is all about an invention date-based versus filing date based priority system and that is what we’ve been saying all along. It is not about the 70 cases out of 460,000 per year where two applicants are contesting the first-to-invent. Nor is it much about the 3,200 cases per year of Rule 131 filings, as I explained above. It is about the pre-filing effects on everybody.

    What is being proposed in S. 515 is a “grace period” measured from the date of an enabling publication, which no small business startup would be able to rely on. You and others have already pointed out its perverse effects and that it is no closer to the European FTF system than our current FTI system. If enacted, it will provide no real grace period to small business startups, and a new patent blocking tool to incumbent firms, who by preemptively publishing non enabling disclosures of speculative “paper inventions” including desired results, will bar patents of real first-inventors.

  66. Ned, thanks for:

    “What is becoming increasingly apparent to me is that practitioners in FTF countries are operating as if they existed in FTI countries.”

    because I think US corporate Applicants already operate as if they are in a FtF jurisdiction. So that’s nice and symmetrical.

    Thanks Ron for giving the dates of the EPO data. Prior to year 2000 there was no EESR (if I remember correctly). So that’s another issue cleared up.

    Sorry both. I had thought we were debating FtF vs FtI but now I see it’s really about “Grace Period, Y or N”. I do agree that those academics and individual inventors who choose to put their faith in the grace period behave differently, when it comes to timing the filing of their patent applications.

  67. Thanks Ned – Homey don’t do answers.

    I will observe though, that you again parse the phrase: rather than “proving prior invention by conception“, use proving prior invention as claimed by conception.

    You cannot separate invention from the claimed invention, no matter how many times you parse the phrase to make it roll off the tongue, the as claimed is always there. Trying to ignore that one small bit at a time or not is still ignoring it.

  68. ping, as I said, we have no recent cases exactly on point. I did a quick search and could find none.

    Let’s break it down into small bits. One point at a time.

    But, ping, do you agree that in proving prior invention by conception (plus diligence) that one does not have to demonstrate full section 112, p. 1 support in the “conception” proofs?

    I’ll check back for your answer tomorrow.

  69. are you deliberately misuderstanding me?

    No. The misundestanding was genuine. I thought you were making a proposition that the provisional, on its own, was all that was involved. I misread your 7:55 PM post, not understanding to add that every element of a non-provisional claim is supported. Your 08:45 post only appeared after my 8:46 post.

    My bad.

    All I would have to show is that all elements of my claim are supported in the drawings in either case.

    Your bad – this is what I have been saying. This is the baggage – full support of the claims in the provisional. However, I think we are still not talking the same thing in so far as what that support means: “whether the invention was described sufficiently or whether one taught others how to make and use it are not criteria for proof of prior invention.

    As “invention” is only as good as the claimed invention, sufficient description and make and use (since en banc deamnds that both are in 112 paragraph 1) are required for support, else the link to “claim” fails.

    Ned, you already have your train ticket in hand. You just don’t realize the baggage of “claim” that you are holding in the other hand.

    All aboard.

  70. Huh, are you deliberately misuderstanding me?

    It is a given here that the provisional has only drawings, no description and no claims. The non provisional is under examination. The rejection is made there. The prior art is a white paper that describes the claimed car. The white paper’s publication date is after the filing date of the provisional and less than a year before the filing date of the application containing the claim under examination.

    Clearer?

  71. Is my provisional enough to prove prior invention of the car against my own car, cited as prior art, sold after the filing date of the provisional?

    Further, in your own hypo, since the provisional is not examined, there would be no “cited as prior art“, now would there? You have again left something critical out of the equation, haven’t you? Something that would entail actual citation and examination.

    Now what could that be?

  72. Ping, now I know we have not been communicating. Perhaps it is my fault.

    What I am talking about are claims in any patent application filed one year or less from a priority application with respect to inventions where the inventor is entitled to prove prior invention. (Back in the old days, a lot of the Section 119 case law developed in an era where prior invention could not be proved outside the US.)

    So, in the application with a claim to the car, the examiner rejects based on my prior disclosure of the car in a white paper. That white paper is less than one year prior to my filing date. However, the white paper is published after the filing date of my provisional. The provisional consists of drawings that enable one of ordinary skill to make and use the car. No more description and no claims.

    I contend that I can prove prior invention of the car to antedate the reference by filing a 131 affidavit consisting of the drawings; or by referencing the drawings in the provisional. All I would have to show is that all elements of my claim are supported in the drawings in either case.

    Now, I am aware of no case law where a 131 affidavit showing only the drawings without more, such as diligence to the filing date, is sufficient to prove prior invention. But I would argue that Pfaff v. Wells mandates that result.

    Now, if the white paper, or a sale, took place more than one year prior to the filing date of the application containing the claim under rejection, I can no longer prove prior invention with respect to THIS application. Here, my provisional must have full section 112, p. 1 support to give me an effective filing date less than a year subsequent the white paper date. But I still would need to show prior invention from the provisional to antedate the white paper.

    Hope this helps clarify my point.

  73. Ned,

    How many claims are in your provisional?

    Are claims in a provisonal really claims (are they examined)?

    None of the cases you have cited have used any such “claims” from provisionals – all the cases trace the claimed invention back to good ‘ol non-provisional claims.

    Hey ping, I thought I did.

    You thought wrong. – go pick up the baggage before getting on the train.

  74. Ron, I totally agree.

    It is also quite apparent that many here in the US still do not understand just how the “grace” period works. One can file an application on day 1, disclose the invention on day 2, and one year later file an application with all the improvements and goodies that occurred in the interrim period without the disclosure being effective prior art to the added subject matter.

    But not so at all in FTF. The disclosure of the invention operates as prior art to any subsequently filed new matter, or to any “old matter” that depends in any way on the new disclosure.

    So to see the Euros operating as if they were filing in the US, adding a host of new matter in the PCT, and then assuming that this does not affect the claims in the PCT in any way is a wonder. What actually happens in Europe is probably what actually happens in the US. Once the EPO application is filed, the invention is publicly disclosed in some fashion through products or papers. This may cause a lot of damage to the PCT.

  75. Hey ping, I thought I did.

    So I claim a car. My provisional comprises the drawings that enable one to make and use the claimed car. Every element is supported.

    Is my provisional enough to prove prior invention of the car against my own car, cited as prior art, sold after the filing date of the provisional?

    I say it is.

  76. Ned, I suspect that you are right. There is more support for your conjecture. Note that foreign (WTO) applicants do not shy away from availing themselves of declarations under Rule 131.

    Examination of patent disputes suggests that FTF proponents overlook the role of U.S. patents in international patent portfolios, in which the U.S. patent is often the central pillar. When a U.S. patent is part of a patent family, validity of the foreign counterpart patents in the family is often not litigated. Many disputes focus on a challenge to the U.S. patent and often settle across the full international patent family, based on analysis of the U.S. patent only, because that is where the dominant economic value lies. Thus, since the FTI U.S. criterion is effectively controlling, many owners of foreign patents procured under FTF actually have had very little experience in evaluating the full effects of FTF on international patent portfolios.

  77. Ned,

    You still have not addressed the matter of “claims“, as in, the claimed invention.

    You cannot get on the train without the baggage.

  78. Max, adds density? New embodiments? Ugh!

    Look, we have been around this block previously. What you are doing clearly works in FTI environments but should not work in FTF jurisdictions for the reason that any new embodiments are NOT entitled to the priority date of the original filing.

    Further, any generic claims that depend in any way on the added mater are not entitled to the benefit of the priority document. (The same is not true in FTI countries.) I would include in the class of generic claims means plus function claims that cover new embodiments.

    What is becoming increasingly apparent to me is that practitioners in FTF countries are operating as if they existed in FTI countries.

  79. Max,
    Your point of having 21 years versus 20 years is hardly a consideration for small business startups. Their major focus during the Paris year is getting funding and building a company. Whether that company (should it survive) would have, or not have, another year at the patent’s end of life is never a factor.

    I did not misunderstand you. Whether or not it aids in meeting Section 112 requirements, there are advantages for more time before an application is filed. You identified some of these advantages. What you call “the extra stuff that emerges during the Paris year” can be obtained and assembled under FTI’s grace period, without having to file immediately. One would do so because, as you said, “it adds density, and it would be foolish not to fold it in to the app. because at that stage you never know which embodiments will prove to be of most commercial interest, or deliver the best leverage over the yet to emerge closest prior art.” These are benefits that are essential to patent protection. Did you not understand the concept of having a grace period Max? Do you not see that by having to file only one application, I can be at the same improved patent position that you achieve at the end of the first year after having filed two applications in an FTF system?

    As to what is meant by the first EPO Office Action, the data provided by George Lazaridis, which I cite, correspond to EPO filings during 1997-1999. It means the actual office action on the merits after the applicant had received and responded to the “first advisory communication.”

  80. ping, I do not recall seeing any recent case on legal sufficiency of the disclosure in a patent application to demonstrate prior invention. However, generally, one demonstrates prior invention by demonstrating conception plus diligence and/or a reduction to practice. The conception part must include enough to show possession of the invention.

    I am sure that if one has drawings sufficient to enable one of ordinary skill to make and use the invention, that one has “conception” of a completed invention so that a sale is enough to put the invention on sale. See, Pfaff v. Wells. What is missing from the drawings is a formal reduction to practice. Is that still necessary after Pfaff v. Wells. Should not a demonstration of the drawings alone be enough to prove a date of invention per Pfaff v. Wells so that we could then suspend the further requirement of proof of reduction to practice or diligence to a filing date?

    Regardless, if one files the drawings in the patent office we additionally have a constructive reduction to practice. Should not this additional step be enough to give us a provable date of invention?

    Anywho, I do no recall any cases on this point since Pfaff v. Wells. That case came down in 1998, so the issue still is relatively new.

  81. Ron, I don’t follow you, when you write:

    “It is under the FTF system that we see many more instances where there is no ” opportunity to add, [ ] all the extra detail, further embodiments, variations, modifications to the inventive concept [ ] that they have reduced to practice”, which are absolutely necessary to support a claim under § 112 in the U.S. It is under the U.S. grace period that applicants are “given a chance” to do so”

    My insight at 1.52pm was that rational behaviour from an Applicant is to take the 21 years available under Paris, and bring the app to top form at the end of the Paris year, but aim to ensure that as many claims as possible get the prio date (as opposed to the date at the end of the Paris prio year).

    If the inventor has nothing to add, through the Paris year, then keep going with the app (US regular, or EPO) filed at the beginning of the Paris year, which necessarily has full 112 compliance. You misunderstood me. The extra stuff that emerges during the Paris year is added not to meet 112 but just because it has arrived during the Paris year, it adds density, and it would be foolish not to fold it in to the app. because at that stage you never know which embodiments will prove to be of most commercial interest, or deliver the best leverage over the yet to emerge closest prior art.

    Will you clarify a point: what do you mean by the first EPO Office Action? Since these days the first communication from the Examining Division is a computer-generated form letter, i’m guessing you don’t mean that. But then you must be talking about the EESR, the Extended Search report, which includes the opinion on patentability, to which the FAOM refers back. But the EESR issues within a few months of filing the app., in time to take it into account when writing the PCT, and then abandon the prio EPO app.

    My point above is that FtF and FtI are equally accommodating to inventors. In both systems, one files once (US regular, or PCT) and does it properly. But then you get 20 years. Why not use Paris, and get another year to explore the invention further and gratuitously increase the density of the disclosure in your app, and extend the expiry date of the patent term by another full year. The choice is the inventor’s, and it’s the same choice whether she is in FtF or FtI country.

  82. Lionel Hutz: “The most likely reasons that those filings are dropped less is that they are filed in view of a previous search report or office action in the priority app

    That may be so for only a fraction of second filings. Many of those EPO applications claim priority from national first filings wherein no search reports or office actions are issued prior to the second filing within the Paris year. However, all such applications can be internally vetted or eliminated during that year.

    In any event, if you are concerned about a potential disparity in the state of applicants’ knowledge in my comparison of EPO abandonment rates prior to first action, how about a control experiment comparing the cumulative abandonment rate after first office action at the EPO and the USPTO, wherein both cases involve applicants’ cumulative knowledge of not only a search report, but also the first action? As the chart in Slide 16 shows, such cumulative abandonment rate in EPO first-filings under FTF is about 65% but only 12%-13% at the USPTO, where applicants operate under FTI law [see Figure 5 of paper on Deferred Examination models, page 13 in Appendix A of comments to USPTO at link to bit.ly ]. Do you still think that FTI v. FTF has nothing to do with this large difference in abandonment rates?

    You say: “applications claiming priority to applications where a search report had not issued yet were filed because the Applicant realized there was an issue with the earlier application and was filed with the intent of letting the original go abandoned.

    MaxDrei said in a related comment: “But in fact I suspect most inventors, if given the chance, would opt for a good solid prio doc and then an opportunity to add, one year later, all the extra detail, further embodiments, variations, modifications to the inventive concept of the prio doc, that they have reduced to practice within the Paris year”.

    That is exactly my point. It is under the FTF system that we see many more instances where “the Applicant realized there was an issue with the earlier application… letting the original go abandoned.” It is under the FTF system that we see many more instances where there is no ” opportunity to add, [ ] all the extra detail, further embodiments, variations, modifications to the inventive concept [ ] that they have reduced to practice”, which are absolutely necessary to support a claim under § 112 in the U.S. It is under the U.S. grace period that applicants are “given a chance” to do so. In comparison, how many such deficiency incidences arise under FTI up to the time when only 12%-13% cases are dropped at USPTO’s first action?

    Lionel, both you and Max appear to counter my data by setting forth a tangential explanation of the reasons or the rationale for applicant practices found under FTF, which I never question or criticize. There is no doubt that such behavior is necessary and justified – that is not the point. I only point to the high frequency with which such practices are necessary under FTF and the attendant costs and harm to small business and startup applicants.

  83. Dr Ron Katznelson puts his finger on a good point, namely, does the Paris Convention have any residual usefulness, in a world in which every country belongs to the PCT.

    Traditionally, one files at home and then, within the Paris year, files abroad. These days, one files PCT at the end of the year. For that expense, who wouldn’t take the chance to bundle into the PCT specification all the fleshing out of the invention one has done during the year. It might just make the difference between success and failure, even while you hope that what you filed on your prio date is enough to support those of the PCT claims that, in the end, you need to assert.

    But if the invention is already complete at the beginning of the year, why not just file PCT there and then? After all, the 30 month international period is the same, regardless whether your PCT filing date is at the beginning or end of the Paris year.

    And, these days, your invention has to be complete at the beginning of the year. Anything less than an enabling disclosure in your prio doc and it’s probably useless, not only in FtI USA but also in FtF ROW.

    Ron thinks FtF is double the cost of FtI for a single inventor. I don’t because that person can stay with the prio doc if the USA is the only territory of interest, or file PCT as the priority doc if the interest in patent protection goes wider than that.

    But in fact I suspect most inventors, if given the chance, would opt for a good solid prio doc and then an opportunity to add, one year later, all the extra detail, further embodiments, variations, modifications to the inventive concept of the prio doc, that they have reduced to practice within the Paris year.

    But Ron, you surely see it otherwise. Will you elaborate, perhaps?

  84. I’ve filed a 131 affidavit exactly once, and it sailed through without a problem. It also didn’t cost the client any more than filing a normal response. What am I missing here?

    Also, I am seriously considering filing my second 131 affidavit in another case where the art is really crowded and where there was a ton of innovation specifically directed to this type of thing in a very short period of time a few years back, so timing is especially critical here. The affidavit, if allowed, would overcome the primary reference and two additional references. The claims are about as narrow as they can be and still have value at the moment, and the references supplied are really, really close. Why wouldn’t I try the 131 affidavit?

  85. “I think Jules may have understood what I said.”

    I honestly thought I did.

    Your “Your a genius Ned” really got me thinking. Because lately Ned has been mostly unintelligible (no offense Ned, but maybe you need to step back from the problem). Therefore, I could not understand why you would say that unless you were being sarcastic. Of course I could be wrong. It’s not easy following everyones’ trains of thought on a comment thread.

  86. Don’t forget about creamed chickens and the man who brings all these animals to you – the runaway train conductor Cardoza!

  87. Sarah,

    Noise likes me. Everyone likes me. How could anyone not like me?

    Still not sure why you think I am missing your point, because your gibberish about “A’s” and “B’s” have nothing to do with the “invention as claimed” that is central to the whole debate. If you ignore all the baggage that comes with the invention as claimed, you are not comparing A’s” and “B’s”, you are comparing cats and dogs. Mean feral cats with loving friendly dogs.

    “Quick and dirty” will only get you dirty quickly.

    Still waiting for Ned and RWA to duke it out.

  88. Yes and my point is. In order to get to B, A had to be understood. Even the most Genius of all, would needed A before B to go on. So therefore “A was first!” Because without the Math you could not get the answer for B. you know the old saying putting the cart before the horse, That’s a perfect example.
    I think Jules may have understood what I said.
    And Ping I like you even if Noise doesn’t

  89. I am reminded of the people who claimed we needed provisional applications because foreign applicants had an unfair advantage. 1d1ots.

  90. Let me more clearly express my central response to Ron,

    Applicants who file applications that claim priority to an earlier application often have the benefit of having reviewed a search report or an actual office action that was issued during prosecution of the priority application.

    I would also guess that applications claiming priority to applications where a search report had not issued yet were filed because the Applicant realized there was an issue with the earlier application and was filed with the intent of letting the original go abandoned.

  91. Ron,

    Also, I work for a fairly large corporation and I have to say, when we review patent files any patent that was obtained using a 131 declaration is automatically reduced in value. Diligence isn’t always easy to prove.

  92. And I should say, those comanies are rushing just as much today as they would under a new FTF system.

  93. Ron,

    Are you serious with that data? That slide 16?

    Assuming it is accurate, the conclusion that second filings have lower abandonment rates due to a less time constrained environment is hasty at best and disingenuous at worst.

    The most likely reasons that those filings are dropped less is that they are filed in view of a previous search report or office action in the priority app.

    I mean seriously, this is what you hang your hat on?

    I believe races to the patent office will only occur between directly competing businesses trying to develop the new drug to cure (cure, haha – I mean symptom reducer as nobody is in the cure market any more) the newest electronic timesaver etc.

  94. MaxDrei, sorry for not having time to respond earlier. You ask: “does your 58% include such abandoned filings, please, and, if so, why do you think it is useful to compare it with the 12% figure you cite?”

    Yes, Max. The category that loses 58% prior to examination contains all Euro-Direct first filings that establish a priority date. This pool of applications tells the true FTF story because unlike other applications that claim priority of an earlier filed application, they are all filed with an express understanding and purpose for establishing absolute priority given FTF law. A fraction of these are also applications that applicants subsequently withdraw prior to publication after vetting the invention – which we will never see in the EPO database. Much less of that activity is required under our American grace period system, where vetting an initial idea can be done without filing. Other applications in the pool fall under your categories of routine abandonments after applicants have had more time for studying the prior art and for improving their application for the PCT phase. Likewise, less of that activity is required under our American grace period system, where prior to filing anything, one can take more time to study the prior art and to improve an application, without loss of priority.

    Your point about this latter practice is precisely my point: applicants rush to file a “placeholder” under FTF. They spend time and money to file such applications. The “placeholder” turns out to be deficient and another application is filed again, at an additional expense. If these “placeholders” were in fact adequate to support the desired claims, why would one need to abandon them and file a new application? If your practice is to do so in order to improve an application for the PCT phase, what is the purpose of such improvement? Will the claims in the improved application be supported by the priority “placeholder” you have created? I doubt it because I believe that under your ethical principles, you would not want to waste your client’s money by filing the later application when the “placeholder” could be maintained to support the claims. The reality is that your “improved” later-filed application likely does a much better job because you have the benefit of more information about the art and the industry, more development time and more experience with the invention.

    Your description therefore confirms that FTF produces a costly “placeholder” industry – one that is much less prevalent under our American grace period system. A larger fraction of the applications under our system are of the “improved” second type because we have the grace period that produces such improvements without having to file premature costly “placeholders,” only to abandon them later. Thus, applications under our system have the characteristics similar to your “improved” second type, both of which do not rely on their filing date for priority. As you pointed out, your “improved” second-type applications are in fact second filings. They are of the type from which only 12% are abandoned prior to examination.

    Do you now understand why I regard the comparison I have made as extremely relevant? What you have described is a practice that large firms can easily engage in. In contrast, many of our small business startups cannot afford to engage in filing costly “placeholders” which do not produce patents. They cannot afford the premature gratuitous disclosure of trade secrets only to find that no claims can emerge in exchange for such disclosure. “Placeholders” are not a benefit for innovation – only a liability.

  95. Sarah,

    This practically goes without saying (but I’m feeling nice this evening),

    do you have a point?

  96. Paul, I have been looking forward to getting from Dr Ron Katznelson an answer to the question who is the more egregious over-reacher, him or Dennis. I guess he’s checking his abandonment stats yet. On your point though, I do wonder whether EPO annuities represent a decisive factor. They are a minor factor, at least in the early years of pendency. I would say that there are two major decision points when apps are abandoned, and that all other abandonment activity is, by comparison, trivial. One of those two points is at the end of the PCT International phase, 18 months after the EPO gave the PCT app an EPO filing number. Applicant abandons rather than take the PCT national. The other is at the end of the Paris year, when Applicant abandons his priority-date-defining EPO filing, and continues with a PCT.

    Ron, are you there?

  97. Yes, getting an up-front PCT or EPO search report can lead to earlier abandonments, but doesn’t that just contribute to another even more relevant factor – the costs of maintaining a pending EPO application, while the U.S. has NO maintenance fees until 3.5 years after a patent issues – to why one cannot make valid application abandonment rate comparisons between the EPO and the U.S.?

  98. RWA,

    You need to get together with Ned, because you both cannot be right:

    Compare Ned’s “there is very little recent case law on the topic

    with

    years of patent law precedent say so

    So who is wrong, RealWorld Attorney or Ned Heller?

    pinging minds want to know.

  99. ping asks “why?”

    Because years of patent law precedent say so. Don’t you have someone else to bother? Have you gotten a dog yet?

  100. While there is very little recent case law on the topic, I would suggest that…

    Ned,

    Why? Wishful thinking? Because it feels right? Because you say so?

    How do you show possession of the invention when inventions are defined by claims and claims come with all the baggage you want to leave behind?

  101. Dennis, while Section 119 priority remains in FTF, there is a major difference in the requirements of proving Section 112, p.1, support and prior invention support in the priority document. While there is very little recent case law on the topic, I would suggest that all one has to show for prior invention would be a enough to demonstrate possession of the invention. Whether the invention was described sufficiently or whether one taught others how to make and use it are not criteria for proof of prior invention.

    In a FTF system, as well, one has to show full support for all claim elements; not so in a showing of prior invention. For the latter, all one has to show is that one invented the subject matter of the reference first. See, In re Stempel.

    Maybe you misunderstood what we were saying.

    GMS, the USPTO really does not care about the 102(g) dates of references not claiming the same invention. If you antedate the reference by showing prior invention, you get your patent. If the reference, rather, is claiming the same invention, you get an interference.

  102. I take issue with one of the apparent assumptions of the paper.

    Specifically, “During prosecution, most patent applicants are faced with non-102(b) prior art that could be antedated.”

    The assertion that the art “could” be antedated assumes you know the invention date of the subject of the rejected application (which is impossible unless a filing trying to antedate the art was made). Simply because the art is not 102(b) (e.g. it came into existence less than 1 year before the application was filed) does not mean it can be antedated even if you can prove your invention date with 100% unerring accuracy, it may still be citable art.

    The initial group would therefor seem to be substantively to large to determine the effectiveness of the procedure.

  103. I think that characterizing the invention date priority cases against all applications is misleading. It is not inappropriate to analyze invention date priority cases as a separate class since inventions either sail through issues of invention priority as of their filing date (constructive date of invention/RTP) or they don’t.

    The class of cases that sail through based on filing date alone provide no information. It is the class of cases that don’t sail through that should be looked at in isolation in the sample group. It really doesn’t matter how small a group invention date priority cases represent. When invention date priority is an issue, it’s an issue and should be smartly addressed, not just glossed over because it may not be a significant percentage of all applications at the point in time that you look. For all we know, the next decade could see a huge rise in invention date priority cases.

  104. The differences in Rule 131 filing or success rates between small and large entities have nothing to do with the differences discussed above

    So what drives the statistically significant differences?

    and, unfortunately, are likely to be quoted as evidence that a robust grace period does not matter much.

    sort of like:

    Well then, that settles it. FtF, here we come.

    Posted by: ping | Mar 24, 2010 at 10:48 AM

  105. Dennis,

    It’d be interesting to see the statistical breakdown of the %’s according to art group as I think such is much more common in biotech, due to the nature of the technology and the type of evidence that is almost universally documented in lab notebooks…

  106. Well I dunno Cranky. You could be right about me being irritatingly smug. But here’s what JQT wrote:

    “For many (perhaps most), however, an actual affidavit is not filed when antedating based on §119 foreign priority. Rather, a certified translation of the priority document is simply filed as an addendum to the response, without the formality of an actual affidavit.

    In fact, if the priority document is in English, there is no need to file anything, and in those cases, the reference is antedated simply with an argument in the response.

    Others here should feel free to describe their procedure when antedating based on §119 foreign priority. I might be in a distinct minority, although I don’t think so.

    If I am correct, and in the majority of §119 antedatings there is no paper entitled “affidavit”, then the data gathering technique would result in a severe undercounting of §119 antedatings.”

    which revealed to me a shaky grasp of how to get the benefit of a filing at a non-US PTO under Paris Convention rules.

    Perhaps JQT will confirm your assessment. Meanwhile, JQT, sorry if I was rude to you.

    But, apart from all that, sorry but I still don’t see how JQT can equate a prior date of invention, which is not a PTO filing, with a 119 priority claim to an event which is a PTO filing.

  107. Good stuff Ron, but you suggest that Dnnis has over-reached and I just want to ask you something, to ensure that you haven’t fallen in to the same trap.

    I haven’t time to research your link and your other papers. Work to do here. Quicker just to ask you here.

    At the EPO, you contrast the figures of 12% and 58%. I’m thinking that, in Europe, it is routine for Europeans to file at the EPO, at the start of the Paris year, to obtain during that year a top quality search report. Europeans then write the PCT in full knowledge of all that lovely prior art. Naturally, they let the prio EP lapse, at the end of the Paris year, after it has done its job, but a copy of it goes into the PCT file to substantiate the vital priority date. Forgive my poor memory, if you have already answered this question and I have forgotten, but does your 58% include such abandoned filings, please, and, if so, why do you think it is useful to compare it with the 12% figure you cite?

  108. I had no idea that, in the USA, there are some who regard a claim to Paris Convention priority as a claim to a date of invention earlier than a PTO filing date, and that therefore one not accompanied by an Affidavit is incomplete.

    That’s a bit more smug than usual, isn’t it, Max? JQT misunderstood the point of Dennis’ paper. As far as I can tell, he understands the law just fine.

  109. Dennis,
    I commend you for an excellent empirical study, providing information that is otherwise hard to get. For the readers here who believe this was a simple computer data analysis task, think again. Finding relevant applications in this study required manual access to every application that was categorized as having an affidavit in order to determine whether it is a Rule 132 or Rule 131 affidavit. There are by far many more Rule 132 affidavits than Rule 131 affidavits.

    That said, I believe you have overreached in your conclusions:
    Dennis at p 53: “The U.S. novelty rules have previously been thought to preferentially benefit independent inventors, new entrants, and basic researchers. The evidence presented here does not support that conclusion.

    First, the 0.7% of applications with Rule 131 affidavits, corresponding to about 3,200 applications per year that would not otherwise be allowed to proceed is no chump change. Your data also shows that these are biased towards more important patents (which makes sense given the cost of pursuing R131 filings). For comparison, consider the fact that when we all fought the ill-fated Continuation Rules, only 2,621 applications per year were third or later Continuations/CIPs subject to the proposed rule [Tafas v. Dudas Admin. Record, A05022 (2007)]. Those favoring first-to-file have been saying that it would change the outcome of only a few dozen patents a year – that argument clearly holds no water. But this point hardly scratches the surface.

    Second, like many other commentators on the novelty rules’ effect on applicants, you have not studied the most relevant factors. The fact is that the numerical “evidence presented here” is largely irrelevant in determining the major benefits of the current grace period protection afforded to first inventors. It is for the same reason that the low frequency of interferences is irrelevant for such a determination. It is because you totally ignored applicants’ behavior that rely on having an option to swear behind a cited reference if it ever becomes necessary. Applicants are very aware of this available protection. They are aware of it and deal with the grace period prospect much more frequently than with Rule 131. Your data shows that nearly a quarter of the references cited are within the grace period and that 83% of practitioners have actually filed Rule 131 affidavits. Everybody is keenly aware of the grace period protections. Regardless of how rare the actual need to swear behind a reference is, the prospect of not having the option to do so will change behavior of most U.S. applicants – not just 0.7% of them. If enacted, that necessary change in behavior will be costly and harmful.

    One aspect of the changed behavior would be the need to “race to the Patent Office” before every new idea is fully developed, vetted or eliminated. This will not occur in only 0.7% of cases. The evidence for this prevalent and fundamentally changed behavior is readily available from application statistics of first-filings compared to secondary filings at the EPO. For example, Slide 16 at link to j.mp shows that 58% of applications filed under first-to-file-pressures in the EPO become useless to their owners and are abandoned before they are taken up for examination. In contrast, only 12% of applications filed at the EPO without being subject to such pressure are abandoned. Coupling this with the examination rate in each category, this means that under applicant behavior adapted to the first-to-file pressures, it takes more than twice the number of applications compared to a system that does not have such pressures, in order to obtain one surviving application worthy of examination. I see no reason to believe that, if enacted, such behavioral change will not occur in many instances where U.S. applicants file their priority applications, resulting in a doubling in the number of U.S. priority applications for those applicants who can afford it. By taking away the robust American grace period, small businesses and startups, which have no in-house patent attorneys, can least afford to increase their filing rate. They would be more prone to lose patent protection or fail to secure resources required to exploit their inventions because of fear of disclosure.

    Small businesses and startups are significantly more exposed than large firms in this regard because they must rely on far greater and earlier disclosure of the invention to outside parties. This is often required for raising investment capital and for establishing strategic marketing partnerships, licensing and distribution routes. In contrast, large firms use internal R&D investment funds and their own marketing, sales and distribution chains. Therefore, they need no early disclosure of their inventions to outside parties.

    The differences in Rule 131 filing or success rates between small and large entities have nothing to do with the differences discussed above. While making a significant and original contribution to our understanding of Rule 131 prosecution statistics, your paper does not address the crucial adaptive behavior aspect of the novelty rules – the major inquiry required for evaluating the benefits of our priority system. With all due respect, your conclusions are misleading and, unfortunately, are likely to be quoted as evidence that a robust grace period does not matter much. I hope you will acknowledge that you have shown nothing of the kind.

  110. JQT, you caught me by surprise with your:

    “….in the majority of §119 antedatings there is no paper entitled “affidavit”, then the data gathering technique would result in a severe undercounting of §119 antedatings.”

    I had no idea that, in the USA, there are some who regard a claim to Paris Convention priority as a claim to a date of invention earlier than a PTO filing date, and that therefore one not accompanied by an Affidavit is incomplete. Never a dull moment on this blog.

  111. JustAQuickThought: Thanks for the comment. I agree that I did not include priority claims to earlier filed patent documents (including foreign filings). That was intentional because I believe those should be treated differently because under a first-to-file system, a patent applicant can still claim priority to earlier patent application filings.

  112. Dennis, I think your data-gathering technique might have been faulty. According to the article, you count an affidavit only if the word “affidavit” shows up in the transaction history. For many (perhaps most), however, an actual affidavit is not filed when antedating based on §119 foreign priority. Rather, a certified translation of the priority document is simply filed as an addendum to the response, without the formality of an actual affidavit.

    In fact, if the priority document is in English, there is no need to file anything, and in those cases, the reference is antedated simply with an argument in the response.

    Others here should feel free to describe their procedure when antedating based on §119 foreign priority. I might be in a distinct minority, although I don’t think so.

    If I am correct, and in the majority of §119 antedatings there is no paper entitled “affidavit”, then the data gathering technique would result in a severe undercounting of §119 antedatings.

    And I think that this might have occurred. For example, page 19 of the article includes a chart showing that for all of TC 2600, there were only 16 affidavits filed in the 21,000 sampled applications between 2000 and 2007. In that timeframe, for that TC, I myself have probably submitted priority docs around 20 or more times, to antedate a reference. I recognize that that number is not conclusive, for the reason that the 21,000 sampled applications are unlikely to include all of mine, but I think it’s indicative of a problem in the data-gathering procedure.

  113. You would be a fool to argue and create estoppel/disclaimers where you can antedate.

    The 2 day case law cited in an earlier post relates to an interference showing, the standards are much higher in priority contests when deciding which inventor should win. On the other hand, 131 declarations are not as ineffective as other here seem to think.

  114. “Worse, having resorted to Rule 131 rather than arguing 103 distinctions over the art is getting stuck with an admission that there arn’t any.”

    Can you please clarify why this would be true? Why wouldn’t it just be arbitrarily picking one alternative over another to overcome a rejection? If one doesn’t work, nobody is precluded from trying the other.

  115. ping, there is a difference between an effective filing date that moves the statutory bar critical date for publications back to one year prior, and a reduction to practice date that can only be effective if it is within one year from the effective filing date.

    Think.

  116. When did proof of prior invention involve a demonstration of written description support? If blueprints that enable one of ordinary skill to make the invention are sufficient to show “ready for patenting” so that the invention can be placed on sale, cannot those same blueprints be used to show prior invention?

    What disables those same blueprints from showing prior invention if they are filed as a provisional?

  117. If the PTO is really now enforcing proofs of the requirements for prior invention of the statute (102(g)) and the Rule (131) to “swear behind” a prior date reference, as indicated above, that would reduce the number of invalid patents improperly issued with some of the really flaky (and obviously unexamined) 131 declarations I have seen over the years. Worse, having resorted to Rule 131 rather than arguing 103 distinctions over the art is getting stuck with an admission that there arn’t any.

  118. but if you explain it well they are ok.

    ha ha ha.

    I’ll just whip out a “Your argument has been read, but found unconvincing.”

    Next.

    Ned,

    consider that a provisional application, even if it does not have full written description support of the invention, might still be sufficient to show a constructive reduction to practice of the invention prior to the reference. The quick and dirty provisional…

    Very Dangerous advice – no quick and dirty provisional is going to be worth anything unless the claims of the future non-provisional are considered (and by definition that cannot happen in a “quick and dirty” provisional).

    of the invention” should be read as “of the invention as claimed. Anything less loses the date, defeating the constructive reduction.

    NAAJAO (not an answer, just an observation)

  119. “I’ve helped inventors successfully swear behind references numerous times.”

    How recently?
    In what art group?
    How far back have you been able to reach?
    How do you prove “due diligece”?

  120. The horror stories about diligence suggest that one really needs to prove a prior reduction to practice, not diligence.

    Given the difficulties in proving prior invention, most applicants simply try to distinguish non bar references.

    Now consider that a provisional application, even if it does not have full written description support of the invention, might still be sufficient to show a constructive reduction to practice of the invention prior to the reference. The quick and dirty provisional may still have some utility in the United States so long as we have first-to-invent.

  121. “The way the USPTO is applying the “due diligence” requirement, unless you can provide a day-to-day explanation, good luck. IMHO, the ability to reach back 1 year from filing is illusory based upon how 1.131 declarations are being treated.”

    Based on my experience, the difficulty is being overstated here. I’ve helped inventors successfully swear behind references numerous times.

  122. My point being that maybe the abundance of failed declarations is partially due to a lack of persuasive explanations accounting for certain periods of time. Had the attorneys just included a blanket statement to the effect I provided above, then maybe the declarations would have been effective to account for diligence.

    Sure, I doubt its a bulletproof explanation, but it is just one suggestion. You know those administrative bodies can be really anal when it comes to certain things, but if you explain it well they are ok.

  123. Interesting comments, Passing through.

    I find it important to remember “Attorney Diligence”. For example, say a paper publishes and the attorney receives the paper the same day to be drafted into a patent application. Isn’t it logical that the attorney can sit on that paper for up to 1 year before filing a patent application? The rationale would be to limit public disclosure during a grace period before the paper becomes 102(b) art against the application.

  124. “The difficulty of attempting to prove these elements are laid-out in a set of administrative patent appeal decisions where 77% of attempts to antedate references were rejected by the administrative court.”

    From experience, it is near impossible to antedate a reference. For example, if you need to reach back 2 months, and you establish 6 things that happened between X (your filing date) and X-2 months (the needed priority) date, the Examiner will come back and ask for an explanation as to the periods of times between these 6 events (e.g., disclosure received by attorney, first draft of application prepared, comments received, second draft of application prepared, second sets of comments received, final draft prepared, executed formal documents received).

    The fact of the matter is that if perfect diligence was applied by the attorney and application, the application could go from first disclosure to filing in under a week. Due diligence is supposedly another word for due diligence, however, reasonable diligence has never been explicitly defined. However, when you have MPEP 2138.06 citing “A 2-day period lacking activity has been held to be fatal. In re Mulder, 716 F.2d 1542, 1545, 219 USPQ 189, 193 (Fed. Cir. 1983),” it is difficult to get anything through. Of course, like in many instances, the MPEP drafters read far too much into that decision and misconstrued the facts. The “2 days” wasn’t two days between events or 2 days of lacking activity. Instead, the 2 days represented the time between the constructive filing date (from a foreign application) of October 9, 1974 to the publication date of an article on October 7, 1974. The application was supposedly drafted on July 15, 1974, so there was almost a 3 month gap between activities.

    The way the USPTO is applying the “due diligence” requirement, unless you can provide a day-to-day explanation, good luck. IMHO, the ability to reach back 1 year from filing is illusory based upon how 1.131 declarations are being treated.

  125. The ultimate Golden Rule has long been conventional wisdom:

    He who has the gold, makes the rules.

  126. anything that involves effort, time and (thus) money

    And diligent record-keeping, and an understanding of what options the law provides for overcoming a rejection.

  127. Furthermore and perhaps contrary to conventional wisdom, my findings suggest that individual inventors assert invention-date-based novelty rights relatively less often and less successfully than large, publicly traded companies.

    Perhaps not contrary at all as anything that involves effort, time and (thus) money will be less pursued by the individual inventor who has more pressing cries for capital than those who can afford to play “the sport of kings”.

    If anything, this is an indication of where change to help the little guy may be applied.

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