Patent Reform – An Important Amendment to the Bill

The Senate is today considering the Patent Reform Act of 2011, with the proviso that the legislation is now being termed the “America Invents Act of 2011.” A major element of the bill would eliminate first-to-invent rights and also eliminate any pre-filing grace period except for inventor-derived disclosures (and post-inventor disclosure disclosures). In several ways, the legal reforms would move US law closer to the rest-of-the-world (ROW) by primarily basing patent rights on the date that a patent application is filed rather than the date of invention.

Anti-Harmonization: In noting a major deficiency in the bill, Hal Wegner has expressed concern that the unfortunate end result is anti-harmonization. The particular concern is the question of when “secret” prior art (today termed 102(e) prior art) is available for obviousness (or inventive step) analysis.

In the European and proposed US first-to-file system, when two individuals independently make the same advance, only the first-inventor-to-file the patent application will receive a patent on that invention. However, it is actually quite rare that the second-filed application’s claim set will be entirely anticipated by the previously filed disclosure. The big question then is not novelty, but rather obviousness (or inventive step) – do the claims in the second-filed application present an inventive step over the prior art? In Europe and the ROW, the first-filed patent application can only be used for novelty analysis and is not applied to the question of obviousness unless that first-filed application was otherwise published. Under the new US bill, however, these unpublished, secret filings would be used both for novelty and obviousness grounds.

An Example: To be clear, the issue arises when Inventor-A files a patent application and then, a few months later, Inventor-B files a patent application claiming a similar (but different) invention. It is usually the case that (1) Inventor-A will not immediately publicize its invention and (2) the first-filed application will not be published until 18-months after its filing. Under the proposed system, Inventor-B’s patent could be blocked on obviousness grounds based on Inventor-A’s application. In Europe and Japan, however, the earlier filed application would not be used in the obviousness (inventive step) analysis unless published prior to Inventor-B’s application date.

Thus, under our current invention-date-focused system, some inventions are patentable in the US that would not be patentable in Europe and Japan. On the flip-side, once the bill is passed, there will be a new set of inventions that are patentable in Europe and Japan, but not patentable in the US.

Importance: This issue turns out to be important in a fairly large number of cases. In a recent study, I found that, on average, US patents cite to about 5.5 references that conform to this situation – i.e., the average patent in my study cited to 5.5 other patent applications that were on-file prior to the filing of the patent application under examination but were not published until afterwards. The legal question for examiners is whether those references should be considered only for novelty grounds or if obviousness should be a consideration as well.

I do not know the answer to the question of whether the proposed US system is better or worse than the current European system. I do know, however, is that the US proposal does not harmonize those laws and may tend to frustrate US applicants by offering a lower bar to patentability in Europe than in their home country.

A Framework for Analysis: The Supreme Court’s 2007 decision in KSR v. Teleflex offers one framework for analysis. That case talked about a common sense approach to obviousness analysis – both in choosing prior art references to consider and in applying those references against the proposed invention. The common sense framework suggests that we not consider prior art references that could not have been accessible to someone of ordinary skill in the art. In this situation, these previously-filed applications were, by definition, kept secret within the Patent Office and not published elsewhere. Under those conditions, a common sense approach would exclude those when determining the level of ordinary skill in the art.

If the fix is to eliminate this secret prior art from obviousness analysis, the solution is a simple three-line amendment to the proposed legislation.

139 thoughts on “Patent Reform – An Important Amendment to the Bill

  1. Ron, just thinking about this, what we need is this:

    The statute as it currently reads except:

    Remove on sale from 102(a) and move it to

    102(c) – and there provide that the inventor is barred from receiving a patent if the inventor has placed the invention on sale for more than a year.

    Add to the exclusion from 102(a) (grace period) for those who, before a disclosure or patent application filed by another, invented first.

  2. Ron: It is not generally required to file an application before such events in other countries. The rest of the world does not bar a patent based on “public use” or “on sale” where no public disclosure of the invention is involved. But S. 23 does. Why do we want to impose here a constraint which no one experienced around the world? Do we even know what the consequences will be? Currently, American patent law encourages invention and development to remain domestic because our “public use” or “on sale” bar are subject to the one-year grace. The rest of the world, in a perverse way, has an indefinite grace period for filing an application after such public use or sale events so long as there is no public disclosure. Do we want patent protection under such circumstances to exist only abroad but not in America? This would create a tilted playing field, where inventors find that they are more likely to lose patent protection in the U.S. than elsewhere. It appears that S.23’s drafters have concocted an orphan which resembles none of the existing patent systems – a system that would singularly disadvantage inventors in this country.

    Ron, I have come to understand that 102(a)(1) is exactly the same as what you describe above. The “otherwise” language limits “on sale” to public disclosures, just as in the ROW.

    So, if so, the startup has an indefinite period of time to get his venture off the ground, see finanicing and the rest, so long as he uses confidentiality agreements.

    But the problem I have with this, is that there is nothing in the statute that remains that imposes any limit on the amount of time the inventor can take exploiting his invention before he must file. That will permit one to practice the invention indefinitely as a trade secret and still obtain a patent.

    Now, that flies in the face of one of the foundational Supreme Court cases of our system, Pennock v. Dialog.

    I can report to you that I have had numerous conversations with the lead drafter of the bill where I discussed this issue. He never seemed to have any problem with this. I now understand why. It is the way it was done in Europe, and it had a lot going for it regardless of Pennock v. Dialog.

  3. Max, good point. A lot about the compromise grace period is wholly about the good professors.

    What you fail to consider is money. In order to even draft a patent application, they probably need interest from third parties. University patent budgets are thin.

  4. CC puts his finger on the key issue. He asserts:

    “…to attract investors, researchers and inventors need to be able to publish before embarking in the onerous process of filing a patent application….”

    I agree that investors do not beat a path to the door of an inventor with an invention hidden in the garage. Somehow they have to find out about the invention.

    Where I do not agree is that a US grace period is the only way to get contact between inventors and investors. I think it can be done just as effectively without a grace period. Seems to me that most investors would value being the only ones in the know. After all, I read in these pages often enough that manufacturers do not launch new products till everything is ready. To do so any earlier will hurt their competitive position. So, most investors ought to be vehemently against any grace period.

    I take issue with you also on “onerous”. Working with a talented patent attorney, to draft and file a solid patent application, is the best way I know to force the inventor to appreciate what the invention really is, and where more technical development needs to be done. Doing this exercise BEFORE publishing is the best way for the inventor to optimise his/her patent strength. Perhaps that is why Big Corp works to retain a grace period in the Senate Bill???

    You write “reasonable compromise”. I reply “worse than both of the present systems”.

    Dennis, please go back to a strict chronological thread. I found this interesting March 03 item only today.

  5. You should realize that edison wasent the inventor of anything significant electricaly he was the developer of certain things possibly with estate stolen money although his list of suposed keeps growing falsley even today. The real inventor was Delbert Roberts as a 12 year old he opened the worlds first electric company The roberts electric co.in port Huron mi. He invented the first internal combustion engine and worlds first generator in 1882 also the worlds first electrical water pump and city water system.

  6. The only situations that need adressing with respect to eliminating prepatent filing discussion of inventions is accidental devulgement, this is where filing within 3days of each other identifies the dispute then the other three methods of the mccain plan kick in.There is also the potential of employee theft attempts in patent preperation being evesdroped inpreperation and internet hacking so the only thing you can hope for nowadays is at least landing your invention in the patent first and the information being stolen immediatly.This is why the comittee needs a worlds only master inventor because in this bills oversimplified version everything discussed in these blog histories is left out.They dont have anyone who can advance the bill only occaisionally they pick up on something in this blog. This means big business and theftors gets to steal everything due to whats missing.

  7. There is no reason to not file first then discuss the invention the discussing first simpley invites a inventorship dispute.The only one who gain in the present system is those who conspire to steal already filed inventions by backdating.

  8. Now I see a good example of obviousness the first inventor with the benefit of the 1st filers published application or through internet hacking or interoffice leaks or evesdroping gains the information of the content of the filing then improves it and files obviously without the original information the second patent wouldnt exist so it would be obvious to one skilled in that field of previous art. The second patent should be denied until the experation of the first filed patent and be considered the child of the parent patent it could become the improved product with lisencing negotiations though. This is where pto personal need to be able to spot the similarities to avoid issuance of the second patent. Cash lump sum payments need to be disallowed or restricted as to erosion of or concielment of funds by buyer supervised reinvestment for a period of the patent term.

  9. Another important amendment to this bill to create jobs by improved incentive to create is to include a provision for parent patent recognition and guaranteed continued revinue streams when the invention is improved on. product cycles are becomming to short redcing the patent values to the point of 0 destroying a creation incentive in the first place.

  10. There is definatrely no reason to eliminate first to invent rights this allows the theft of intellectual property.Creating improved mothods of inventorship determination and getting rid of no good methods in our present and proposed system is key to a perfected patent system.

  11. even when the demo is in public, there is still no loss of patentability if the public cannot discern the feature combination in the claim.

    The US system has never required that a public use or sale be enabling to qualify as prior art. The invention can be “on sale” even if it hasn’t been invented yet. They apparently don’t intend to change that in the reform, either.

    In that way, the US grace period is somewhat less inventor-friendly than its international counterparts. Nobody ever complains about it, though.

  12. Is it ping? Your wit is lost on me. Are you insinuating something? I am too naive to see what you are getting at.

    Still, never mind me. I’m sure all the other readers are right with you.

  13. Art. 55(2) EPC was taken over from some very old national dispositions, and if I’m not mistaken, dating back from the era of the original Paris Union, or before. In the days of infrequent sea-travel and limited recognition of foreign rights, one had to be able to get his hard-to-hide steam shovel from the Southampton or Le Havre to the Crystal Palace or the Trocadéro, and still be able to get protection from the local patent office.

    The list of admissible events is still maintained by the EPO. The acceptable venues are those registered by the Bureau International des Expositions, such as the 2010 Shangai and 2008 Zaragoza international exhibitions. Not the Hannover Messe or some trade show in Vegas you’d expect. So much for MX3′s “clean slate”.

    If the applicant were patent-smart enough to know about Art. 55(2) EPC, he would also choose to be diligent and file a proper priority application before showing his stuff, as a positive action is required on his part anyway at the time of the disclosure. I don’t think I’ve ever seen this disposition actually invoked. Moreover, the grace period concerns only the filing of the EP application, one cannot invoke it in relationship with a non-EP priority (G3/98, G2/99).

  14. After having dealt with start-ups, I do consider that the Americans are absolutely right on that account: to attract investors, researchers and inventors need to be able to publish before embarking in the onerous process of filing a patent application. This is indeed also the point of the quaint “international exhibitions” grace period of Art. 55 EPC, but we should accept that it is completely obsolete: I don’t see why such restrictions on the kind of graced disclosure have to apply.
    If we are going to harmonize, I believe that FtF + a US-style unconditional 12-month grace period would be the most reasonable compromise by far.

  15. Max, Inventor0875 specified “where wing warping is visible”. His question implied that the invention was indeed disclosed in the video. Of course, if the invention remains a “black box”, there is no disclosure…

  16. The way I see it, Americans say that even the pan-Asian grace period is not worth the name. It’s like Henry Ford (also an American). We can agree on any form of grace period you like, as long as it’s the American one (no constraints at all on what disclosures are graced).

  17. Oh so true, was there. Look for example what Mike Kirk of AIPLA writes on the next thread. He seeks to introduce “Winner Take All” FtF, turbo-charged and much more aggressive and one-sided than EPC FtF. Under the cloak of harmonisation, it is not harmonising at all. Look, he says he is taking the good bits of the EPC and leaving behind the bad bits. Good and bad for his members, that is.

  18. Good stuff CC but even when the demo is in public, there is still no loss of patentability if the public cannot discern the feature combination in the claim. Suppose the claim recites something about the links between the control actuators in the pilot’s seating position and the flight surfaces on the wing. If Wright lets the public dismantle his plane then he has “made available” that invention to the public. But if he just flies around then puts his aircraft back in a locked garage, then not.

  19. Seen from abroad, I can clearly see the benefit to US inventors of switching to the FtF system. Currently, US inventors (especially individual inventors and inventors in small entities) are all too often blissfully unaware of the dangers of disclosing before the priority date, if they intend to file abroad. A great many foreign patent applications by US inventors are rejected because of such prior disclosure. Just by increasing US inventors’ and attorneys’ awareness of the danger of self-anticipation, the switch to FtF would greatly benefit them and the US balance of payments…

  20. “inventors (i.e., the first person to invent.)”

    I hope you can easily see the mistake in your reasoning. The second, third, fourth persons to invent (if they did really invent, rather than steal the firs person’s invention) are also “inventors”, just not the first ones.

    As the FTI system currently stands, it doesn’t even necessarily protect the first inventor, but rather the person who can provide the earliest proof of invention…

  21. OK, there’s that, although I don’t think our American friends would consider the Art. 55 EPC “grace period” as worth that name.

  22. Well, the Wright Brothers had disclosed wing warping in a conference to the WSE well before filing. And wing warping as such (even if for yaw rather than roll control) was anticipated by Mouillard in US 582,757, anyway. As a result, the Wrights never even attempted to enforce claim 1 of their US patent, and the litigation focussed on claim 7, which related to what is known today as coordinated turning, that is, using wing warping (or ailerons) to bank the aircraft and simultaneously the rudder to counter adverse yaw. Their problem was that claim 7 physically linked both controls, whereas all their competitors uncoupled both controls and left it to the pilot to dose roll and yaw control. The US judge ultimately granted the Wrights’ patent a very wide claim construction as a “pioneer patent”. Other jurisdictions (they also filed abroad, you know) were less clement.

    To answer your question, the whole matter would depend on whether the third party was authorized to witness and disclose the invention, or whether those experiments were supposed to be confidential. If the experiments were acknowledged as confidential and the cell phone video was not disclosed to anybody else before the filing date, then the experiments would not have been a public prior use in the sense of the European Patent Convention. In the experiments were supposed to be confidential, but the cell phone video was recorded and further disclosed breaching that confidentiality, then there’s a 6-month grace period under the EPC. Finally, if the experiments were public, then there is no grace period whatsoever.

  23. So, Mike, having obviousness decided on the basis of material that was not available at the date of the claim to any member of the public is necessary because it “prevents the prospect of several patents issuing on what is essentially one invention”. And, Europe’s Art 54(3) self-collision is bad too.

    I get it. You want a form of FtF that is even more generous to he who files first, and even more cruel to the one who files on similar subject matter just one day later. Sort of turbo-charged FtF, right?

    Americans might favour a “Winner take all and the devil take the rest” environment (they do, don’t they?) but Europe’s EPC still (I am glad to say)manages the respective interests of the stake-holders with a bit more sophistication than your model displays.

    And as for voices in Europe who support your position, I think of that book “Merchants of Doubt”. Follow the money. How do these chirrupers earn their money?

  24. 0875: Put it this way: if I were representing Wright, I would be very confident that I could beat off that attack. Recall that the level of proof I said was needed was “up to the hilt”. In England it would hang on the x-exam at trial.

    But first I need to see the claim. Did it say “An aircraft with a wing that warps”? I doubt it.

  25. Not true. Under US law you can be the first inventor – then conceal your invention – an then a second in time inventor – independently invents the invention again and then files a patent application and discloses the invention – gets his patent and asserts the patent against the first ‘inventor.’ and will wins against the first inventor (and all others) – because the first inventor is a concealer – is not an inventor under the eyes of US patent law. See the prior secret use ‘business method’ code defense to creates a personal defense exception to this effect of code. This disclosure incentive effect has been in place prior to the ’52? act – i believe.

  26. You should be concerned. That is the point of the legislation. I have noticed over the years that when the US ‘harmonizes” it’s IP laws there is usually an old corporate interest that stands to gain at the expense of new comers.

  27. Thank you Ron for your efforts in these matters. You deserve to hear that more often.

    It is indeed hard to imagine a PPM stating the funding case for the new game changing widget – without some clever attorney saying you put the invention “on sale” under the new code.

    Looks like google/intel strikes again with this proposed legislation.

  28. To increase patent quality and take a bite out of the backlog, I submit that the process of examining patent claims should be reengineered. Last month Jeopardy! featured a man-machine showdown that piqued the public fancy. An IBM computer named Watson beat out a couple of human champions. See link to ht.ly Coincidentally, Alexander Poltorak (CEO of General Patent Corporation and founder of American Innovators for Patent Reform) received notice that his U.S. Patent 7,904,453 for APPARATUS AND METHOD FOR ANALYZING PATENT CLAIM VALIDITY is to issue March 8th. link to ht.ly I don’t know whether 7,904,453 is the solution, but isn’t it time that the society with the most powerful information technology in human history provide to U.S. patent examiners a tool that presents an organized report of the prior art that’s most pertinent to each element of each claim under examination? In effect, it would be an automated version of the Examination Support Document (“ESD”) that in 2007, the PTO had announced it would require many patent applicants to generate. And cf. the current MPEP 708.02(a) link to ht.ly.

    Back in 2007, I was impressed by a publicity piece issued by PatentCafe.com. They had just announced a commercial service to automate the creation of an ESD. I published in Biotechnology Law Report an editorial urging that the PTO provide such technology as an in-house tool for use by patent examiners. link to ht.ly Doing so, rather than requiring an ESD from outside, would relieve the applicants and their attorneys of the burden and risk, and yet lead to patents of improved “quality.” I commented that

    ”This would be analogous to the deployment of the automatic telephone exchange, after anticipated growth of the switchboard phone system couldn’t be supported without recruiting every woman in America to work as a telephone operator.”

    Now that IBM has demonstrated the ability of their Watson system to draw sophisticated conclusions from a vast repository of text, I submit that the time has come to enlist such technology in the service of the PTO towards more speedily generating a higher quality patent examination. With one stone, this should help kill the two birds of “junk patents” and the “backlog of unexamined patents.”

    It is imperative that Congress support implementation of computer-assisted patent examination. And there is good news from the House of Representatives. As reported Feb. 13th by The Hill, link to ht.ly Rep. Bob Goodlatte (R-Va) said that the most likely focus of the House version of “patent reform” would be on “increasing the speed and quality of the patent process,” commenting further that the PTO “doesn’t use enough technology to ensure products are unique and worthy of a new patent, making the process slow and cumbersome.”

    It seems to me that Rep. Goodlatte is spot-on. Having come to government service from a career at IBM, Director Kappos is uniquely qualified to lead us towards this beneficial transformation.

    Until the PTO provides a Watson-like analytical infrastructure for patent examiners, it seems to me that the whole patenting process will remain in jeopardy. In the legendary words of Alexander Graham Bell: “Watson, come here. I want you.”

    See link to ht.ly for more on this.

  29. Observing the discussion about whether S. 23 moves the United States sufficiently toward the rest of the world with its provision awarding patent rights on the date that a patent application is filed rather than the date an invention is made, I wonder whether the real progress that would be made toward harmonization by S. 23 is not being overlooked by a fundamental disagreement about whether the US system or the European system is better.

    Let me acknowledge at the outset that my views are colored by the many years I spent in WIPO in so-called patent law harmonization meetings – meetings in which my European colleagues always had a ready answer for how the United States could achieve harmonization: adopt the European Patent Convention. Count me among those who do not find this an acceptable suggestion.

    As pointed out, Europe does have what is referred to as a “novelty-only” prior art doctrine that applies when a patent application is published. Upon publication, the application is prior art from its filing date, but only for the purpose of determining whether the invention claimed in a later-filed application is novel. S. 23 does not adopt this aspect of the European system. It retains the current US approach where a patent application is prior art for both novelty and obviousness purposes from the date it is filed (assuming it is later published or patented).

    So, does S. 23 completely harmonize US patent law with the European patent law? Here, the answer is obviously “no.” Does S. 23 move US patent law toward the global standard with the adoption of the “first-inventor-to-file” principle? I believe the answer is clearly “yes.” The questions that should be discussed, however, are should the US adopt the European system lock, stock, and barrel? Is the European system better than the US system? Here, I continue to believe the answer to both questions is “no.”

    Certain aspects of European patent law are clearly less inventor-friendly than us patent law. European patent law has no inventor’s grace period as found in U.S. patent law. It treats an inventor’s own prior-filed patent applications as “prior art” against the inventor’s later-filed patent applications, unlike U.S. patent law. It also treats the earlier-filed patent applications of an inventor’s coworkers in the same manner, again in contrast to U.S. patent law.

    The European patent system also has what is commonly referred to “self-collision” – every European patent application filed “collides” with and destroys the patentability of any later-filed European patent application disclosing the same invention. This system is only workable in Europe because the patentability impact of the inventors’ and coworkers’ prior patent filings is limited to the question of whether a later patent filing is novel in view of such earlier patent filings.

    Since earlier patent filings by inventors and their coworkers do not qualify as “prior art” to begin with under U.S. patent law, it is irrelevant that S. 23 does not have a “novelty-only” rule. Under current US law and under S. 23, there is a “no prior art rule” in these circumstances – not just a “novelty-only rule.” The US rule much better protects inventors.

    The situations where earlier patent filings can be used as prior art against later patent filings in the United States applies only to patent applications filed by unaffiliated third parties. The United States does not use a “novelty-only rule” in this situation today or would not under S. 23 because it makes no sense and would lead to very undesirable consequences.

    What current U.S. patent law does (and would continue to do under S. 23) is to make an initial patent filing prior art for both novelty and obviousness purposes against a later filed patent that differs only in trivial ways from the invention disclosed in the earlier patent filing. This prevents the prospect of several patents issuing on what is essentially one invention, a prospect that could arise in fields where a number of companies are simultaneously pursuing a solution to a common problem. This, of course, is just good public policy; and a policy the US has long embraced.

    As previously noted, S. 23 does not harmonize US patent law with European patent law, nor do I believe it should. It takes the desirable features of that law (e.g., first-inventor-to-file, removing geographical limitations on prior art, limiting prior art to only information that is publicly available) and rejects those features which are not desirable. Of course, there will undoubtedly be a disagreement as to what features of European law are desirable and which are not. But there are features of US patent law that represent best practices that many in Europe believe Europe should adopt, and which I believe we should not abandon.

    S. 23 makes a significant step forward in a difficult environment and should be enacted.

  30. You should realize that the wright brothers dident invent the airplane Delbert Roberts my grandfather did. the worlds first bi-plane was on the ground at the present day sight of the St.Clair county airport some two years before kitty hawk the disputes been raging for years.As far as the video cellphone I invented that myself wanna invest in a published application.

  31. Sorry, Max, but you are wrong. I don’t know about the UK, but in other countries I’m more familiar with, an enabling knowledge will suffice, independently of any preparations or even intent to market before the filing date. This is one of the main reasons why France has the “Soleau envelope” for instance.

  32. Thats right cutout all the junk and keep and add to the good The problem is that the past system was so bad we now have the issue of putting the patents back into the right name to consider as they are stolen property with inventor rights denied. The four method plan of mccain fixes this situation assuming the integrity of the patent office. Filing dates are good under my plan with an emphysis on being within 3 days for my rejuvinatede initial disclosure document program and 90 days under the provisional or nonprovisional of course 6 or 18 months under pto published application rules is another aniversary evidencing milestone.This still doesent find the correct inventor in indegency cases where the inventor cant afford to file the patent.Also it doesint work in espiosage situations

  33. Oh. Well, if you want to determine the true inventor accurately, and assuming that the true inventor would like to have a patent, by far the best way to make that determination is to compare filing dates. Not only is that determination simple and objective, but the PTO has direct access to all the information it needs.

    No more affidavits of dubious repute swearing back to an earlier date. No more thoughtless public disclosures with the intention of filing an application within the year. No more wondering for a full year after publication whether somebody else will come along and trigger an interference with your claims. No more uncertainty about whether or not a reference is prior art. Let people claim prior inventorship all they want. Your already-filed application is indifferent.

    If you want a patent, ask for one. If you don’t want a patent, by all means do some other thing with your invention instead.

  34. No were supposed to be trying to get rid of all the no good methods of inventorship determination that have failed so miserably in the past and replace them with all good new methods that find the true inventor accuratly. What these people on the commitee are doing is totally backwards as expected.

  35. Then why don’t you done “observe” the answer the my questions, tool. The answer is a resounding “yes” for all 3 questions.

  36. But to best understand why, one needs to step outside the KSR playpen and perhaps use a more realistic model of what obvious is in relation to the inventive process.

    Cepts JT – that aint the law. Ya just dont get to step outside O KSR. And I observed – the time factor aint even the main power factor.

  37. “What does the examiner do with the Party C answer? Why, or why not, is this fair?”

    The examiner cites and applies the art. It’s fair because the statute is clear on what is considered 102(e) prior art.

    Now can you answer my questions? They are much easier.

  38. I largely agree with the other posters here in that I indeed think secret prior art should be used for 102 but *NOT* for 103 rejections. But to best understand why, one needs to step outside the KSR playpen and perhaps use a more realistic model of what obvious is in relation to the inventive process. The longer after the initial invention, the more obvious it would have been to do something to improve it. For instance, when light bulbs first came out, who cared about the fact that the voltage on the wires was so low it required thick wires and lots of copper. People were just crazy about it even working at all. Only much later, over time, as one was gaining experience in lighting buildings, would it have become obvious to someone skilled in the art that the voltage should be increased to decrease wiring costs. Edison, who apparently invented high voltage lights, filed within a year of Swan, so was probably fast enough it was non-obvious IMO. (As it turned out, Edison was denied. He eventually got some light bulb patents, but as I understand needed Swan’s permission to sell his lights here in the states.) Hypothetically speaking, had Edison waited long enough, he probably shouldn’t have gotten a patent for a high-voltage light bulb, because over time people realized high voltages lowered electrical power transportation costs. The point is that it took time for that idea to penetrate PHOSITA thought. This is one example, used purely because it seems the most popular, but I am pretty sure it works for most inventions. What we use in my company is what we call the “obviousness cone test.” It borrows heavily spacetime diagrams with light cones. In this paradigm, all inventions are sort of like the branching joints in a tree. Each joint represents a new idea that can cause new inventions to arise over time. The “obviousness cone” of one specific idea is such that as time goes upwards, prior-art ideas must be outside the cone, but the later ones could be inside the obviousness cone, depending on how different they are. KSR only deals with that “difference distance,” not its relation to time dimension. Over time, new ideas “branch out” into new directions as improvements become obvious within the inventive tree. The larger the lateral distance between two simultaneous ideas, the less obvious they were from one anther. To be exact, our obviousness cone test (i.e., is it inside or outside the cone of obviousness) requires knowing the rate at which PHOSITAs learned of the problems in the prior art, which sets the lateral “distance to the fixes” leading to the new invention. Eventually, if you waited long enough, all idea cones overlap, so everything becomes obvious from anything else. Now the law need not be as good as that model. But presently it only discusses the lateral distance. That is, Graham v. Deere 103. It doesn’t take into account the *time* distance dimension. (It assumes only square step functions.) Nothing is perfect, but clearly one can see the amendment as getting closer to the “obviousness cone test” for obviousness, because if the art is secret, there is no branch leading upward to it. The cone doesn’t even exist yet. The branching start exactly and only after the POSTIA gains potential awareness of the previous invention. That’s when the branch begins growth. That’s the point of the upside-down cone. Therefore, the amendment making secret prior art valid for 102s but only for 103s is indeed needed. Hope this brings some clarity to this issue. Sorry to any readers who already saw me post on this topic before.

    Cheers, Jason Taylor link to twitter.com

  39. Let’s put it this way. If they had waited a year before filing in the US, it wouldn’t have invalidated their US claims under the current law, because experimental use doesn’t count as prior public use.

    I think we should be more concerned with why inventors are so insistent that they be able to do 16 different things in public with the invention before filing an application, and still have the public consider that the inventor did not intend to make that invention available to the public prior to filing.

    I don’t mind adapting the patent law so that small inventors can have their way, but we’ll cause no end of problems if we want them to have it both ways.

  40. Would a third-party cell phone video of the Wright Brothers experiments [where wing warping was visible], taken prior to their application … have either prevented or invalidated an EPO patent (under the current EPO First-to-File rules)?

  41. ping I do not understand what priority date A declares in the published PCT you mention above. Would that be a priority date more than one year earlier than the PCT filing date. Perhaps Jan 5, 2007? Is that effective, domestically in the USA?

    Without the benefit of that priority date, the PCT stands on its international filing date. So it’s a total waste of money, right?

    Can we take it that B filed no PCT?

  42. convinced that it will be the end of life on earth for inventors.

    The point you miss, Maxie – is that it will be for some particular types.

    The only one ignorant of that seems to be those that deny that truth. This simply aint a discussion about ROW or EP of Japan – this be about US law and the US small inventor. Why do you insist on talking about something you dont know anything about?

    O wait – you be Maxie – ya don’t havta answer, I already know.

  43. loyd; filing an initial disclosure document showing complete conception will insure proper crediting. Design perfecting can be completed in the two years following that this program used to allow before it was wrongfully discontinued. This should harmonize the situation if you feel confident of completion after one year just file provisional or non provisional.File comparisons as to dispute situations should clear the disagreements as far as who was first

  44. I don’t “insist”. I just react to all those Chicken Littles, ignorant of FtF but nevertheless convinced that it will be the end of life on earth for inventors.

  45. Not scaremongering are we Mr Boundy? The EPO fee for claim 16 is EUR 210, not EUR 600. With multiple-dependent on multiple-dependent free for the first 15 you can cover an awful lot of feature combinations before the fees kick in at claim 16. Have a look at how many claims are in issued EPO patents. Why do Americans file so many independent claims (and so few worthwhile dependent claims)?

  46. Maxie,

    Rather than any “allaying” you have done the opposite – Why do you insist on applying EP law to an US discussion?

  47. one could argue that if we still permit these 102(e) refs in novelty rejections, we still oughtn’t permit obvious variants thereof

    This was the point of an earlier thread that I did not fave – the one I asked Julie about. Those refs can be used for both novelty and obviousness now. So far as I understood the earlier exchange.

  48. Don’t we already have a rule that a later inventor can get the patent if the first inventor abandons, suppresses, or conceals it? Where has your argument of uncostitutionality been all this time?

  49. Max,

    “Submarine” is an improper term (as I am sure that you know that it is a term of art in the patent world).

    Try again.

  50. Hey J,

    Consider the following as an observation:

    Party A files a non-provisional on January 5, 2007. There is no provisional, but Party A does file a non-publication request.

    Party B files a non-provisional on June 5, 2007. There is no provisional, Party B does not file a non-publication request.

    Party C files a non-provisional on January 12, 2008. There is no provisional, Party C does not file a non-publication request.

    Each Party’s invention can “read” on each other in a 103 context.

    Situation 1)

    Party B expressly abandons prior to publication. Party A, tired of waiting, as not having received a first office action on the merits, revokes its non-publication request on January 20, 2010. It then files a PCT claiming priority and a Search Report is promptly published (along with the app).

    Party C has already answered one Office action (in which the examiner did not cite the “secret art” of Party A.

    What does the examiner do with the Party C answer? Why, or why not, is this fair?

  51. And if it does catch on – ya can rest assured that it will be under attack in ever subtle and not so subtle ways.

    Red-blooded capialists have no problem about eating their young.

    Sorta like the Sith.

  52. Wow – eveen I know the answer here (and I can freely give it,since it aint my answer):

    What you are “paying for in advance” is not beign delivered. The original Quid Pro Quo was for a patent in exchange for the publlication of the information – not the promise of a patent (or a crrppy examination).

    So Iza say yeah – their be something fundamentally improper to pay for somethin in advance and never recieve it.

    This aint a hard concept to understand, my main man.

  53. Note the key thing in the manager’s amendment –

    – under current law, the PTO has fee setting authority so long as fees “recover the average cost to the Office of such processing, services, or materials.”

    – S.23 now gives the PTO to set fees any way it likes, so long as total fees in the aggregate equal PTO costs.

    This is a Congressional grant of authority to implement the continuations and claims and IDS rules through fee setting. The European 600 euros for claim number 16? Coming soon to a patent office near you.

    S.23 is a bad bill, and getting worse as it goes.

  54. If applied to US design patents, the removal of the US grace period will be considerably more restrictive than Europe. The EU industrial design registration procedures include a 12-month grace period. As such, for designs this change will not be harmonization.

  55. All that I have read here about the contradictory needs of start-ups makes me think that some sort of protected childhood for them might be in the public interest. The good professor has in mind import restrictions, protected home market, Government hand-holding, that sort of thing. But that’s all hopelessly, you know, socialist.

    Import restrictions? Protected market? Government hand-holding in the public interest?

    You mean like some kind of patent? It’ll never catch on.

  56. There is an eminent Korean professor of economics at Cambridge University (UK) who urges that minnow industries need a protected childhood so that, in adulthood, they can survive, in international competition with the established ocean carnivores. According to his thesis, that’s how every industrial country got started, including the USA.

    All that I have read here about the contradictory needs of start-ups makes me think that some sort of protected childhood for them might be in the public interest. The good professor has in mind import restrictions, protected home market, Government hand-holding, that sort of thing. But that’s all hopelessly, you know, socialist.

    So, perhaps Ned is onto something here. Red-blooded capitalist feather-bedding anybody?

  57. The prior art will stay the same. What will change is whether one can rely on invention dates to overcome that same prior art.

    No, the prior art will change. When you swear behind a reference based on your invention date, you are saying that the reference does not meet the “before the date of invention” criterion for being prior art under section 102, and therefore the reference is not prior art.

    A change to first-to-file is nothing more than a redefinition of the prior art to depend on the filing date instead of the invention date. That changes which references are prior art and which are not.

    Whether or not a particular reference is prior art against an application is a decision to be made for the inventor, not by him.

  58. In order to form a more perfect inventorship determination program you need to deal with all potential thefting isses. One is backdating inventions to defeat a true inventors claims this can be stoped by immediate check of previous art by internet lack of listing and complete search of uspto database files and international files at the time of filing.

  59. Corruption of the original deal of Quid Pro Quo

    You say that as if it were somehow fundamentally improper to pay for something in advance, or deliver it in advance.

    When I go to a fast food restaurant, I pay before I get my food. When I go to a table service restaurant, I get my food before I pay. Which of those would you say corrupts the quid pro quo of the contract of sale? Both?

  60. IANAE, I think you have it backwards, at least according to the system of the pending bill.

    The prior art will stay the same. What will change is whether one can rely on invention dates to overcome that same prior art.

    The examiner will still search and cite every reference that has an effective date before the filing date of the application. The big companies who seek the “benefits” of harmonization (actually, detriments it seems) will not be able to avoid it. The little guy who does not file foreign can — by filing a 131 declaration.

  61. This isn’t a simple procedural matter like whether or not your application gets published at 18 months.

    Corruption of the original deal of Quid Pro Quo is not a “simple procedural matter“. See recent comments by Judge Michel for independent corroboration.

    The fact that you offer this comment belies your prejudice – not that there was any doubt.

  62. Can you guess why?

    Because it’s ridiculous for the knowledge of a hypothetical person skilled in the art to depend on what formalities you choose to invoke on filing.

    This isn’t a simple procedural matter like whether or not your application gets published at 18 months. The difference between FTF and FTI is the scope of the prior art, which really isn’t something the applicant should be entitled to choose. He especially shouldn’t be able to choose it based on what he decides to do in foreign jurisdictions where the US patent wouldn’t apply.

  63. You cant have the allowance of discussion before filing or you create the potential for invention theft. Filing first is the esential most credible documentation. If the inventor feels that complete conception is not yet obtained then keep it sectet until it is. The return of an improved security initial disclosure document program will solve the problem of insufficiency of the application for novice inventors it never should have been eliminated.

  64. Yes and no.

    If they file foreign, they cannot opt out of FTF. They can thereafter only rely on their filing date and effectively have no grace period.

    If they do not file foreign, they can use he current system if they choose.

    If there is an interference, the FTF folks could not prove prior invention at all. They would simply rely on their filing date.

    The big companies that routinely file foreign would get what they want, but they would not force others who do not need to file foreign, the startups, onto a system they do not want and which causes them a great deal of actual harm.

    But, you will quickly see, that the big companies will not agree to this, will they? They are already on a first to file system by necessity because they file foreign. But the startups are not. They do not like this comparative advantage of the little guy.

    Can you guess why?

  65. Max, the point is that they never filed on all 100 applications, just the four. Further, they did not have to concern themselves with patents at all until they were finished inventing.

    If they had to file on every invention as it was made, they faced two problems

    1) they could not afford the costs; and

    2) the disruption of R & D by patent attorneys seeking information from engineers alone might ruin the venture.

    All this has to do with drafting and filing patent applications. It has nothing to do with prosection. I agree that PCTs can defer the heavy expenses of prosecution until a later date. But nothing defers the initial costs of filing.

  66. I would like to see a case go to SCOTUS with the argument that because a ref was not published at filing date, it wasn’t obvious at the time of the invention, before we ask congress to enstatufy some rigid rule that clearly favors granting patents to the second inventor of something.

    You want to be extra-sure of what the law is now, right before we change it?

    Why not simply decide which way we want the law to be, and then enact (or “enstatufy”, to use the technical term) the law to clearly be that way?

  67. Just add the term first to file as a primary method of determining first to invent da!

    It’s already the primary method. All we’re doing now is getting rid of the other methods.

  68. I can allay your fears Inventor 0875. If you have ever tried to get a duly issued EPO patent revoked on the basis of the acts of the inventor or applicant prior to the filing date, you would be much reassured. Evidence is needed “up to the hilt” ie clear and convincing, that whatever it was that happened did have the effect of making available to at least one member of “the public” free in law and equity to run off and tell the world the solution to the objective technical problem which is the subject matter of the claim in view. Thus, you can go on TV and spout about the problem you have solved (without revealing how you do it) or you can tell persons who owe you some degree of discretion all the details of your claimed solution. What you can’t do is publish an enabling written description with no constraints on its dissemination further.

    If that’s what is needed, to bootstrap a start up though, you are confining your patent possibilities to the USA alone, from the get go. Does that make sense, these days?

  69. It was intended to be a hypothetical to compare the difference between US-style and EPO-style when it comes to 102(e)/103 secret art, and otherwise ignores all other issues relating to obviousness (e.g. case law).

  70. Indefinite in time ping. Submarine when Applicant forswears foreign filing. Got it now?

    Tell me again. When is your upper limit on the length of time of the black hole?

  71. I am concerned that thousands of currently used start-up bootstrapping activities … are not allowed under the proposed patent reform.

    Perhaps the legal experts can comment on the differences between current law and the proposed reforms, for these typical bootstrap activities:

    a) Discussions with potential investors; angel investors; venture capital.
    b) Testing market potential or pricing.
    c) Showing printed marketing materials.
    d) Confidential discussions/meetings in a corner of a restaurant, coffee shop, etc.
    e) Using design software/tools that are shared with others in the public (school, etc).
    f) Prototyping with equipment at a shared tools workshop, school/course workshop, hobby make-it store, shared fabrication-shop, etc.
    g) Showing prototypes/demos to others or potential customers. Assume concept is hidden inside the device. Assume concept is partially or totally knowable (by only one skilled in the art; or by all).
    h) Testing of prototypes in public. Outside; on a road; in the air; on a lake; etc.
    i) An unknown third party is inadvertently exposed to an invention during demo/test … and then, without the inventor’s knowledge or approval, discloses the concept on the Internet (email, blog, twitter, YouTube, video, social media, etc.).
    j) A third-party cell-phone camera; traffic cameras; etc … happen to capture a demo/test.
    k) Information is overheard/lost/stolen and later distributed on the Internet by an unknown third-party.
    l) Offer-for-sale to test the demand for product.
    m) Taking advance orders to fund the business.
    n) Publication/electronic-distribution (e.g, marketing) to generate interest.
    o) Fraudulent, accident or unintentional violations of Non-Disclosure Agreements (NDA).
    p) Foolish public disclosures by an inexperienced inventor or their partners.
    q) If Grace-Period is eliminated: Disclosure by inventors that don’t “hear” of the change.

    [As I understand it] Under current law (1 year grace period) … it’s possible to do all these bootstrap activities (before filing a patent application) and still get patent(s).

    As I understand the proposed reforms … if any of these bootstrap activities were done before filing for a patent application [without having Non-Disclosure Agreements (that were honored) with every party exposed to the invention] … no patent.

    … And under the proposed reforms, any issued patent(s) would be invalid … if it was later determined that any of these bootstrapping activities occurred.

    [As I understand it] Under the proposed reform, issued patent(s) are now under continual risk of invalidation … by a disclosure, without the inventor’s knowledge or approval by some unknown third-party occurred at some unknown time in the past. Due to smart-devices and the Internet, the possibility of disclosure, without the inventor’s knowledge or approval by some unknown third-party … is continually increasing. Everyone is a potential accidental publisher … of a patent killing disclosure.

    I am very concerned that the proposed patent reform … will kill-off start-up bootstrapping.

  72. The U.S. Congress has only the power to secure patent rights for inventors (i.e., the first person to invent.)

    Every other country in the world grants patent rights to “inventors”. That doesn’t stop them from using a first-to-file system, or letting the assignee be the applicant of record at the patent office.

    The word “inventors” means the same as the word “authors” in that respect – simply that you must have originated the work rather than copied it. If two people independently write the exact same book, we don’t limit copyright to the first author.

    The only reason patents are first-to-invent is because that’s the way 35 USC 102 is currently written.

  73. Why don’t we limit the new “first to file” system to those who file outside the United States just as we now limit the publication of patents?

    You’re kidding, right? You can’t seriously be proposing that we let applicants choose at the time of filing whether certain references will be prior art against their application, or that different art would be citable or not depending on whether the application is also filed in another jurisdiction.

  74. Disallowing non-pubbed art for obviousness rejections does make sense since that knowledge wasn’t available “at the time of the invention”. However, one could argue that if we still permit these 102(e) refs in novelty rejections, we still oughtn’t permit obvious variants thereof. The most reasonable policy might be that you can use a “secret ref” as a base reference, but not a modifying reference. The idea being that we continue to reaffirm graham v deere so long as we can justify that the gap is covered by knowledge that was available “at the time of the invention”. I would like to see a case go to SCOTUS with the argument that because a ref was not published at filing date, it wasn’t obvious at the time of the invention, before we ask congress to enstatufy some rigid rule that clearly favors granting patents to the second inventor of something.

  75. One of the biggest things that this legislation lacks is uspto automatic action in inventor secutity until becoming financially able and securing payment and shutdown of companies for infringing and non payment and original payment collection for invention usages. The need for uspto to become a policeing agency is critical to eliminate intimidation and theft.We cant retain and increase our share of top inventors without it.

  76. The discussion is not over. Every time it comes up there’s a new feature to discuss. And I’m not sure which answer you are referring to.

    Do you agree then with the follwing? An amendment to exclude ealier-filed-but-later-published 102(e) art from 103 analysis could create more certainty by 1) reducing the amount of prior art to be considered in an obviousness analysis, 2) reducing the risk of later found invalid patents due to previously secret art, and 3) reducing reexams or post-grant reviews based on previously secret art.

    I’m saying the answer is yes, the amendment would have some desirable consequences for end users of the patent system, i.e. the public. Even though the certainty created by the amendment could mean less work for examiners, attorneys, and agents.

  77. No.

    which keeps the world waiting indefinitely to find out the scope of protection that his publisher member has obtained from the USPTO.

    enough straw with the “indefinite” Maxi – Ever hear of the rule abouts no new added matter? That means that at file the upper limits are set. Period.

  78. There is no need to eliminate the term first to invent from the equation. Just add the term first to file as a primary method of determining first to invent da!

  79. The current way in the USA IS First to Invent/First to Publish isn’t it ping? I want to understand your point but I don’t, yet.

  80. The big deal is that is screws individual inventors and startups. It doesn’t affect large corporate filers at all, since they effectively operate on a first to file system anyway, as they file in places like Europe and Japan as well.

  81. The Bill of Rights is the first ten amendments to the Constitution of the United States of America. Every amendment in the Bill of Rights was carefully deliberated and voted in favor of after much discussion. An amendment is a change in the Constitution for the best interest of the people. Amendments one, four, and eight in the Bill of Rights stand out among the others.
    link to usedhpcomputers.com

  82. What Ron wants for his members is a First to Publish system which keeps the world waiting indefinitely to find out the scope of protection that his publisher member has obtained from the USPTO.

    What Big Corp / Big Employer wants is FTO.

    Those two wish lists are incompatible. Both protagonists assert their superior job-creating prowess. Who’s right? Nobody knows.

    Therein lies the difficulty, no?

  83. By the way, compared with haranguing one another, I much prefer this friendly banter. Thank you.

    Stick it – where be the chuckles in that?

  84. Your point: to tackle the backlog, and the stream of junk filings, the world should standardise on First to Invent/First to Publish

    Maxie – I think that not be his point – rather – this “should standardise on First to Invent/First to Publish” mindset be the cause of even worse stream of junk filings – the current way allows for US to not haveta do this. The other point is that this stream (which can be currently avoided) will disproportionately hurt the little guys – and is why the big guys be pushin it. The big guys already climbed the wall and only be kicking the ladder away.

  85. Je_wels,

    Glad to see this issue getting more face time. As always, I must post when the topic of secret 102(e) art comes up.

    I think this 102(e) discussion been done before and an answer provided – I didn’t fave the thread though.

  86. Other jabbering about the “The Supreme Court’s 2007 decision in KSR v. Teleflex offers one framework for analysis. That case talked about a common sense approach to obviousness analysis

    The elephant in the room aint what the construct could be able to see at file/publish, but the nature of the construct itself. KSR’s double edge sword is pretty da_mm sharp here. NOo only is this construct able to know ALL prior art in the relevant field, but also any and all prior art in ANY field that lends itself to the solution invented by the applicant through this “common sense” approach.

    The big ears being that it be anti-common sense to think any person having any sense of ordinary skill in any art would possibly know or be aware of ALL the art given as known by KSR.

  87. Don’t follow you Jules. Is yours a hypothetical, or are you asserting what you perceive to be the reality of prosecution at the USPTO and the EPO today?

    Candy? Are you serious? How many EPO Examiners do you know?

    How do you square the USPTO “harsh” posture with the current emphasis on using commercial success. Should not every dog have his day, and every inventor his issued patent with which to try his luck on his “day in court”?

    Main thing is, predictability. Both the USPTO and the EPO have a statutory duty to grant patents. Obviousness law should be objective, transparent and predictable. Give me an EPO search report and I will tell you what claim you can get past the 3-member, 3-nationality Examining Division and through to issue, if you let me file it as a preliminary amendment.

    Now my turn. I give you the USPTO search report. Can you tell me what useful claim will come through to issue in a FAOM that is at the same time a Notice of Allowance?

    By the way, compared with haranguing one another, I much prefer this friendly banter. Thank you.

  88. The filter be strong this morning.

    Lots of jabbering here about Europe, EP and ROW – Who the Ef cares about them? This is about the US patent. Can someone esplain the conceptual benefit to the US patent by any measure that weakens the patent?

  89. That’s news to me, CC. I thought there was a grace period everywhere (Article 55 of the EPC is by far the meanest and leanest though. I give you that).

    But of course it depends what you mean by “grace period”. There are a thousand different ways of implementing a grace period provision.

  90. Just, what is your opinion on the clarity of the first sentence of Article 60 of the (First to File) European Patent Convention, which recites:

    The right to a European patent shall belong to the inventor or his (sic) successor in title.

    Is that a “key” provision? Is Europe failing to implement a crystal clear First to Invent statute.

  91. Is there not an American constitutional problem with abandoning the first to invent rule?

    Article 1, Section 8 seems rather clear.

    “The U.S. Congress shall have the power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    The key phrase is “Authors and inventors”. The U.S. Congress has only the power to secure patent rights for inventors (i.e., the first person to invent.) I do not see how you get around this whatever the merits of so doing might be.

  92. Paul,

    If the original is not published, how would they know? If a party wants to file a thicket they can file a thicket. They would be filing it in ignorance of the first invention anyway.

  93. This will not come up nearly as often as you believe it will. First-to-file is more fair, because the disclosure is what benefits the public.

  94. Michael,

    Most jurisdictions have a “prior use exception”, which safeguards alleged infringers who can prove that they already had enabling knowledge of the invention before the filing date, even if they hadn’t published it. So, you can’t be (successfully) sued for infringement just because you took longer to file, as long as you kept proper records.

  95. In general, if there was support then the first filer would win the argument, if not then the second filer would. Date of claim, Ned Heller, is not relevant.
    I really don’t see this as a problem. ROW isn’t beset by these sorts of issues.

  96. Speaking on behalf of the rest of the world, whether or not you care is not really of interest. Most patent systems require consideration of whether or not something is obvious. It would make sense if those considerations were broadly similar.
    Your final point doesn’t make sense. If the argument is that the art was moving in a direction which leads to the invention, then one doesn’t need secret art to make the case for obviousness. If there is no such indication, the fact that two people independently come up with something similar does not make it obvious.

  97. Here is a similar story

    The U.S. Senate voted on Tuesday to strip controversial provisions out of a bipartisan bill to revamp the U.S. patent system and clear a years long backlog of patent applications.

    The vote was 97 in favor and two opposed.

  98. Ned I do remember that entrepreneur. Thanks for reminding me.

    Your point: to tackle the backlog, and the stream of junk filings, the world should standardise on First to Invent/First to Publish. Then, for every hundred 18 month A publications today, giving notice of scope of protection in the pipeline, there would in future be only four PTO publications, eventually, when the inventor chooses to take his patents to issue.

    And that is going to Promote the Progress of useful arts? Freeze it, more like.

  99. This amendment apears to be at lest in part related to the chineese theft of intellectual property by improving or creating minor variations of the original to use for free As soon as the invention is published I have a new skyscraper system that has been used in this manor.

  100. Actually, the invention of application A is likely to be sold or used moments after the filing of application A, but there is no way for the examiner of application A to know of the post-filing-date sale or use. Perhaps buried in the legislative history there is a policy reason for 102(e) in that we can assume that the invention is disclosed to the public (i.e. no longer secret) on the date the application is filed. Of course, the well-known policy reason is that delays in the patent office from application to grant/publication should not prohibit an examiner from relying on the application as a prior art reference.

  101. Interesting issue.

    “Under those conditions, a common sense approach would exclude those [previously filed applications] when determining the level of ordinary skill in the art.”

    On the other hand, if look at the patent grant as a quid pro quo, than the contribution made by the first patent filing in that equation arguably puts obvious variations into the public domain.

    However, I agree a better way to compromise would be to harmomize with Europe/Japan to make more consistent for applicants. And, we’ve had enough anti-patent changes this past decade.

  102. “Hah! Mein Fuhrer, I have a plan,” said the crippled Dr. Strangelove as he lurched awkwardly from his wheelchair, addressing the Director of the USPTO in excited realization that he had hit up “the solution” to all our problems.

    “Why don’t we limit the new “first to file” system to those who file outside the United States just as we now limit the publication of patents? Those who foreign file, or those who do no choose to opt out, will be covered by the new law. Otherwise, those who need the benefits of the current system and do not need the “benefits” of harmonization, whatever they may be, can continue to under the first to invent system.”

  103. Will FTF be retroactive for existing issued patents?

    This can make a difference when someone attempts to invalidate a patent by citing prior non-patent literature.

    (With old NPL you can read whatever you want into it.)

  104. Should read, “…will principally *benefit* large companies…” A few other typos, so apologies for those.

  105. The American Invents Act of 2011 is a job-killing bill written by and for one sector of the industry. Passing it wouldn’t improve anything about the patent system. It would just make patents harder and more expensive to attain, harder and more expensive to enforce, and harder to get any worthwhile damages out of once infringement has been proven. Its changes will principally large companies who prefer to maintain their market dominance through means other than patent monopoly, and, in turn, it will kill the innovation ecosystem by reducing the incentive to innovate as an upstart market entrant.

    As for the “harmonization” that some speak of, it’s an illusory goal that should be unwanted anyway. First-to-invent is one of the fairest aspects of the American system. Replacing interference proceedings with derivation proceedings only deprives inventors of the opportunity to fairly obtain a deserved patent on the basis of evidence already within their possession and shifts onerous litigation burdens to earlier in the process at the administrative-branch level. America has the best intellectual property system in the world. There is no reason why we should want to be more like Europe an an area where Europe is weaker, except to satisfy the contingent who see IP as something pesky, the protections of which are to be diminished.

    I feel that the dangers of the bill, and the vast gap between the bill’s actual effects on the patent system and the Congress’s understanding of that system, should be causes for horror on the part of all who have a stake in the future of American innovation. We no longer have any manufacturing to speak of in this country. If we lose innovation as our last remaining edge because of a poorly-deliberated legislative whim, what will we have left?

  106. “The PHOSITA can be whatever the Statute says it is.”

    Coming back to this, I like it. You’re absolutely right – it is arbitrarily defined by statute. Which one more accurately depicts obviousness, the “in the minds” test or the “published” test? It doesn’t matter. The point is that certain policy objectives are obtained by deciding one way or the other. It is not based on the most noble high-thinking philosphy, it is simply based on objectives. Does EPO-style obviousness have certain benefits? Sure. Does US-style have certain benefits? Sure.

    You choose to defend the EPO-style with words like “unassailable”, so I can’t help but be advesarial, albiet in a friendly manner.

    Consider this, then: the EPO hands out obvious patents like candy, while the US issues less patents with its harsh obviousness standards. Doesn’t that make a US patent more valuable, since it is more rare, like a diamond?

  107. Max, if that is your understanding of our arguments after so much repetition, I must admit there is something wrong in the way we are presenting them.

    There was an interesting letter sent by the president of a number of startups and a former president of Microsoft that pointed out the critical differences that FTI provides startup that allow them to succeed vs. FTF. He described a process whereby they intended to develop a new product for a particular application. They had a broad idea on how to do it, but at every turn, they ended up at a dead end. One idea ended up panning out, but only in combination with partial results from another dead end.

    This entrepreneur mapped out the development path and the dead ends. It took a long time and much effort to get to a final product. That product resulted in four or five patent applications. But the whole project resulted in 100 inventions, most covering dead ends.

    In a FTF system, they would have had to file on all 100 inventions to protect their investment. In a FTI system, they had the luxury of waiting and filing only 4.

    From a resources point of view, the only way his company could have succeeded is in a FTI world.

  108. CR: Many on this blog assert that the American First to Invent patent law is what created US industrial dominance of the 20th century. It allows inventors to publish their inventions and get on the way to commercial success before they have to pay a patent attorney to write up their invention and file a patent application on it.

    The Rest of the World still thinks that the only justification for 20 year monopolies is as the price to pay to get inventions made available to the public (rather than held as trade secrets). ROW says: why give out competition-stifling patents on stuff that is already published.

    ROW forces publication of patent applications 18 months after the priority filng date. The “black hole” of uncertainty, what if anything has been patented, lasts a maximum of 18 months. The US system makes investors wait, indefinitely, to find out whether the stuff that has already been published has or has not been patented. Is this what makes the present US patent system so popular with US patent attorneys? What sort of patent law is it, that maximises investment in new manufacturing jobs?

  109. MD: Interesting theory that the “nerds” were left to it. However, I still find it hard to believe that money didn’t at least provide some motivation. It would be nice if we all had the noble intentions of a nerd, but that just isn’t the case.

    MM: Note I said it *appears* to be unassaiably logical. The truth is of course that there is no such thing as a free lunch.

    CR: Of course to a *new* patent attorney, who cares what the system is? But what about for all those already invested? According to your logic, ROW should have fell in line with the US. But they didn’t.

  110. As a new patent attorney, it seems like it would be easier to fall in line with the ROW. I agree the first to invent system seems more natural, however if I’m filing Japanese and other first to file patents anyway . . . what’s the big deal?

  111. Jules, as opposed to co-operating with each other, the countries of Europe do actually compete with each other, to attract investment. And anyway, think back to 1973. In those days, patent law was not yet sexy. The pols weren’t interested. Writing the EPC was left to the nerds. Do you think those ivory tower academics held “obtaining more investment” as the over-riding objective of their deliberations? Come on man. Snap out of your delusions.

  112. Jules Obtaining more investment always appears to be unassailably logical.

    And then the chemicals leak into the water supply … but nobody could have predicted that! Nobody!

    Seriously, Jules, obtaining more investment is “unassailably logical” only when short term profit is the *only* goal. Why do you suppose our country’s Republican governors are turning down the money and jobs associated with the development of high speed rail?

  113. I guess what I was getting at is this:

    Obtaining more investment always appears to be unassailably logical.

    In the 1973 discussion, I imagine issuing more patents rather than less appeared to be a more attractive option, based on attracting investment.

  114. For my “unassailable” Jules, I say that nobody has been able to lay a glove on its logic, these past 30 years.

    As for your 6 point, are you saying that every patent attorney scribe is the notional PHOSITA that is unlike any real person on earth? The PHOSITA can be whatever the Statute says it is. Define your own, do.

    Anyway, I thought I had already dealt with 6′s point.

  115. Maybe the intent was to issue even more patents than the US, in the hopes of obtaining more investment in their respective countries, thereby draining investment from the US.

    Why would anybody invest in Europe simply because Europe issues lots of patents? It’s just as easy to do your inventing here, and Europe will still give you the exact same patent over there without ever asking where you made your investment.

    The only people who would benefit from such policies would be EP patent agents. The ones in the “good” member states, anyway.

  116. I wonder what would happen if the first filer were to file a later claim, for example, in a continuation, to the broader invention so that the two applications would be actually claiming the same subject matter?

    Strictly speaking (and the rest of the world speaks much more strictly than we do), the first filer wouldn’t have written description support for the broader invention if his spec never contemplated any overlap, combination, or generalization of the two distinct embodiments.

    In which case, since the first filer hasn’t invented the broader invention, why should we object to the second filer claiming it?

    Honestly, sometimes we forget how easy we have it.

  117. “The only provisions that made it into the European Patent Convention were those that withstood criticism, from one Government or another amongst the drafters … It has unassailable underlying logic.”

    Maybe intent was to simply issue lots of patents (moreso than if 102(e) art was able to be used in 103 rejections). Maybe the intent was to issue even more patents than the US, in the hopes of obtaining more investment in their respective countries, thereby draining investment from the US.

    I guess that’s just speculation, but I wouldn’t exactly call it “unassailable”. Take 6′s logic, which represents the knowledge of the PHOSITA as what is known to be “in the minds” of PHOSITA’s as evidenced by their filings at the patent office.

  118. I have now read the contribution above from Ron Katznelson and can confirm that the EPC has no “on sale bar”.

  119. In 1973, Europe started with a blank sheet of paper, and wrote a new scheme of substantive patent law on it. The only provisions that made it into the European Patent Convention were those that withstood criticism, from one Government or another amongst the drafters. This is how Europe got to its law of novelty and obviousness. It has unassailable underlying logic. Everything in the state of the art made available to members of the public earlier than the date of the claim is available for obviousness attacks. Thus, what is not obvious goes through to issue, and what was obvious to the PHOSITA on the filing date does not. 6: in Europe, of course you can adduce later-published patent applications in evidence. It is just that it is not accepted as part of the “state of the art” as such. The PHOSITA is an artificial construct, one who knows all the art but is nevertheless devoid of any inventive faculty. No real person is anything like that. But, we have to have the concept of the PHOSITA, to be objective about obviousness.

    Novelty has quite another policy objective.

    Europe’s 102 is to:

    1) mediate between several parties who each file at the PTO before any of them publish. In order of the filing dates of their disclosures which enable, the first to file gets the lion’s share, and those who filed later still get any scraps that the lion did not already enable; and

    2) stop double patenting beyond 20 years.

    I have said it before and, now, I will say it again. Either harmonise with the EPC or stay with First to Invent.

  120. Hal’s anti-harmonization point is only the tip of the iceberg:
    S. 23 will deny American inventors patent protection that would not be denied under foreign patent laws

    First-to-file is a red herring. Interferences are so rare and are irrelevant as compared to the major problem with Section 2 of S. 23 – the perverse weakening of the grace period. However, the results are not merely a shift to a system used in other countries. It is a shift to a patent system that is worse than any other.

    In important circumstances, S. 23 would bar a patent that would not be barred in the rest of the world. In a novel and perverse way found in no other country, S. 23 would weaken patent protection only in America. Let’s keep it simple and limit the discussion to the loss of grace period due to the “public use” and “on sale” bar language of S.23. It provides in pertinent part as follows:

    “102 (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
    “(1) the claimed invention was patented, described in a printed publication, or in
    public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;”

    In comparison, the pertinent section on “public use” and “on sale” bar under current law in 35 USC 102(b) is as follows:

    “A person shall be entitled to a patent unless —
    (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

    Current U.S. law provides an unconditional one-year grace period. Although under S. 23 there are exceptions in proposed subsection 102(b) that excuse public disclosures by the inventor if made less than a year before filing, they are irrelevant here, as no disclosure is involved in mere public use or sale. A “disclosure” must enable those skilled in the art to practice the invention. Public use or sale, per se, are clearly not “disclosures” and therefore do not trigger S. 23’s exceptions which provide grace.

    For these events, there is no grace period in S. 23. This provision will kill startups’ ability to launch their commercial existence. It upsets two centuries of expertise in founding, marketing, financing and building new technology companies. Often, it is impossible to file an application that describes a workable invention early before its public use or offer for sale. In many cases, the public-use is necessarily the very first event that tests and validates an inventive solution worth protecting in a patent application. In these cases, public-use is an integral part of the development process and the business practice that facilitates development. The Wright Brothers’ unpowered test flights in October 1902 in Kitty Hawk had for the first time tested, validated and put in public use all claim elements of the application they filed in March 1903. In this and other such cases, a patent would be barred under S. 23. But not so in the rest of the world!

    It is not generally required to file an application before such events in other countries. The rest of the world does not bar a patent based on “public use” or “on sale” where no public disclosure of the invention is involved. But S. 23 does. Why do we want to impose here a constraint which no one experienced around the world? Do we even know what the consequences will be? Currently, American patent law encourages invention and development to remain domestic because our “public use” or “on sale” bar are subject to the one-year grace. The rest of the world, in a perverse way, has an indefinite grace period for filing an application after such public use or sale events so long as there is no public disclosure. Do we want patent protection under such circumstances to exist only abroad but not in America? This would create a tilted playing field, where inventors find that they are more likely to lose patent protection in the U.S. than elsewhere. It appears that S.23’s drafters have concocted an orphan which resembles none of the existing patent systems – a system that would singularly disadvantage inventors in this country.

    For other historical examples showing events during the grace period in some celebrated American inventions see the table in link to bit.ly . The Public use and on sale events are marked in two entries.

  121. Two embodiments but no linking claim?

    I wonder what would happen if the first filer were to file a later claim, for example, in a continuation, to the broader invention so that the two applications would be actually claiming the same subject matter?

    I suspect the second filer would get the claims as he would be the first to claim it.

    Interesting.

  122. I would suggest that the US way of handling this art is the correct way. For instance, suppose an application discloses two embodiments but through some oversight doesn’t happen to mention the combination of those embodiments. When the combination of the two embodiments is obvious, allowing a second party to claim that combination would essentially rob the first party of the ability to use their own two inventions in obvious combination.

  123. “1) reducing the amount of prior art to be searched”

    should be:

    “1) reducing the amount of prior art to be considered in an obviousness analysis”

  124. Glad to see this issue getting more face time. As always, I must post when the topic of secret 102(e) art comes up.

    “Common sense also bids us to look to what is in the minds of POSITAs at the relevant time and not just what is available to everyone in the whole world. One way to find evidence of that is to look at secrit arts.”

    Nice rebuttal to DC’s common sense. As they say, common sense isn’t common. Under 6′s logic, the current application of 102(e)/103 provides a better picture of obviousness than EPO-style 102(e)/103.

    It’s also interesting how adopting the EPO-style 102(e)/103 could create more certainty with respect to the new Track-1 system and a reduced backlog in general. It could create more certainty by 1) reducing the amount of prior art to be searched, 2) reducing the risk of later found invalid patents due to previously secret art, and 3) reducing reexams or post-grant reviews based on previously secret art.

  125. The problem with eliminating prior-filed applications as 103 prior art [as we have now with 102(e)/103], is that it would enable up to 18 month later filed applications by other different owners to claim essentially the same invention merely by adding trivial claim distinctions from their specs, to thereby create a mess of mutually blocking or “surround” patents that can prevent commercialization even by the true original inventor. U.S. law does not provide compulsory cross-licensing for such situations as various other countries have to solve that problem.

  126. DC If the fix is to eliminate this secret prior art from obviousness analysis, the solution is a simple three-line amendment to the proposed legislation.

    I agree. Great post, by the way.

  127. In fact, I have an application that is getting around the prior art because I showed my first draft pre-dated the filing date of another application!

    The best part is that you are surely the only person in the United States that keeps early drafts and other evidence of conception, so once your patent issues you are in no danger of ever losing it to someone who invented earlier. Congratulations!

  128. One problem – Congress will never get to it.

    First inventor is a much more fair system than first to file. I don’t want to be sued because I took 1 week longer to draft and file an application compared to someone else’s attorney. In fact, I have an application that is getting around the prior art because I showed my first draft pre-dated the filing date of another application!

  129. I don’t know man, why should we keep changing? Why not have ROW use their secrit arts in their “obviousness”?

    I also note that “obviousness” as such doesn’t even exist in ROW so why should we expect those systems to have their obviousness/inventive step analysis to match up?

    Bottom line, I don’t care, let ROW fix it.

    “The common sense framework suggests that we not consider prior art references that could not have been accessible to someone of ordinary skill in the art.”

    Common sense also bids us to look to what is in the minds of POSITAs at the relevant time and not just what is available to everyone in the whole world. One way to find evidence of that is to look at secrit arts.

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