In an important case, the Federal Circuit has expanded the scope of so-called 102(e) “secret prior art.” Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application. The case is important because of the large number of provisional patent applications being filed each year.
* * * * *
In re Giacomini (Fed. Cir. 2010)
Giacomini’s patent application was filed on November 29, 2000. In his search, the examiner found U.S. patent 7,039,683 (the “Tran patent”) and asserted that patent as prior art over Giacomini. The Tran patent application was filed in December 2000 (after Giacomini) and issued in 2006. However, the USPTO asserted that the patent should be considered 102(e) prior art because it claims priority to a U.S. provisional application that was filed in September 2000.
35 U.S.C. 102(e)(2) bars patentability if
the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed . . . shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of [the PCT] in the English language.
The question in this case is whether the 102(e) priority date for prior art reaches-back to the filing date of the provisional application. On appeal, the Federal Circuit agreed with the USPTO that the provisional filing date is the 102(e) priority date.
In the 1968 case of In re Klesper, the Federal Circuit predecessor court (the CCPA) held that the 102(e) follows the prior precedent of treating a prior art disclosure found in an issued patent as being disclosed as of the “filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.” The Federal Circuit agreed that this provision applies equally to provisional patent applications “ so long as the provisional application [provides] written description support for the claimed invention . . . in accordance with Section 119(e).” Giacomini never argued that the provisional failed to describe the invention found in the prior art.
Therefore, the Tran patent “shall have the same effect,” [Citing 119(e)] including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).
This decision follows the BPAI’s 2008 precedential of Ex parte Yamaguchi, 61 U.S.P.Q.2d 1043 (BPAI 2008). However, the decision is in tension with the Hilmer doctrine. In re Hilmer, 359 F.2d 859 (CCPA 1966) (a U.S. application’s 102(e) priority date does not extend to its Section 119 foreign filing date). Giacomini had argued that provisional applications should be treated like foreign filings rather than like non-provisionals because the priority statute for provisional applications is also found in Section 119 and becaues provisional applications lack the formality of non-provisionals.
Note: US Court interpretations of 103(a)/102(e) offer a major difference between US practice and European practice. Namely, in the US secret 102(e) prior art is available to be combined as part of an argument for obviousness while in most European countries, the filing date of prior art is only important for novelty purposes.
Perhaps a little advice for a layman…
1)I invented product X…filed the provisional, it has lots of claims but missed a few new design features
2) I am now filing the Utility Patent…I want the provisional date…but also want the improvements
What should I do…hypothetically
Any advice is appreciated…..Ciao!
Your article is surely very good. If you download films and soft from the internet, I advise you use rapidshare search engine ( link to filecatch.com )
There is someone here who need training in English as a second language.
Ned,
Homey don’t do answers – especially after I just got done telling you that htis thread isn’t about foreign apps.
You seem stuck in some bygone foreign app battle and cannot seem to focus on the here and now.
ping, alright, clever boy, give me the answers:
D1 US 111(a) appl. filed in English;
D2 PCT appl. filed w/i year, priority claimed to D1;
D3 US National Stage filed;
D4 Patent issues on US national stage.
Now, give me the 102(e) date of the issued patent (assuming all appls. fully support the claims)
– if the PCT is filed before Nov. 29, 2000;
– if the PCT is filed after that date in English; and
– if the PCT is filed after that date in German?
Failure to answer any question correctly will be referred to the PTO for review.
So that tells me Ned be reading things I wrote hmmmm. Is that legal?
“ignore his position on international applications”
Pssst, Ned – international applications are not part of the subject here.
Just quick, ah, but you ignore his position on international applications filed Nov. 29, 2000. See C(3). The only 102(e) date is the national stage date. Nothing earlier — even if the PCT claims priority to an earlier filed US 111 (a) or (b) application.
As to applications filed after Nov. 29, 2000, note the weird situation involving applications not published English. They too do not have the benefit of the filing date of priority US 111 (a) or (b) applications. Note, that a 111(b) application does NOT have to be filed in English to have a US filing date. The issue never came up in Giacomini as to whether the provisional had to be in English to provide support for benefit claim. They certainly do not for foreign applications in general.
Sorry to arrive so late to this thread…
Ned Heller | Jul 10, 2010 at 02:43 PM, wrote: “I will ask for the fourth time, what is the prior art date of subject matter disclosure in a patent issuing on an international application that claims the benefit of the filing date of an earlier filed US patent application (provisional or non provisional) when the subject matter is fully supported in the earlier-filed case under Section 112, p. 1? Add, even, that the subject matter is claimed.
“The commissioner has long maintained that it is the national stage date, or other dates provided from time to time by 102(e). See, 35 USC 375. Is he right? Seems flatly inconsistent with ALL judicial precedent and is a result not mandated by the statutory framework.”
Maybe I am misreading Ned’s post, but I don’t believe that Ned correctly summarizes the Commissioner’s position, at least as of the 1999 AIPA amendments. According to MPEP, under the facts posed here, assuming the international application (IA) was published in English (probable, given the priority claim from a US application), and given the automatic designation of all States when an international application is filed, then the IA publication itself has a 102(e) date, and its 102(e) date is the international filing date.
Furthermore, if the IA claims benefit to an earlier US application, as posed by Ned in this scenario, then the 102(e) date of the IA publication is the date of the earlier US application.
Under these facts, the national stage date (i.e., the 371(c) date) is irrelevant.
The issued US patent, and all other USPTO publications of the various applications, all share all of these 102(e) dates of the IA publication.
See MPEP 706.02(f)(1), example 7, pages 700-36 and 700-37: link to uspto.gov :
“All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date.”
Not looking to be “right” or “wrong” Ned,
I be looking for an answer to my (still unanswered) question.
What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?
well, ping, I think you are wrong about 135. Let’s see you raise that issue the next time you file a motion in an interference. Report back your results.
my poor sarah – you once again have the wrong ping in mind.
I don’t spoon feed anybody, much less spoon feed crap.
Try to remember – I be on your side.
When I think back on all the crap I have been spoon fed by you both, I wonder PING you were an Academic? I am glad you are out of that racket. And I hope you never get a chance to go back. Maybe that won’t even be a problem with what has gone on here, blog or not.
“but, really you seem to ignore the point that the claims involved in the priority contest are not from the provisional.”
Not at all Ned, sure the claims are “involved”, but more to the point, the early date is what is being “involved”, so it is not a stretch, but rather a direct question – one which remains unanswered:
What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?
“is it not reasonable to say on a prima facie basis (i.e., subject to rebuttal) that subject matter in a regular is supported by a provisional to which it claims priority?”
Oh boy – even IANAE has been bitten by the two wrongs make a right bug.
The answer, quite simply, is “No.” Let’s try to obey the law people.
“Once he has found a disclosure with the information he needs” can only be ascertained upon inspection – the very inspection necessary that properly establishes entitlement. Merely saying “Oh look a provisional was filed, therefore let’s go with that date” does not establish a prima facie case and cannot shift the burden.
“After all, examiners almost never even check whether your own claims are supported by your own provisional.”
and
“I would say he’s entitled to assume that any patent document claiming a priority date is prima facie entitled to that date.”
Both be flat out wrong. You cannot assume such facts in the attempt to satisfy your burden, cause assumptions don’t carry the necessary legal weight. Being lazy is not an appropriate answer. Sure, it be OK on a blog, but then again, a blog aint affecting my client’s legal rights.
Well, IANAE, what if I simply appeal and the examiner has not demonstrated support. Who wins?
Well, Ned, if you have any sense, you will point out the absence of support in your brief. If you’re right about it, you should win.
The Board doesn’t decide based on the standard of a prima facie case, but if you don’t raise the issue of support in the provisional (or if the entirety of your pleading is “the examiner has not shown detailed support in his rejection”) you shouldn’t expect to win on that basis.
Well, IANAE, what if I simply appeal and the examiner has not demonstrated support. Who wins?
I suggest that I do, that is, unless there is a presumption operating here that I do not understand.
Now, with continuations, there is a presumption that the disclosure was carried over. But, given the loosey-goosey nature of provisionals, I am not so sure there is the same presumption. I think the courts would agree.
But, we should never forget that it is the examiner’s burden to show support.
That’s not his burden, though. His burden is to make out a prima facie case that your claim is unpatentable. Once he has found a disclosure with the information he needs, claiming a sufficiently early priority date, that’s a prima facie case. Might not be clear and convincing, but he doesn’t need clear and convincing.
Suppose the examiner cites against you the disclosure of an issued patent. Does he bear the burden of checking the file history of that patent to make sure the cited portion was not impermissible new matter added during prosecution? I would say he’s entitled to assume that any patent document claiming a priority date is prima facie entitled to that date.
IANAE, on the first to file issue, yes — to the extent only of filed applications. But, the Feds have also held that prior invention is prior art as well for 103 purposes. That would be gone in the new system.
IANAE, well, I agree, that I would check first and also argue the substance that the provisional does not support the claims in crafting my response. But, we should never forget that it is the examiner’s burden to show support. We do not have a burden to rebut until he has proved his prima facie case.
The situation is quite different with respect to a priority claim. We have the burden. Now, just because the examiner does not object, does not mean he has not checked for support.
they should have to demonstrate support for the claimed inventions in the provisional in order to present a prima facie case.
Since we’re only talking about a prima facie case here, is it not reasonable to say on a prima facie basis (i.e., subject to rebuttal) that subject matter in a regular is supported by a provisional to which it claims priority?
After all, examiners almost never even check whether your own claims are supported by your own provisional. They take your priority claim as prima facie evidence of that. Why should they bother checking for every prior art reference they cite?
Since we have first to invent, these important rights are not lost by delays of one sort or another.
Wouldn’t first to file give the same protection against surrounding a pre-existing patent of known importance with later-filed obvious variations?
IANAE, more than that, I would suggest that, based on this decision, they should have to demonstrate support for the claimed inventions in the provisional in order to present a prima facie case. It is a required element of proof.
dfab, unfairness is a two-way street. Think Japan. They can and have surrounded important patents with obvious variations forcing the patent owner into cross licensing. This is a sign of a weak and dysfunctional patent system.
Now think of the US system. Our system grants the first inventor his patent and prevents others from obtain patents on obvious variations. Since we have first to invent, these important rights are not lost by delays of one sort or another.
Once you understand these principles, you will see just how important they are.
Regarding the use of the provisional filing date in 102e rejections, it is only fair that the USPTO provide the provisional application to the Applicant whose invention is rejected based on such provisional filing date.
Provisionals are already made public when a published application claims priority to them. You can view them on PAIR.
ping, I see your stretch, but, really you seem to ignore the point that the claims involved in the priority contest are not from the provisional.
…For an exemplary case where the 103/102e combo is especially unfair, imagine the case where multiple 102e references are combined in a 103 obviousness rejection. If two 102e references with different inventors are secret and undisclosed to the public, including PHOSITAs, it seems unreasonable to expect that the combination would have been obvious to a PHOSITA at a time before the 102e references are published. Perhaps the invention may have been obvious to the two above-average inventors of the 102e references working in collaboration to combine their respective inventions, but not to a PHOSITA.
Regarding the use of the provisional filing date in 102e rejections, it is only fair that the USPTO provide the provisional application to the Applicant whose invention is rejected based on such provisional filing date. The Applicant should be entitled to such access to defend his invention, considering the unlikeliness that examiners take the time to ensure that each application is fully supported by the provisional (especially since only the claims of the 102e non-provisional reference need be supported by the provisional, not the description which is usually used in 103 rejections).
Ned,
The phrase includes the word “involved”.
The phrase does not include the word “placed”.
So again,
What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?
In other words, “involvement” includes secondary effects.
I fully understand the reasoning behind 102e prior art references as stand-alone references in anticipation rejections–somebody else invented it first, fair enough. However, I don’t understand the logic of the use of 102e references in 103 obviousness rejections. If the 102e prior art was secret before being published, then the reference was not known to PHOSITAs. Thus, it would not have been obvious to combine the 102e prior art with another reference until the 102e art was publicly available. This is esp. true if the inventor of the 102e reference has a higher-than-ordinary skill in the art (which is often the case if the inventor is creating ingeneous or truly inventive technology). In that case, the invention of the rejected application may have been obvious to the above-average inventor of the 102e prior art, but not a PHOSITA.
Back to your provisional, the provisional application is not published. So it is inconsistent with the whole concept of publicly known. I would suggest that the examiner needs more evidence.
An examiner, you raise a good point that I actually have been wrestling with — the tension in 102a between “use” and “known.” Over the years, the courts have required use to be a “public use.” However, as I have understood it, “known” only requires that some one other than the inventor know the invention and not have an obligation of confidentiality to the inventor. There seems to be no consideration of whether that other person is trying to keep it secret as well.
It seems the only way to reconcile this is that “known” must also include some evidence of public use as well.
102e is pointless. All it is doing is codifying that a provisional or non-provisional application document suffices as proof for 102a “known by others”.
You’re rejected under 102a for it being known by others, here’s my proof, bam slam down the provisional. You could make a “what if inventors are foreign, not in this country, lalalala, not 102a” argument.
Which brings about a nice question that I have. What does “in this country” actually mean. Is a foreign national who invented the invention in a foreign country, then walks into the US prior to the invention thereof by applicant, a qualifying prior art under 102a? If so, then I’d argue it is inherent that a person must know the invention within this country in order to file it with the USPTO, (whether via internetz or in person).
6, perhaps we are not on the same page here. The 131 affidavit I speak of must be filed in the non provisional application of the same inventive entity. That 131 affidavit will identify the provisional and demonstrate why the invention is supported.
Thereafter, when that application is published, the file wrapper will contain the 131 affidavit. That will effectively publish the provisional so that others my look at it.
It may be cumbersome for examiners to have to review a file wrapper for 131 affidavits, so the PTO might be wise to publish the fact that a 131 affidavit was filed in an application and the date of invention it claims.
“6, the provisional is identified in the 131 affidavit or in the interference.”
Knowing the ID of a prov and knowing what is actually in the prov are two separate things I should think. Or is that in a 131 as well? If we’re talking about a 131, then are we really even talking about a provisional? The office can’t just send them a copy to verify what they’ve said, you’re going on the 131 alone. In which case, why don’t they just file a 131 as to having invented the invention previously and not even mention the prov?
Ned, that situation should not be able to happen. The prov is not published for a reason.
ping, I think the exclusion of 135 is clear. The provisional cannot be placed into an interference. It is not an application for that purpose.
However it can form the basis of a priority claim.
What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?
“prior art as of their dates of invention
invention as defined by…
cf “invention” with “matter”. There be a difference.
6, the provisional is identified in the 131 affidavit or in the interference.
Claimed subject matter is prior art as of their dates of invention — or did you not know this?
“I’ve been thinking about the situation where a non-provisional application does not claim priority to the previously filed provisional application, but where the invention disclosed in the patent is either the same as disclosed in the provisional or fully supports the inventions claimed. Regardless of the priority claim, the invention(s) disclosed in the provisional in the manner prescribed by section 112, paragraph 1, can still be good prior art as of the date of its filing if the provisional forms the basis of a claim of prior invention either in a rule 131 affidavit or in an interference. See In re Bass.”
How did you find out about that prov? See In ur As s.
ping, all 135 means is that a provisional application cannot be involved in an interference primarily because it has no claims, no oath, etc.
However, it can be used to determine who is senior party and who wins the interference.
Ned,
I hope the new cites indidcate more than “and another application or patent” for which that other application or patent is not relying on a provisional for any type of 135 legal standin, since as I have now shown twice, provisionals cannot apply to such legal standing.
ping, also see a discussion of 102(g) by Niefeld and Hilmer,
link to neifeld.com
ping, see the discussion of the development of 102(g) into prior art status from Bass to Dupont in the linked comment on Oddzon Products. See, section 3. link to ipmall.org
Ping, the interference would be between a section 111(a) patent application and another application or patent. There the applicant would prove prior invention by showing the invention was described in the manner provided by section 112, p. 1, in the provisional. That would be a constructive reduction to practice which should allow the applicant to prevail if the other inventor cannot prove prior dates.
Note, the prior provisional, not being relied upon to prove a filing date of the application in interference, would not be useful in determining who is senior party. Still, it could prove decisive in the interference.
cf “As to any invention” with “As to any matter.
There be a difference.
Needs a better cite, Ned, the only In re Bass google give me is CAFC 02-1046 In re Robert Bass and that case does not deal at all with non-provisionals.
as to “in an interference”, Ned I already touched upon this (feeling scholarly):
“Swearing Momma, – doesn’t 35 USC 111(b)(8) trump your view, at least in the duel here of using a provisional to antedate the applicant?
“provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.”
Posted by: ping | Jul 09, 2010 at 04:42 PM
Ned – 135 is interference, in case ya forgot.
for an effective priority effect,
We’re not talking about “effective priority effect”, we’re talking about “effective prior art effect”.
When is an application prior art under 102(e)? When it was described in an application with a sufficiently early filing date.
What is the filing date of an application under 119(e)? As to any invention disclosed in a provisional to which priority is claimed, the filing date is that of the provisional. That means everything in the provisional is entitled to the filing date of the provisional, as soon as priority is claimed.
The filing date of the matter in the provisional does not depend on the contents of nonprovisional, except that part of the nonprovisional that contains a specific reference to the provisional for the purpose of claiming the priority. It is immaterial whether any of the claims in the nonprovisional are entitled to the earlier date.
Note also, that under the principles of In re Bass, all that might be required to make the provisional prior art as of its filing date is a reference in the patent so that the provisional effectively becomes published on the date of publication of the patent.
I’ve been thinking about the situation where a non-provisional application does not claim priority to the previously filed provisional application, but where the invention disclosed in the patent is either the same as disclosed in the provisional or fully supports the inventions claimed. Regardless of the priority claim, the invention(s) disclosed in the provisional in the manner prescribed by section 112, paragraph 1, can still be good prior art as of the date of its filing if the provisional forms the basis of a claim of prior invention either in a rule 131 affidavit or in an interference. See In re Bass.
IANAE, I have no problem at all with the idea that, for an effective priority effect, a claim-free provisional has to be an application for protection, in a Convention country, for the “same” invention as that claimed in a later filing which declares the priority of the provisional.
But then I come from the UK, where for a hundred years claims under the Paris Convention to the priority of a claim-free provisional were judged on a “prior claiming” as opposed to a “whole contents” approach. see Section 8 of the UK Patents Act of 1949. Since 1978, the UK has had to swallow a mainland European whole contents approach. But Germany is still today doing prior claiming in its national utility model/petty patent/Gebrauchsmuster law. Germany England and the EPC are all sensible, just different.
“there’s no sensible reason”
Except for when the law is written to make it so.
But IANAE is right (still) – the writing of the law does not need to be sensible.
Or to think about it another way – the provisional really doesn’t even “exist” in any legal sense until another, later-filed document properly references it. Such is the way of later documents breathing life into earlier documents.
For me, building the American template seems to be a work still in progress.
Doesn’t that presuppose that there is progress?
Seriously though, there’s no sensible reason why the prior art status of a document that is not even required to contain claims at all should depend on the claims in another, later-filed document.
Merits ping? I think we can easily agree that justice is done only when ALL relevant facts are taken into consideration.
But where does that process stop? When do facts stop being relevant? We need a simple legal template or touchstone on which to measure what is patent-eligible, and patentable, which we can all accept as workman-like and fair. Only after we have fixed that can we decide whether something does or does not possess “merit”.
For me, building the American template seems to be a work still in progress. Whole contents or prior claiming. B-gg-red if I know. Does the CAFC know? I’m not sure.
Hard to say this, but 6 has a better grasp of this than even my idol IANAE. Some observations:
“Or, what 6 said, I guess.”
No, it is what 6 said.
“If the provisional was made public pursuant to an attempted priority claim, shouldn’t that be enough? ”
No – the special date is dependent on the special condition being made. Sure, everything else in the provisional is indeed published on the date the provisional is made public, but the special date has to meet the law’s requirements and only those things meeting the law’s requirements get the special date.
“but is this not an absurd result?”
No. It is a difficult result, but not an absurd result. We have seen in CIP’s that multiple effective dates are possible (on a claim by claim basis). We have seen the Supremes repeatedly denying brightline rules that would make things easy. The patent world is not about making things easy. It be about taking each and every case on its own merits. Ya might even say it is an anti-widget philosophy.
I just read the Director’s brief. It is consistent with the views I and IANAE express here. http://www.google.com/url?sa=t&source=web&cd=3&ved=0CBoQFjAC&url=http%3A%2F%2Fpatentlyo.com%2Fgiacomini—directors-brief-red-brief.pdf&ei=J5s7TKqeIoGesQPj6OicBg&usg=AFQjCNGjtl5BVi6JXP5rNdhjnlH6Kevwgg
It is, however, inconsistent with Rader’s opinion, which largely adopts the position of the applicant (that only the subject matter claimed is entitled to prior art effect). What is a Director to do? How can the nominal victor appeal or recommend a rehearing — because that is what the Director has to do in this case, because his legal theory lost.
IANAE, I agree TOTALLY with your post.
6 and Malcolm, I quoted case law above were the Feds pointed out that the commonly disclosed subject matter of a CIP is entitled to the filing date of its parent REGARDLESS of whether any claim is entitled to the benefit of the filing date of the parent.
See, Purdue Pharma v. Boehringer, 237 F.3d 1359 (Fed. Cir. 2000), discussed and quoted above.
It would be a bizarre world where the prior art status of a parent could change depending upon claims presented later, in an subsequent continuation, or even in a reissue or reexamination.
The patent office made this error, a very serious error which they later acknowledged in response to an editorial I wrote in the JPTOS, that the prior art status of a prior filed US or International application could “change” depending on whether the particular patent in question issued on an international application or upon a Section 111(a) application. The l u nacy of their position then was easily demonstrate just as you have so cleverly done in this instance, IANAE.
Malcolm: In practice, this would mean that a provisional specification that is *in fact* published (e.g., by virtue of a priority claim in a PCT app) can have two different *effective* publication dates in the US, depending on what is recited in the claims.
I understand your reasoning that a provisional should not be effective prior art based on the priority claim if the priority claim is not valid, but is this not an absurd result?
On which claims would the date depend? The originally filed claims in the regular? The claims that ultimately issue? What if we can find even one claim that was presented at some point during prosecution of the regular that finds 112 support in the provisional – would that be enough? How do we deal with the ever-changing 102(e) dates as the regular undergoes amendments in the ordinary course of prosecution? Surely that affects only the priority dates of those particular claims in the regular, and not of the regular as a whole. Or, what 6 said, I guess.
If the provisional was made public pursuant to an attempted priority claim, shouldn’t that be enough? Wouldn’t that make more sense?
I can’t believe you guys continued to discuss this. And just for the record I’m pretty sure me, ping and MM are all saying the same thing. MM just happens to break down what we’re saying into the more technical aspects. I can’t be sure since he seems to have stated something a bit off the wall, but it could practically be a typo.
What MM said was:
“Rader “An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.”
I think this makes sense but only if you recognize that a priority claim to a provisional that does not provide written description support for the claimed invention is a bogus priority claim. To the extent the priority claim to the provisional is bogus, the provisional will not be given the special status of being considered 102(e) art as of the provisional filing date.
In practice, this would mean that a provisional specification that is *in fact* published (e.g., by virtue of a priority claim in a PCT app) can have two different *effective* publication dates in the US, depending on what is recited in the claims. Note that it makes no difference whether the claims issue or not.”
What he said literally is not true, but it is very close. What subject matter gets the 102(e) date in a given provisional>nonprovisional relationship is not governed by what is claimed in the nonprovisional (or the provisional for that matter). It is governed simply by what specifically overlaps in the disclosure as a whole of both documents (including any claims and stuff in the spec). Don’t take that the wrong way, I’m not saying that if the later document had “at least three legs” then they would necessarily get a priority 102(e) date (from a validly referred to provisional validly disclosing) for the subject matter “4 legs”. That would likely not be proper overlap.
So, to the extent that MM may have been referring to the “instantly claimed invention” in a case such as this where he is referring to the subject matter under consideration in the application at question, rather than the prov or non-prov under consideration as a reference, then he would be correct. It is difficult to know what specific claimed invention he was referring to. You guys keep throwing terms that are easily confused in this discussion leading to misunderstandings. You need to be clear.
I note that indeed a priority claim in an application under examination or an issued patent to a prov may be proper even if the case currently has no claims to the subject matter that is properly supported by the prov. Indeed, they may want to file a CON or DIV later to submit some claims that would require the chain of priority to get back to the prov, but they have none in the non-prov now. Of course, the claims in that non-prov application under examination (or that has already issued) will not get the date of the prov if the prov does not provide them with WD support.
Like I said, I simply cannot believe that you guys continue to discuss this. It’s as easy as babycakes. I also cannot believe that Max has such a poor understanding of the situation as to have misread the document also.
My pal Hal got done saying what I said at Jul 09, 2010 at 05:43 PM:
“A whole lot of misconception about what Rader said.
Here’s an observation to think about: Rader said that the issue wasn’t raised properly and that’s why it is moot. Rader was addressing a procedural technicality. Rader was not addressing the merits of the argument, cause he didn’t have to.”
Me so scholarly.
Hal says:
“Now, several folks have questioned further possible holdings of the case.
But, there is none: Appellants narrowly brought the issue of a patent-defeating date of a provisional with waiver of other issues. There also is no question concerning whether the provisional has a full disclosure of the invention.”
The effective prior art dates of patents issuing an international applications is perhaps the sole “significant” remaining prior art issue in US law that has not previously been addressed by US courts. The problem is that the US patent office is taking a very conservative position on this this issue is not asserting that US patents have an effective prior art date as of the earliest US patent application to which they claim benefit if they happened issue on international applications. As a practical matter therefore, a large number patents are issuing that potentially are invalid because the patent office is not citing the best available prior art against them. Secondly, by not raising the issue itself in the patent office, they are not giving the Federal Circuit or any other court an opportunity to opine on the issue. This is strongly contrary to the prior practice of other commissioners and other solicitors to take the most aggressive position on prior art possible and allow the courts to decide the issue. Rather, by not raising the issue, the Commissioner has short-circuited the natural development of the law.
I hope the present director reads this post and reconsiders his duty to the American public in this matter.
Yeah, ping, you are probably right.
Rick Neifeld published this criticism of the commissioners views.
link to neifeld.com
It includes the follow footnote:
10. In In re Lund, 376 F.2d 982, 988, 153 USPQ 625, 630-31 (CCPA 1967), the Court of Customs and Patent Appeals stated that “ it is also well settled that…all subject matter carried over into [the patent] from the parent application…[is] evidence to defeat another’s right to a patent.” (emphasis in the original). In In re Klesper, 397 F.2d 882, 885, 158 USPQ 256, 257 (CCPA 1968) the court unequivocally indicated that the 35 USC 102(e) prior art date of a patent is the filing date of the earliest United States filed application disclosing the invention from which the patent claims priority. More recently, the Federal Circuit has affirmed a long standing doctrine that prior art includes all inventions which were made in the United States and subsequently disclosed to the public in the United States. See E. I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437, 7 USPQ2d 1129, 1134-35 (Fed. Cir. 1988) (quoting with approval from In re Bass, 474 F2.d 1276, 1292, 177 USPQ 178, 190 (CCPA 1973))(“[t]he term ’prior art’ as it is used in 35 U.S.C. §103 should include all inventions which were made in this country before an applicant or patentee made his invention, regardless of when those inventions are made public or patent applications on them are filed, so long as those inventions are found not to have been abandoned, suppressed, or concealed.”).
I think that’s a lot more than just the fourth time you be asking Ned.
I will ask for the fourth time, what is the prior art date of subject matter disclosure in a patent issuing on an international application that claims the benefit of the filing date of an earlier filed US patent application (provisional or non provisional) when the subject matter is fully supported in the earlier-filed case under Section 112, p. 1? Add, even, that the subject matter is claimed.
The commissioner has long maintained that it is the national stage date, or other dates provided from time to time by 102(e). See, 35 USC 375. Is he right? Seems flatly inconsistent with ALL judicial precedent and is a result not mandated by the statutory framework.
I would like to bring to our discussion prior binding precedent that is inconsistent with Rader’s opinion:
In re Lund, 376 F.2d 982 (CCPA 1967)
link to cases.justia.com
and
Purdue Pharma v. Boehringer, 237 F.3d 1359 (Fed. Cir. 2000)
In Lund, the court held that “disclosure” carried forward into an issued patent is entitled to prior art status, but not disclosure not carried forward. But what is interesting is its discussion of the law:
It is, of course, incontrovertible that a description of an invention of another in an application filed before an applicant’s date of invention, upon which application a patent is issued, constitutes a bar to the issuance of a valid patent for the same invention, Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), codified by § 102(e), or obvious variations thereof, Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304 (1965). It is also well settled that where a patent purports on its face to be a “continuation-in-part” of a prior application, the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent. 35 U.S.C. §§ 102(e), 120; Goodyear Tire & Rubber Co. v. Ladd, 121 U.S.App.D.C. 275, 349 F.2d 710 (1965), certiorari denied 382 U.S. 973, 86 S.Ct. 536, 15 L.Ed.2d 465; Asseff v. Marzall, 88 U.S.App.D.C. 358, 189 F.2d 660 (1951), certiorari denied 342 U.S. 828, 72 S.Ct. 51, 96 L.Ed. 626; In re Switzer, 166 F.2d 827, 35 CCPA 1013.7
38
The question is — what has been “carried over” from the Margerison ‘806 application to the application on which the Margerison patent issued? Although the board stated that “the subject matter” of the ‘806 application “has been carried forward” into the patent, it would seem that it was referring to the broad, generic disclosure of the compounds and perhaps the other disclosure common to the two applications which we have outlined earlier in this opinion. The examiner stated, and the board and solicitor do not disagree, that the patent “has not carried forward the disclosure that is being relied upon by the Examiner as the prior art.” We agree with this conclusion of the examiner. Thus it is apparent that the claimed subject matter has not literally or explicitly been “described” in the patent upon which the rejection is predicated.
…
That is not the case here, however. It seems to us that the sine qua non of § 102(e) and the Milburn case is that, consistent with the gain to the public which the patent laws mean to secure, a patent must issue which contains, explicitly or implicitly, the description of an invention which is to be relied on to defeat a later inventor’s patent rights. It does not appear that the patentee here has done “all that he could do to make his description public,” Milburn, supra, for the language Margerison employs is not sufficient to incorporate the description of his earlier application into the patent and the description which the Patent Office relies upon appears only in the earlier application. Upon the facts here, we think it would require an unreasonable extension of the language of § 102 (e), and of the Milburn decision it codifies, to find that the subject matter of claim 3 is “described” in the patent issued to Margerison.
In Boehringer, the issue was whether the patentee had committed fraud by claiming priority to an earlier application in an CIP where the claims were not supported. The Feds said this, and it is important:
Because the specifications of the asserted patents and the ‘331 parent are largely identical, it was logical for Purdue to claim priority to the ‘331 parent, even if the claims of the asserted patents are not entitled to the earlier priority date of the ‘331 patent. As pointed out in In re Wertheim, 646 F.2d 527, 533, 209 USPQ 554, 561 (C.C.P.A. 1981) (discussing In re Lund, 376 F.2d 982, 988, 153 USPQ 625, 630-31) (C.C.P.A. 1967)), a claim to priority to an earlier patent strengthens the offensive value of a later patent, because, for disclosures common to both documents, the later patent will be effective as prior art as of the filing date of the earlier patent. We therefore decline to find inequitable conduct in the mere act of claiming priority to an earlier patent where the specifications, but not the claims, of the later patents are supported by the earlier patent.
Both these prior cases are flatly inconsistent with Rader’s views on 102(e).
Ned, I love your twist. I have noted over 30 years the difficulties US attorneys have, in comprehending the (to me)very simple and logical Article 54 novelty provisions of the EPC, under which A would be entitled to priority for a dependent claim but not for the wider claim from which it depends.
When the multi-national team of patent experts in Europe put together the simple provisions of Article 54, they were standing on the shoulders of giants (including many from the USA) and making sure they did not carry forward into Europe’s new law of novelty any of the obscurities and uncertainties of the old “prior claiming” regimes that were used up to that point to decide priority between inventors.
I think events since then have revealed that the team succeeded.
I suspect that Rader J. has taken all this fully into account. As you say, he might well be “on a mission” here.
Mr Sehgal, why isn’t A publication (and the attendant throwing open of the USPTO file wrapper) enough for your purposes. That’s all you get at the EPO.
If there is no other prior art for provisional for example PCT,then how an applicant will know that such a prior art exists as provisional is not accessable. In such a scenario USPTO should have a provision to enable the potential applicants to have an access to database of provisional applications as it saves efforts on the part of applicant and also to some extent workload on USPTo as many double patenting cases can be avoided.
BJ, good example.
Let’s give it a twist:
A has a dependent claim wherein he claims a chair with four legs. This claim is wholly supported in his earlier filed provisional. He should be able to rely on its filing date to remove the reference.
Now, this is entirely contrary to normal practice in the US where the it is the dependent claims that are deemed patentable if the parent is patentable.
MaxDrei, Rader is always on the warpath. He may be trying to change US law on 102(e) prior art. He did this once upon a time with regard to Means Plus Function claims when he was new to the court. He is doing it now with regard to the “entire market value” rule and damages.
Ping, I think the only thing dicta about Rader’s opinion was whether the Tran claims were supported. He did not have to decide this issue because it was unnecessary. However, he did rest his opinion on the priority claim and the invention claimed by Tran. Here is the decisive passage:
Therefore, the Tran patent “shall have the same effect,” including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).
The holding of the court is that the “claimed” invention (the Tran claims) is given patent defeating effect as of the filing date of the provisional.
Now, as I have said, this is completely correct under 102(g); but is quite unexpected under 102(e).
Thanks ping. I can go along with that. But what if the issue HAD been raised properly? Can we divine what he would have said, or must we, the PTO and its Applicant community, the BPAI, and the district courts meanwhile wait for a suitable case to reach the CAFC, at some indeterminate date in the future?
A whole lot of misconception about what Rader said.
Here’s an observation to think about: Rader said that the issue wasn’t raised properly and that’s why it is moot. Rader was addressing a procedural technicality. Rader was not addressing the merits of the argument, cause he didn’t have to.
Help me BJ, with what you think Rader “implies”. Are you asserting that the statement:
“wait, ‘at least three legs’ isn’t supported by B’s provisional, either!”
is a bad basis for refuting the novelty attack, but that Rader says it is a good one?
Interesting. We are back with the debate about whether “prior claiming” or “whole contents” is the better way to deal with prior art that is post-published yet prior-filed. Jurisdictions, throughout the FtF world, have chosen one or the other of these two approaches. Neither is devoid of merit. But patent attorneys do need to know which one is governing, in any particular jurisdiction.
Does Rader know which one governs in the USA, I wonder.
Regardless of the interpretation of Rader’s comments of what needs to be supported in the provisional application, he is wrong. Or at least, should be.
Here’s the hypo to prove it:
01/01/2005 – A files a provisional describing only a chair with four legs.
03/01/2005 – B files a provisional describing only a chair with four legs.
06/01/2005 – A files a non-provision describing and claiming a chair with at least three legs.
01/01/2006 – B files a non-provisional describing and claiming the chair with four legs.
The Examiner determines that A does not get the benefit of the provisional because his provisional only supports 4 legs, not 3 or more. Then the Examiner applies B as prior art by virtue of it’s provisional date. A can’t say “wait, ‘at least three legs’ isn’t supported by B’s provisional, either!”
However, this is what Rader implies. What he should have said is that B is prior art for every “invention” it describes in accordance with 112, claimed or unclaimed. Thus, B’s described four anticipates A’s at least three even though B (or A) wouldn’t support the anticipated claim. Further, the results shouldn’t change if B claims a houseboat.
ping, thanks.
I propose a truce. Agreed?
Malcom:
Also, if I expressly abandon a provisional 1 month after filing it, then file a utility application 11 months after the provisional filing date, can I still claim priority to that provisional application? Seems like a dicey proposition.
There is no requirement of co-pendence in 119, which pertains to BOTH provisionals and to foreigh applicaitons as a basis for priority. The whole intent from the get go was to give Americans the same priority rights as foreign applicants in the new era of patent term being measured from the US (111(a)) filing date.
Score one for Ned!
Nice job old-timer.
Swearing Momma, – doesn’t 35 USC 111(b)(8) trump your view, at least in the duel here of using a provisional to antedate the applicant?
“provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.”
I will ask for the third time:
What is the effective 102(g) date of a patent or the claimed subject matter of that patent issuing on an international application that claims the benefit of a prior US patent application disclosing the invention in the manner required by Section 112, p. 1.
An obvious problem with provisionals is that there is no requirement of co-pendency, leaving only the priority link.
There is a 1-year time limit from the provisional filing date for any priority claim to be made to the provisional, no?
Also, if I expressly abandon a provisional 1 month after filing it, then file a utility application 11 months after the provisional filing date, can I still claim priority to that provisional application? Seems like a dicey proposition.
Now, read the official position of PTO concerning abandoned patent applications and their use as 102(e) prior art, supra, and compare to my hypo and earlier posts suggesting that they too could be prior art under Rader’s rational concerning “prior invention.”
Channeling, see
2127 Domestic and Foreign Patent Applications as Prior Art [R-6]
I. ABANDONED APPLICATIONS, INCLU-DING PROVISIONAL APPLICATIONS
Abandoned Applications Disclosed to the Public Can Be Used as Prior Art
“An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under [former Defensive Publication rule] 37 CFR 1.139.” Lee Pharmaceutical v. Kreps, 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978). An abandoned patent application becomes available as prior art only as of the date the public gains access to it. See 37 CFR 1.14(a)(1)(ii) and (iv). However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent >or U.S. patent application publication< may be relied on in a 35 U.S.C. 102(e) rejection based on that patent >or patent application publication< if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.
link to uspto.gov
“Bruce, if you reference an abandoned application, it is deemed published on the date of publication of the referencing patent or published patent application. Its effective date is not on the date the abandoned application was filed.”
cite please.
Mooney, you have yet to deal with Rader’s opinion, what he actually said, and not with your preconceived notions.
Bruce, if you reference an abandoned application, it is deemed published on the date of publication of the referencing patent or published patent application. Its effective date is not on the date the abandoned application was filed.
Let’s take Rader seriously for a moment. What Rader may be contending is that the only subject matter that is prior art as of the “filing” date of a parent is subject matter claimed and supported in the child. Everything else is deemed “published” on the date of publication of the patent or application.
Now, as you and I both agree, this is contrary to long establish precedent that treats 102(e) as a quasi publication of subject matter described in a patent application as of the date it is first disclosed if the subject matter is published in a published patent or application that “claims” (regardless of merits of the claim) to be a continuation (CIP as well) or a division of the that application and if there was “co-pendency.”
An obvious problem with provisionals is that there is no requirement of co-pendency, leaving only the priority link. Thus, Rader had to concoct a sui-generis theory that is very dangerous to established 102(e) precedent.
Bruce The idea that a provisional application is only prior art as to what is claimed from it in its cited child applications seems nonsensical to me.
It is nonsense. As far as I can tell, it’s mainly Ned’s idea.
It seems to me that there must be thousands of provisional applications abandoned each year. Can it really be the case that all a poor abandoned provisional needs in order to become 102(e) prior art is for its inventor to claim priority in some subsequent utility patent, even if the priority claim is, to use Malcolm’s word, completely bogus?
How can you really determine if it is completely bogus?
Here is part of the problem, as I see it. It is totally irrelevant what a prior art utility application/patent claims when determining what it discloses for 102/103. The claims there are irrelevant, but not what is disclosed. I would estimate that 98+% of the prior art that I see cited against applications I am prosecuting have claims that are irrelevant to my applications. On very rare occasion, I have had claims cited against me as prior art, but in those cases, those claims were considered part of the disclosure because they were part of the application when it was originally filed.
The idea that a provisional application is only prior art as to what is claimed from it in its cited child applications seems nonsensical to me. In all other cases, with anticipating references, what is important is what is disclosed, and not what is claimed. This is true no matter how many levels of parentage you have to go through, and how many of those were confidential until opened up through publication of a child application.