Post-Disclosure Grace Period – Unique but Good Policy

Guest Post by Canadian Patent Attorney David French of Second Counsel. He also writes the Canada Patent Blog.

The U.S. Senate has now passed its new patent bill, S. 23.  Numerous comments have been made, particularly about the first-to-file revisions of this law. However, no one is commenting on the effect of the following clauses in amended section 102:

102(b) Exceptions-

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a) (1) if–

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

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

Subparagraph (B) has the following result:  If you disclose your invention to the public, or more precisely if the subject matter of your later patent application has been previously “publicly disclosed”, then you effectively have established your US filing date.

This is an unusual provision in patent law, indeed unique. But it appears to be good policy. It’s true; anyone relying on this provision would lose their rights in Europe. But if an inadvertent disclosure were to occur as through a public use or a public presentation, then if that disclosure meets the requirements of this section, the applicant would have thereby locked-in their right to obtain a US patent. This would be true, of course, only so long as they do not otherwise violate the one-year deadline to file based their own personal disclosures which have made the invention available to the public. This assumes, as well, that there has been no prior disclosure by a third-party.

This provision repairs a flaw in the present Canadian law. Under the Canadian patent statute, an inventor who puts his invention on the market and relies on the one-year grace period before filing in Canada, can still lose his patent rights if an independent inventor makes the invention “available to the public” before the inventor has filed his patent application. In other words, it’s still a “race to the patent office” as between strangers in Canada.

The exception of Section 102(b)(1)(B) provides relief from that pressure. Effectively, publicly disclosing your invention will shield any application from after-arising prior art. This is equivalent to obtaining a filing date.

Another way to look at the exception is that it provides a presumption that anyone who subsequently publishes an invention is assumed to have acquired knowledge of the invention from the inventor. This would bring such a disclosure within the scope of Section 102(b)(1)(A). This Section 102(b)(1)(A) is the classic Canadian pioneered “one-year inventor originating grace period”.

While this section may be good policy, it may still have a flaw that could be corrected before the House.

What does “publicly disclosed” mean? The main novelty provision of section 102 uses the expression “available to the public” to characterize fatal prior art. This has been interpreted in Europe and Canada as requiring that a prior disclosure must be “enabling” in order to be effective as prior art. If a tractor is driven around town but doesn’t make the invention understandable, then this enablement requirement means that the invention has not been made “available to the public”. Will the same requirement of enablement be imported into the expression “publicly disclosed”?

This uncertainty could be dispelled if, before the House, the bill where amended as follows:

102(b)(1)(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor so as to make the invention available to the public.

On the other hand, the legislators may not wish to commit to such an interpretation. Perhaps they want the Courts to resolve this issue rather than take the responsibility themselves.

To make the amendment proposed would raise the standard required when something is “publicly disclosed” in order for such an event to serve as a shield against after-arising prior art. Perhaps the legislators do not want to be the ones that stipulate for an increase standard.

Under the existing law, once a conception of an invention has occurred and the invention has been reduced to practice, (including reduction to practice under confidential circumstances), the inventor does not have to make a public disclosure that arises to the standard of being “enabling”. He/she can delay filing up to the limit that the invention has not been suppressed or abandoned.  A delay of one year is probably not unreasonable if it fits within the statutory one-year grace period.

 Under this new provision of section 102(b)(1)(B), the sheltering of the invention will live or die according to whether an invention has been “publicly disclosed” to the standard that the law requires.

To clarify or not to clarify, that is the dilemma that the House must face in reviewing its equivalent to S. 23.

70 thoughts on “Post-Disclosure Grace Period – Unique but Good Policy

  1. Regarding prior user rights, today we do not need them as prior invention invalidates the later-filed patent. Without prior invention, we need a prior user right else manufacturers would need to file first just to maintain their right to use.

    Prior user rights do not give the prior user much, just a personal right to continue doing what they were preparing to do. However, what about this:

    Couldn’t we give the second filer the right to use what he discloses and claims in his patent application without limits on volume, etc., provided he also is also the first inventor?

    This would give the first-to-file the patent against the world, but the second filer and first inventor would only be denied a patent. He would otherwise be unaffected by the first-filed patent.

    What this illustrates is that going to FTF without prior user rights is going to be a very wild ride, even for the big boys. But even with prior user rights, we are in the land of OZ, in uncharted territoy.

    It really makes no sense whatsoever jump off the cliff into a raging sea of uncertainty given how sensible our current system is.

  2. Did you talk like a Thingfish when you called them, or is that something that only we blog readers are privileged to endure?

  3. Ned–

    I agree with just about everything you just posted. Your information concords with mine, and I share the opinions you expressed.

    I even agree with your suggestion that the essential question in a rational democratic society should be something like your “Is there a net benefit to the United States as a whole to support international business at the expense of the individual inventor, universities and startups?”

    Assuming that this is the type of question that politicians are asking, they get information helpful to the answering of this question from various sources. Because of the basic structural characteristics of our legislative process, “What’s good for big business” has come to be seen as being synonymous with “What’s good for the country”.

    That’s not going to change any time soon, as nobody is proposing any serious structural changes. Wall Street still declares huge bonuses, Freddie and Fannie still get propped up, GE still gets bank status, and so on.

    I know this proposed legislation has been around for a while. Even if it doesn’t pass this time, it will be put on the shelf, to be dusted off and polished up at some later time.

    It’s all part of the Obama-style sellout. The current crop of politicians and leaders have no part of their identity that is tied to any sort of “national identity”, or “historic national identity”, from which ethos the basic patent considerations have historically derived.

    It is an essentially tri-partite mosaic, composed of redistributionist, corporatist, and religious components. Neither the redistributionists or the religious see this as “their issue”–they see it as merely a bargaining chip they can use, and will vote according to the bargaining utility of their vote.

    It is only the corporatists that are interested. The only thing that stands in their way is, really, external events causing a critical number of potentially positive votes to be bargained away for entirely unrelated purposes.

    What’s missing in this picture is a connection between voting against this bill, and some other present or future initiative(s) that can form the basis for a bargain. When such a connection is difficult to form, legislation such as that proposed ends up out in the wilderness with, in this case, only the corporatists hanging around to tinker and vote.

    Furthermore, a positive vote has value to the corporatists, and they are therefore able to negotiate for more positive votes by trading for something they value less highly. The connections between voting FOR this bill, and other issues, continue to be made by the corporatists.

    Interests of small entities and individuals, in this context, are only weakly represented, if at all, in the redistributionist faction. Some would argue for a fourth faction, the constitutionalists, in which such interests could be represented. I have ignored that faction because true rational constitutionalists are too few in number to make any significant contribution–the concept is most often appropriated by one of the big 3 factions.

    So there you have it, what a bunch of hot air. Efforts must be focused either directly upon the machinery–drafting the bill, trading votes, or voting directly–or upon structural changes to alter the basic composition and process of government, in order to have any possibility of effect.

    Involvement in AIPLA and IPO is an entirely corporatist exercise. I’ve seen them. They are not appropriate organizational vehicles with which to further your purposes, Ned.

    Your efforts in support of your laudable goal are better directed elsewhere, and I believe your evident frustration is based upon your understanding of this, combined with your inability to identify and affect the appropriate organizational vehicles.

    This is not a shortcoming on your part–I’m not sure the vehicles exist at all, although I can think of some that might be helpful but which do not get much face-time.

    Anyway, it’s complicated, and obviously not good fodder for a blog post.

    Out.

  4. I am not an expert in patents — far from it. However, I do KNOW that for over 10 years, Inventor Eliot Bernstein ( IviewIt Technologies) has been pursuing the THEFT of his MPEG and other streaming video via the Internet Patents. The theft was orchestrated by (who else) Florida Lawyers, and New York Lawyers. He presently has a $ 1 TRILLION lawsuit active in NY State. He has testified in front of the US Senate several times. The patent thieves attempted to blow up / kill Eliot and his family in Fla several years ago. ALL this story is on line — every court docket entry. My question — does this new legislation “Eliminate” in some lawyer-like scumbag manner, the Trillion dollar liability that exists for NY State, Fla. Intel, Lockheed, and more. Anything that streams on the Internet was properly filed for patent protection over 10 years ago by Bernstein. The NY and Florida Lawyers stole it. Is that the reason for this urgent Patent reform, when the entire country is going to hell??

  5. Ned-O,

    Saw this over at the Patent Docs – funny how 6 didn’t make the same comment here:

    Section 2(i)(a) states that, when the appropriate standards are met, the Director may (not “shall”) institute a derivation proceeding.” This would apper to mean that institution of a derivation proceeding is at the discretion of the Director.

    Posted by: Sean Brennan | March 15, 2011 at 12:20 PM

    “This would apper to mean that institution of a derivation proceeding is at the discretion of the Director.”

    In other words it’ll probably never happen save in some exceptional cases.

    Posted by: 6 | March 15, 2011 at 07:12 PM

    link to patentdocs.org

    Even more reason ta love that S.23 eh?

  6. According to some, including the two leading senators supporting the patent Bill, everything in 102(a)(1) requires a public disclosure of some kind. Note that “on sale” is in that section. It is their understanding, therefore, that the kind of “on sale” in section 102(a)(1) is limited to public commercial activity of some kind. Private commercial activity, such as for example, the use of a secret process, would not be prior art – or even a personal bar. The personal bar aspects of “on sale” activity is a form of abandonment. But abandonment has been removed from the new statute.

    So what we have is that someone can exploit an invention in secret for years and still obtain a valid patent on it.

    Does anybody disagree?

    If you disagree, is it on the basis that private trade secret use by third parties is prior art in the new statute? It is not prior art today under the present statutes. Still it remains a personal bar because of the concepts of abandonment, see 102(c), that remain in the present statute.

    I think this is an important issue that needs to be discussed.

  7. Who? I have a pretty good idea, but I’d rather not name names here. I saw a draft of this legislation some years ago, so I know where it came from.

    The effort to harmonize has been around for quite some time. The movers and shakers at the IPO and AIPLA were behind it. It was before my time. By the time I became active, it was a given. The AIPLA has already voted as an organization to go to first-to-file circa 1990.

    At meetings of the IPO board, in particular, and at the AIPLA, I have heard the arguments about the advantages of harmonization. Principally, the argument is that one law is needed so that patents that protect product markets can be filed and obtained throughout the world, particularly in major market countries. With different laws and different prior art, it is quite possible that patents covering essentially the same subject matter can be owned by different entities in different countries. This disrupts international commerce.

    The argument to the small fry has always been that anyone who wants to file foreign already is in a first-to-file patent system. Prior public disclosure, authorized by the United States grace period, results in the loss of international patent rights.

    It is clear from all of this that harmonization is there for them benefit the large international companies. There is no argument that harmonization will help smaller companies, or help individual inventors, universities or startups. However, there also is no argument that the loss of a grace period or other attributes of a first-to-invent system will not actually harm them. They seem to recognize that it will – but they’re willing to sacrifice the interests of small fry, universities and startups as unfortunate collateral damage.

    So what we really need to ask ourselves is this: is the benefit of harmonization to international business so important and so necessary as to harm everyone else in the United States? Is there a net benefit to the United States as a whole to support international business at the expense of the individual inventor, universities and startups?

    The two California senators, Sen. Feinstein and Sen. Boxer, made wonderful speeches a couple weeks ago in moving to strike the first-to-file provisions from the Senate bill. At least they have come to believe that the damage to the American economy is so great as to not justify the move.

    Finally, some senators have gotten the message. All we can do is hope that California’s Congressman listen to their senators and adopt their position as well.

  8. If this provision was combined with the mccain plan then you would have integrety.Accidental divulgments could be proven through internet urls for first to file and proximitious locations of dispted inventions could be settled by master inventor status.

  9. An empty reply IBP.

    Will you actually answer my question (Iza dont thinl that you gots a Homey-dont-do-answers policy) ?

  10. Ned,

    “Patent law” is no more “complicated” than any other area of “law”. The “complexities” of drafting “novel” legislation apply equally to all “novel” legislation.

    (BTW, what other type of proposed legislation would ever be drafted? Even if “only” codification, the legislation is still novel.)

    Lobbying Congress takes more than only money–it takes organization. Indeed, finding money itself and getting it to the right place in an acceptable manner requires organization. To say that you are not directly lobbying Congress because you don’t have any money isn’t good enough–you can contribute organizationally. FIND some money. Find somebody who has money and agrees with you. Start something, as various industry and trade groups have done.

    The AIPLA “patent community” is not monolithic either, as your comment would suggest. The parties encouraging this legislation are members of that very community.

    You were “shocked” when the board didn’t request committee analysis and recommendation? What did you do about it?

    AIPLA is but one private organization among many that are interested in the patent law regime, and it doesn’t even speak for all its members in all situations. Have you read any of their briefs and recommendations lately? I certainly don’t agree with all of them, but their official position reflects who is actually in control of AIPLA.

    You’re making value judgments again by using words like “mistakes”, “rigging”, “expense”, “jam it down our throats”, and “back room”. It is not convincing. What seems to irk you is that it was not YOUR “back room” in which the deal was negotiated. The AIPLA patent law committee is just such a private “back room”, and reflects only a small segment of “public opinion”.

    Maybe AIPLA chiefs were contacted, and chose not to refer the matter to committee, for one reason or another. Maybe your front-room back room WAS involved in the negotiations in some way–I find it likely that they had either a passive head-up, if not an active hand in the affair.

    All the above applies equally well to the IPO, although it appears to me to be more tightly-knit than does AIPLA.

    “We are rigging the system in a certain way to benefit mainly international filers at the expense of the US patent systems as a whole.”

    I agree with this–furthermore, I agree that it is undesirable–but it does reflect a certain point of view of the proper role of the patent scheme in US domestic and international affairs.

    “no one was trying to jam a controversial piece of legislation down anyone’s throats”

    Ned, precisely WHO is it, who is trying to “jam this legislation down your throat”?

  11. The “First to Publish” regime was proposed two years ago by Robert Bauer, a patent attorney in Erie, PA. For further insights, you can read his original article (if you are an ABA member) here:

    link to americanbar.org

  12. I know me wrote and called both my senators prior to the vote.

    I know me wrote both afterwards too.

    Other than that, what do yousuggest at this point IBP?

    I be all ears.

  13. IBP, I did talk to one bigwig Democrat Senator who did express concern about drafting novel legislation in an area of law as complicated as patent law. That was from him, not from me.

    As for me doing something, I am posting my critical observations here; as did David French. We are not directly lobbying Congress. That takes money.

    But, if you want my two cents, it seems to me that the likes of the AIPLA or the IPO should be using their patent law committees to seek input from the patent community at large about potential problems with the bill’s language. I am a member of one those committees and have been for two decades. Yet in all that time the Committee has done nothing on this legislation, and has not been asked its opinion by the board. I find that just a bit shocking.

    Now, the ’52 act was drafted as a codification effort by the PTO, the NY Patent Law association and the APLA. Other patent law associations around the country had input as well. The effort was not political as no one was trying to jam a controversial piece of legislation down anyone’s throats. The effort was to codify. There were exceptions, of course. 271(c) and (d); and 112(3), now (6), being two of them.

    But what is going on here is a travesty. Nothing like this has ever been done to the US patent system, ever. We are rigging the system in a certain way to benefit mainly international filers at the expense of the US patent systems as a whole.

    If there were any good intentions here, the powers behind this would ask the opinion of the public, in particular the AIPLA and IPO patent law committees, the ABA and the various patent bar associations in the land, to get as much input as possible so as to not make mistakes. But nothing like that has happened. Everything negotiated back room, out of public view and comment.

    The people who did this may throw parties as IBM recently did, but the powers in Congress really need to know that this legislation has not been vetted and is controversial in more way than one.

  14. Ned, your response was decidedly ego-centric, and lacking in substantive detail.

    You don’t actually KNOW anything–you are “willing to bet” on many things, though.

    You assume that Congress and those pushing the bill DO NOT want universal prior use.

    You assume an all-inclusive “us” and “we”, which couldn’t be farther from the truth.

    You assume that Congress agrees with your characterization of particular elements of the bill as “flaws”.

    While I am inclined to agree with you that those refining the bill, and ultimately those voting on the bill know basically nothing about what the bill means, the same can be said for basically any bill, at any point in time, with very few exceptions. It is up to committees to make recommendations to Congress, and committee memberships and chairs are bought and sold by vested interests.

    The current incarnation of the bill represents the point of view of a particular constituency, which contributed to its authoring and which is perfectly well aware of what it contains, and of what it means.

    It is, at its core, a political decision, based upon political considerations, as is anything taken up by Congress. This is what you shockingly fail to apprehend, or to acknowledge, in your substantivist naivete.

    You “can bet” that somewhere along the line, “expert” opinion was solicited on the likely effects of the proposed legislation, mostly from an econo-centric perspective. Individuals offering the type of assistance that Paul Michel could offer have already been consulted, to the extent that the need was felt for such consultation.

    Finally, again, there will be nothing “unexpected” as a result of this until such time as, if enacted, some future Federal Circuit gets hold of it and distorts it into an unrecognizable pulp–and any direction that may take is entirely unpredictable at this time, and not worth speculating upon.

    Ned, what have you personally done to oppose this legislation? I mean other than hand-wringing on this blog.

    To Ned and all other wankers out there, save for Dennis, Boundy, and select others, it’s time to put up or shut up. Stop whining, and DO something.

    Tell us about what you DID or ARE DOING rather than what you wish SOMEONE ELSE would or would not do.

  15. Hopefully they have been reading this blog if there looking for the best system on the planit ive laid it out here.

  16. If your country is not offering the best system in the world then inventors will go elswhere taking the prosperity with them. Everything that the system is now and my proposed is a collection of my and my grandfathers comments back to 1835 when my great grandfather invented it as an eigth grader.except for this clause and its predissor in 1859 my great grandfather was murdered and this was hatched no bermanious pun intended.

  17. The House version is apparently going to be significantly different. I have not seen any specifics. Anyone know what are going to be the main differences? I’m assuming that the “first to file” issue is going to be one of the important differences…

  18. I read the next line in David French’s post and realized what he meant: “The exception of Section 102(b)(1)(B) provides relief from that pressure. Effectively, publicly disclosing your invention will shield any application from after-arising prior art. This is equivalent to obtaining a filing date.”

  19. Does anybody know what happened to the files ordering system that had all patents issued in paper or cd I cant find a order place anywhere on uspto site this would be an ominious omission capable of corruption breeding.

  20. Ned- O,

    IBP, you are not being reasonable. Congress cannot have endorsed this bill with all its flaws.

    And you had such a string of lucid thoughts up to that point.

    Problem is, at least half of Congress has heavily endorsed this bill with all its flaws.

    IBP be not the only one bein unreasonable.

  21. ping had a good reply, but let me say that I sincerely doubt that very little of the discussion with Congress has involved the FITF provisions, beyond the 10000 foot perspective of the grace period provisions and the lack of a prior user right.

    I sincerely doubt that Congress has had any hearing on the substance of the various provisions implementing FTF from real critics, people who are not “playing” ball to just to see that the bill passes at all. I am willing to bet that Congress actually believes that S.23 is a non controversial way of implementing FTF (outside of the grace period provisions) and that everyone is otherwise on board with the language.

    But that is hardly true, is it?

    I am willing to bet that if universal prior use were put to a vote by itself, it would lose.

    I am willing to bet that none of us would agree that new matter first appearing in a CIP should have an effective date as of the earliest claimed benefit date to which any claim in the patent is entitled. We would say, “Hell no.” But the draft statute can be interpreted that way. In fact, that is what it says.

    I am willing to bet that Congress would be surprised that “private” on sale is prior art under the statute, but the big brass are on record to the contrary. So, if the big brass are right, that means that people could commercially exploit an invention in secret for a long time and still obtain a patent. That is SO CONTRARY TO US LAW SINCE THE BEGINNING OF US PATENT LAW AS TO BE A REVOLUTIONARY IDEA BY ITSELF.

    I am willing to bet that Congress has not considered that the legislation seems to require the PTO to issue two patents on the same invention because the Director has no authority not to — there are no interference provisions.

    I am willing to bet that Congress is completely unaware that this bill reverses Hilmer.

    I am willing to bet that Congress is completely unaware that prior use anywhere in the world will now be prior art in the US, or if they do, that this is new.

    IBP, you are not being reasonable. Congress cannot have endorsed this bill with all its flaws.

  22. and create a virtuous upward spiral of enlightened self-interested attorney and applicant behaviour, well that’s another matter

    Um, can I have what Maxie is smoking?

    NOT – kids just say no to drugs.

  23. how would Paul Michel’s current individual perspective valuably add to their substantive understanding of suspected future effects?

    Hmm, that’s a toughie – NOT.

    Ya do know what Michel was doing for umpteen years, dontcha?

  24. but certainly none are “unexpected”

    IPB, with all due respect, you have your head up your XXX if you think Congress carefully deliberated on the extent of these changes. Next you’ll actually think that Congress even reads some of the 800+ page bills they pass.

    Still taking wacks to the head I see.

  25. Your conclusions that some significant changes from current law are “mistakes” are based on your value judgments.

    Some changes may be unfortunate depending on one’s perspective, but certainly none are “unexpected”.

    Congress is getting plenty of feedback on what the full practical effects of the proposed legislation are projected to be, and on what the resulting effects on stated patent policy will be.

    Specifically, how would Paul Michel’s current individual perspective valuably add to their substantive understanding of suspected future effects?

  26. Of course this isent going to eliminate the huge place for corruption potential in the office of file switching after reciept of patent they have 18+ months worth of the unknown the only way to do this is videoed immediate check of files and internet for novelty determination on reciept of each patent.

  27. IBP, have you read any of my posts concerning the significant changes from current law that no one has been discussing and which may be and probably are mistakes?

  28. “Unexpected substantive change”?

    Isn’t substantive change the whole point of the proposed legislation?

    If one reads the language sufficiently closely, there can be no such thing as “unexpected substantive change”–it is changed by prescription.

    Paul Michel does not need a make-work program, especially not one that involves doing something that is totally pointless.

  29. It sounds like they made swearing behind to steal an invention into first to publish in discredible circumstances as the prefered method. They need to reestablish the initial document disclosure program to bring credibility of inventorship determination back to the office.

  30. It has to do with an alleged conception date and first to invent through a lesser credibility evidencing method than filing first

  31. I am beginning to see trying to inject any common sence into any congressmen or businessmen is useless they have def ears so far and cant agree on anything that is an improvement in the system so its unusable to the worlds largest conciever. The only way to get any genuine improvement going is going to be offering to file in foriegn countries for the right to build the product there. This wont create jobs in america like I would like however its the direction that lack of concern and lack of business is pushing me. These companies now have empty R+D departments but they wont call an inventing consultant they dont want to cut anyone in on the deal. Theyre loosing tons of money and I am loosing hundreds of pounds of it talk about barts (beligerant aragant retartive thieves).

  32. The good thing about an appeal court judge is that he can see abuses in the patent system, both from the point of view of the patent owner and that of the party accused of infringement. The bad thing is that the only patents coming under his nose are ones based on apps written a decade earlier. It takes a drafter and prosecutor to see what are going to be the abuses a decade on from now.

    Whether Mr Michel is high enough above the fray though, and can see far enough, to recognise what reforms will drive out the abuse, progressively, from now on, and create a virtuous upward spiral of enlightened self-interested attorney and applicant behaviour, well that’s another matter.

  33. No it doesn’t Tony. We had very long discussions on this topic way back. Roger Smith, ex of IBM and past president of both the AIPLA and IPO, would agree with foreign public use only to the extent that it was “cataloged” and “searchable.” If you think about this for a second, that means it is published, albeit, not necessarily in the form of a printed publication.

    The reason US public use in the US has to be prior art — regardless of whether it informs or whether it is cataloged and searchable, is obvious. The US patent would make infringing that public use. The same considerations do NOT apply to foreign public use.

    What counts is “public” knowledge of the invention in the US. There is ample case law to show that if a presentation is made elsewhere and Americans are present, that constitutes public knowledge in the US.

    Now Tony, just to be polite, I strongly object to this whole process whereby a panel of Illuminati decide, without public debate, that world wide public use is the “best practice.” Who gave them the franchise to decide important issues of public policy without ever putting the issue out for debate?

    The AIPLA many years ago agreed in principle to first-to-file. But the AIPLA and the IPO were also on record, IIRC, to retaining the grace period and asking the ROW to follow our lead on that.

    That is all we, the public, ever agreed to. The changes in this bill go far, far beyond that, upsetting established law in so many different ways that we cannot even begin to appreciate.

  34. Michel would be good. He retired just so he could comment.

    I would recommend the executive department, but they are lead by Kappos, one of the fellow travelers who is hardly viewing the draft statute with any skepticism.

  35. C’mon Sunshine – your ignorance of “patent trolls” and lip smacking go hand in hand in your mouthpiece roll.

    Get with it.

  36. What part of making the US patent weaker is a good thing?

    Anything that makes patent trolls cry is a good thing, pingaling.

  37. Seriously? This change is why I’m a fan of the bill. It is absolutely ridiculous that a public use in the U.S. is invalidating but not one in Canada. It is absurd that products demoed at a conference in the U.S. can possibly be prior art, but not one in Germany. ) This is especially so considering that many Americans are probably at that conference in Germany. (Although, I guess if it is streamed over the internet, then it would be prior art.

    Worldwide novelty only makes sense.

  38. Can retired Chief CAFC Judge Paul Michel do something for you here Ned? Would the Congress take any notice of him?

  39. Sorry Ned,

    Federal courts do not give prospective opinions.

    Something about the Case or Controversy thing I imagine.

  40. You know what we need, we need Congress to ask the Federal Circuit to review the draft statute for language that could have an unexpected substantive change in US law.

  41. it is compatible with patent laws in other countries

    So what?

    When you have the gold standard, why change just to match other countries? What part of making the US patent weaker is a good thing?

  42. The first to file policy will make people more careful to do public disclosures. It saves money on patent interference. In addition, it is compatible with patent laws in other countries.

  43. Could we try a small tweak:

    Change “effectively filed” to –filed– and add this:

    “or, to the extent that the patent or application claims the benefit of the filing date of an earlier application, the effective filing date of the described subject matter as provided by Sections 119 or 120.”

    What do you think?

    Regardless, this statute need some words to the effect that the statute is not intended to change substantive law except: and then provide a list. What the current statute does is make a lot of seemingly inadvertent changes that can dramatically change the law in ways we did not expect. We recently experienced this when “inventor” was added to 102(g), causing the Feds to hold that a prior reduction to practice of an invention by the party sued for infringement was not a prior invention within the statue because the inventor was conceived by someone other than the party reducing the invention to practice.

    The holding in that case was absurd, but it directly resulted from an “unexplained” change in 102(g) that seemed to be a good-intentioned fix to the grammar.

  44. This has been the less credible evidencing method for some time. Its primary uses are in accidental divulgement for a race to the microphone and where the patent office is untrusted as a keeper of records. With better interoffice safeguards such as vidiocam file searches and worldwide novelty checks and time ending filings this method should become oblosete. The repalcement where the techniology fails should become lockered public forum time ending events. The usage of printed materials is aslo becoming obsolete because of the ease of counterfitting. Instant checks and instant awarding are the integritious methods of the future concielment of results by the office non human involvement would be even better as far as security against leaks for 3 ,30 or 90 days will protect against wrongful awarding by allowing crossfiling in devulgment cases. anotheer item needing consideration is public disclosures through interner usage ive had oddles of those stolen there needs to be a provision for this.

  45. Parse Error, I invite you to carefully reread 1 & 2 (B). I believe it does remove prior art under 102(a)(1) or an earlier filed patent application as prior art under 102(a)(2) to the extent that the 102(a)(1) “prior art” or the subject matter described in the 102(a)(2) patent application was previously “publicly” disclosed by the inventor (or joint inventor or one deriving from either).

    The inventor himself is protected against his own disclosures regardless of whether they are public. However, the inventor is protected against disclosures of third parties and those who file first if and to the extent that the prior disclosure of is “public.”

    We debate here, what “public” means. I contend it should be the same as 102(a)(1). David French does not agree. He would rather have it informative.

  46. Rejecting patents for insufficient desctiptions favors big business due to there previous art and technical description abilities superiority and should not apply to startup inventors inventors have superior conception abilities but are being riped by the system. These provisions combined with rejecting for to many inventions in an application retard creativity and promont big business theft of ip and non partmershiping and coperation between big business and small independant inventors discouraging invention in the first place.due to the technical requirments the invention is so subject to leaks by the time it is complete that the inventor may as well not file it.

  47. Publically disclosing to the standard that the law requires. This neans you may as well file a provisional application with the technical requirements or loose your right to a patent entirely. Here we see another method of inventor frauding where your invention is allowed to be stolen. The kapos reheigm with its techinical perfection applications needs to be recognized as fraud. Their halting human advancement and burning a black hole into human advancement.The only creditable method of public disclosure is throuth the patent office with public radio or television involved.

  48. This provision repairs a flaw in the present Canadian law. Under the Canadian patent statute, an inventor who puts his invention on the market and relies on the one-year grace period before filing in Canada, can still lose his patent rights if an independent inventor makes the invention “available to the public” before the inventor has filed his patent application. In other words, it’s still a “race to the patent office” as between strangers in Canada.

    I’m not sure how exception 1(B) to 102(b) repairs “the race to the patent office” flaw – assuming that is what David French meant to say.

    Based on my reading of the language of exception 1(B), a public disclosure by a person who has not directly or indirectly obtained the subject matter from the inventor(s) does not fall under this exception. Therefore, the “race to the patent office” exists. I think it is pretty straight forward, unless I’m overlooking something very obvious.

  49. David, I don’t think the average American has fully considered that in the new statute, prior use anywhere in the world, or a prior foreign language priority patent application, filed anywhere in the world, will be prior art in the US for all purposes regardless of whether that disclosure is really available in the US. This concept was introduced into the statute a committee of Illuminati who “announced” that this was a “best practice.”

    What does this do to us? It places US patents at the mercy of foreign public use prior art that can appear out of the blue to invalidate patents upon which fortunes and jobs depend. And why? Why is this necessary?

    Prior use was historically limited to the US for a good reason. Ditto the Hilmer doctrine. We should not lightly discard the wisdom of our forefathers lightly and without a full discussion.

  50. David French writes:

    If a company planning to commercialize wants to shelter their future final patent application against prefiling public disclosures originating from strangers, then they can file a Provisional patent application. That will lock them in to a one-year deadline to file a final specification. But so will publicly disclosing the invention lock them into the same deadline.

    What is the difference between a secret Provisional application (or its foreign priority filing equivalent) and a “public disclosure” made by a party who subsequently files an application? The public disclosure may occur at an obscure location and though “public” may be functionally secret. But so is a Provisional application.

    This section was in the previous Senate bill S.515 for well over a year and even in the draft legislation pending before that. But the drafting in S.23 is greatly improved

    The introduction of “absolute world novelty” as a patentability standard into US patent law may be the biggest event in US patent law reform since 1836. It transcends the first-inventor-to-file issue. But the special provisions of section 102(b)(1)(B) take this legislative initiative over the top.

  51. David, the total elimination of a grace period for those who most need it, any business big or small planning to build a new factory, or to introduce a new product or process, but who need confidentiality until “ready,” is what is so bad about this legislation. They are forced to file early and often just to preserve their right to use, let alone obtain a patent to shut down others.

    Every other country in the world that I know of has a prior user right to at least preserve the right to manufacture against a first filer. We will not. In this, our new legislation is the most extreme first-to-file regime on the planet.

  52. David, agree. The new statute needs to retain interferences. If it does not contain one now, there will soon be a clamoring that Congress add one.

    But the fact that we need interferences in the new regime puts a lie to the “claim” by the proponents that the new statute will be more “efficient” because it reduces uncertainty and eliminates the need for interferences. It obviously will not. It rather is a can of worms that will plague us for a generation or two as we work out the bugs. Can we really afford this at a time when the PTO even today is overwhelmed? Moreover, uncertainty increases risk and thereby lessens investment — investment in new technology that drives economic growth.

  53. “Good policy” from whose perspective and for what commercial purpose?

    The “publication” grace period is only useful to non-practicing entities (it was put there at the behest of universities). Almost any company that is planning to commercialize wants to maintain commercial secrecy — tipping off a competitor to your strategic direction is a no-no.

  54. David French writes:

    The “publicly disclosed” provisions of section 102(a)(1)(B) should also probably be assigned to the same tribunal dealing with derivation issues. Effectively, Examiners may treat this as a swearing-back exercise which is not thoroughly investigated. But in the case of competing applications, the issue merits referral to a tribunal with enhanced investigatory powers.

  55. Not to hijack this thread too much, but what does this mean?

    From new 102(a)(2)

    “‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

    There is a definition of what constitutes an effective filing date of a claimed invention. There is no definition of the effective filing date of a patent. But, the statute literally makes the disclosure of a patent effective as the date of the effective filing date of the patent. There is no clear requirement that the disclosure, which forms the basis of the rejection, be supported in the parent at all, let alone that it be supported as required by Section 112, p. 1, or that it be “claimed” as required by current law.

  56. No.

    The derivation statute clearly said the right of action is limited to a claim that the invention claimed in the other patent was “derived” from complainant. There is no subject matter jurisdiction for a complaint that the prior disclosure of the rival is “insufficient” to grant him a patent over my earlier enabling disclosure, just for example.

  57. Just as a caveat, I have noted in multiple other threads that there is no interference in the new legislation. Thus there is no means for the first filer to challenge the sufficiency of the first disclosure, particularly of the public use variety. If the first filer is rejected over the patent of the second filer obtained by affidavit of prior disclosure, what is his remedy?

  58. David, I’m not so certain. If the public disclosure is sufficient prior art to anticipate claims to that subject matter by the first filer, I think that should be enough. The first filer cannot get the patent, so there is no real vice in giving the first discloser the patent, as far as I can see.

    So, if the public use of a widget in Timbuktu is enough to anticipate the first filer claim to the widget, it seems that public policy should favor granting the first discloser the patent.

  59. Excellent. When it comes to promoting the progress of useful arts, then a “First to Publish” regime has serious public policy and intellectual merit (unlike “First to Conceive”, which has neither).

    Upon enactment of this new legislation, I look forward to a rigorous exploration of the relative merits and de-merits of First to Publish vs. First to File.

  60. LEts get it rigfht, before we “clarify”.

    a1 reads:

    “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; or”

    b1B reads:

    “shall not be prior art to the claimed invention under subsection (a) (1) if–

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

    This has nothing to do with a filing date, it seems to have been placed in the legislation for academics who often publish before they patent.

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