Fixing the “First Inventor to File” One-Year Grace-Period Provision of the Patent Reform Bills

Guest Post by Ted Sichelman, University of San Diego School of Law

As any avid reader of Patently-O knows, the pending patent reform bills all contain a shift from a primarily "first to invent" to a primarily "first to file" approach. Previous posts have described many of the differences between the present and proposed approaches (see, e.g., here and here). In this post, I focus on the treatment in the bills of an inventor's sale and use of a claimed invention in the one-year period just prior to filing. I argue that the bills' language does not effectuate Congress's intent to keep the inventor grace period intact, and I propose suitable language to do so at the end of the post.

Under the Patent Act now in effect, an inventor's disclosure of a claimed invention in a previously filed patent or application, or an inventor's use, sale, or offer for sale of the invention can only count as prior art or a bar to patenting (if at all) if those events occurred more than one year before the effective filing date of the application claiming the invention. This one year limitation on prior art is commonly referred to as the "grace period."

Apparently, the Senate meant to carry over the grace period for an inventor's disclosure, use, or sale of a claimed invention—as well as exclude potential prior art derived from the inventor—in the bill it recently passed. As Senator Patrick Leahy exclaimed in a colloquy with Senator Orrin Hatch, if the inventor's invention is "described in a printed publication, or in public use, on sale, or otherwise [made] available to the public" by the inventor (or one who derives from the inventor) less than one year before filing, then "there is absolutely no situation in which" this activity would bar patentability.

Unfortunately—as Dennis Crouch, Hal Wegner, and others have recognized—the plain language of the relevant provisions in the recently passed Senate bill, as well as the pending House bill, does not appear as broad as Senator Leahy believes. In particular, the relevant provisions only exclude from prior art "disclosures" by inventors (and derivers) made less than one year before filing ("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 …") (emphasis added).

A plain language interpretation of "disclosure" would refer to printed material, such as patents and publications—as well as oral disclosures, such as at a trade show—but not necessarily uses, sales, or offers for sale of the invention. Moreover, an actual "disclosure" of the invention would presumably require that the disclosed material be "enabling" in the prior art sense—namely, that description, use, sale, etc., disclose to one of the ordinary skill in the art how to make (or perform the steps of) the invention (see, e.g., Perricone v. Medicis Pharm. Corp. (Fed. Cir. 2005) (holding that a "disclosure is prior art to the extent of its enabling disclosure"); In re Donohue (Fed. Cir. 1985) ("[E]ven if the claimed invention is disclosed in a printed publication, that disclosure will not suffice as prior art if it is not enabling.")).

Yet, the Federal Circuit has routinely held that "non-informing" uses or sales of the claimed invention made more than one year before filing—namely, ones which would not inform one of ordinary skill how to make the invention—may count as prior art under the current statute (see, e.g., See In re Epstein (Fed. Cir. 1994) ("Beyond this 'in public use or on sale' finding, there is no requirement for an enablement-type inquiry.").). Moreover, the Federal Circuit has held that secret use of a claimed method by an inventor to make a product that is sold to the public may count as prior art (see Gore v. Garlock (Fed. Cir. 1983)). Thus, a plain language reading of "disclosure" arguably would not—contrary to Senator Leahy's intention—exclude from prior art non-informing or secret uses and sales made within the grace period.

Senator Hatch asserts there is no problem with the "disclosure" language because "[i]f a disclosure resulting from the inventor's actions is not one that is enabled … then such a disclosure would not constitute patent-defeating prior art … in the first place." Yet, nothing in the Senate bill points towards such a reading. Specifically, the provision in the bill enumerating what counts as prior art states:

Sec. 102. Conditions for patentability; novelty

(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 ….

Granted, this provision appears to require that sale and use prior art be made "available to the public." Yet, under Federal Circuit doctrine, sale and use art need not be enabling in order to be available to the public. In particular—as I just mentioned—"non-informing" and "secret" uses and sales may count as prior art. Thus, a plain language reading of the pending bills would arguably include as prior art sales and uses that are clearly not "disclosures" in the ordinary sense of the term.

And because courts of late—particularly the Supreme Court (see, e.g., Bilski)—have used plain language interpretations of the Patent Act, it is not prudent drafting to hope courts will look to the legislative history to fix the situation. Moreover, as Hal Wegner has noted, the Leahy-Hatch statements actually post-date the passage of the Senate bill, potentially negating their value as probative legislative history—especially in view of some seemingly contrary statements in the pre-passage legislative history (see, e.g., 157 Cong. Rec. 1348, 1355-56 (Mar. 9, 2011) ("An inventor who publishes his invention retains an absolute right to priority if he files an application within one year of his disclosure.") (emphasis added)).

The policy problem with treating (at least many) sales and uses made during the one-year grace period as prior art is that it forces inventors to forgo a wide range of commercial activity prior to filing for a patent. This would impose a particularly heavy burden on independent inventors, as well as startup and early-stage companies, who simply cannot afford to file patent applications on every invention before getting a sense of the invention's commercial viability. (See here and here for data on startup patenting costs.)

In order to remedy the problem, the bills' proposed provision can be easily revised. Just this morning, a Manager's amendment (Download Managers_Amendment_to_HR1249) was introduced in the House that would remove "in public use, on sale, or otherwise available to the public" from the prior art provision of Section 102(a)(1) and replace it with "otherwise disclosed to the public." This change would presumably mandate that only sales and uses, whether made by the inventor or a third party, that are enabling would ever count as prior art—and not just for grace period purposes. This legislative change would effectively overrule many years of well-established judicial precedent that non-informing uses and sales by inventors and third parties, as well as a secret use of a claimed method by an inventor to manufacture products then sold to the public, count as bars to patenting.

Such a shift would be unwise, because it would allow inventors to commercially benefit from their inventions (without disclosing them) for an indefinite period of time before filing for a patent. As Judge Learned Hand explained in Metallizing Engineering (2d Cir. 1946) (emphasis added), "It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly."

Instead, the provisions enumerating prior art should be left intact, and the exclusionary clause revised to make it absolutely clear that all inventor sales, uses, or other activities that make the invention available to the public less than one year before filing would be excluded as prior art (added material underlined):

SEC. 2. FIRST INVENTOR TO FILE.

* * *

`(b) Exceptions-

`(1) DISCLOSURES, USES, OR SALES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure, use, offer for sale, or sale made 1 year or less before the effective filing date of a claimed invention, or making the claimed invention available to the public 1 year or less before the effective filing date of the claimed invention, shall not be prior art to the claimed invention under subsection (a)(1) if–

`(A) the disclosure, use, offer for sale, or sale of the claimed invention, or the making of the claimed invention available to the public, was made by the inventor or joint inventor or by another who obtained the subject matter disclosed, used, offered for sale, sold, or made available to the public, directly or indirectly from the inventor or a joint inventor; or

`(B) the subject matter disclosed, used, offered for sale, sold, or made available to the public had, before such disclosure, use, offer for sale, or sale of the claimed invention, or the making available to the public of the claimed invention, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Ted Sichelman is an Assistant Professor at the University of San Diego School of Law, where he teaches patent law and other intellectual property courses. Charles Coover provided helpful research assistance for this post.

76 thoughts on “Fixing the “First Inventor to File” One-Year Grace-Period Provision of the Patent Reform Bills

  1. I am glad I not the only one who notices your delusional self praise

    Um who else – your Med trading partners/ That be some mighty fine lolz there.

    Try ta find some self-praise that actually be delusional. Ya cant – all the self praise be earned.

    But dont take my word for it – take the fine Gov people on the I4I brief who done lifted nearly every one O my observations. Or take a gander at the Big D comments today. Quite natural stuff really.

    This do remind me though of that period O time where you simply could not help yourself from eatin your words about me nearly every time we had a discussion.

    Foul line much?

  2. ping, I am glad I not the only one who notices your delusional self praise.  I would have to consult my psychiatrist daughter about a proper diagnosis, but rather than do that, I will simply recommend you seek help.

  3. ping, one of these days, I would like you to actually read the cases we discuss here.

    Been there done that.

    It was mighty embarrassin for you as I then ripped ya to shreds on your “interpretations” of those decisions.

    I thinks it had to do with inventions as claimed

  4. ping, one of these days, I would like you to actually read the cases we discuss here. Enabling disclosure has nothing to do with Pennock v. Dialogue. Rhather that case had everything to do with an abandonment of the invention to the public by using the invention before filing a patent application, albeit, not in a manner that would disclose the method, or “art” as used in that case by the Supremes.

    The policy reason has to do with extending the period of exclusivity indefinitely.

    None of that has anything to do with enablement.

  5. Cause such would be an enabling disclosure that really satisfies the mandate, the (C)onstitutional mandate of a Quid Pro Quo.

    O wait. It dont.

  6. The present proposals on the table are 50 years behind the times.

    That be like three generations O the time-travelling Thomas family lines.

    And yet, Mikey still aint fixed the mess O his earlier inventions.

    Mikey, I blame you for the crrp mess we are in – after all you and yours invented everything, so everything must be your fault.

  7. Max, is this actually the law or is it that a proper case is not been brought? I find it hard to believe that the Europeans would not have read with interest and appreciation the great American case of Pennock v. Dialogue, link to supreme.justia.com.

    In this case, the patent was directed to a method of making leather hoses. The hoses themselves were used and sold for years prior to the inventor filing for patent application. Only when others began to learn the secret method did the inventor file a patent application.

    Relying on English law, the Supreme Court held that the placing on sale or in public use the product of the patented method – and they made this distinction in the case – placed the patented method in public use at least to the extent that it operated as a personal bar to the inventor for later seeking a patent. Inventor’s actions, according to the Supreme Court, amounted to abandonment of the invention to the public.

    The Supreme Court analyzed the situation not only in terms of strict statutory compliance, but although under general principles of abandonment, and under the general policy of the patent laws that monopolies were to be for limited times only.

    I think these general principles quite well apply outside of the United States.

    For this reason I wonder whether the European statute expressly authorizes trade secret exploitation of an invention for an indefinite period of time. If not, I would suggest to you that it is well within a court’s right to learn from the American Supreme Court that a process patent is in public use when the product of the process is sold – at least to the extent that the applicant/trade secret user is barred from seeking a patent.

  8. Well Lawrence, given that the “Sense of the Congress” is to harmonise with the rest of the world, an inventor should be able to practise a secret process for years, and then patent it successfully. But only if, in the meantime, nobody has made the secret process available to the public.

    The patent system exists (as the Congress acknowledges) to get new and unobvious technology out there, available to the public. Prompt publication of an enabling disclosure, 18 months after the earliest Patent Office filing date is the price an inventor pays, for those monopoly rights. If your “secret process” is still secret when the operator of it files, why shouldn’t he, like every other benefactor to the public of an enabling disclosure of new and unobvious technology, get his patent too?

  9. Lawrence I had a comment I meant for you. See the note below. Check out the Radar opinion I quoted. It seems at major variance from all prior authority on the topic, which is quite expected from this gentleman.

  10. public disclosures should be eliminated they represwent only one advantage attempting to be first to disclose in a dispute to gain the patent this is a situation where the mccain proposal shines when one party is the master inventor the inventorship can easily be determined. my plan of 90 days notice of intention to file in a general catigory allows inventorship non dispute situations to be established by awarding patents based on if you dont know what the invention is you couldent possibly be the inventor. The present proposals on the table are 50 years behind the times.

  11. …and nobody knows about deserving axxholes better than you Mooney, BTW how’s the “crack” rehab workin out for ya?

  12. From the AIPLA: amendments on prior art were withdrawn with the intention to tailor the language…

    Does anyone know if this included the manager’s amendment to the definition of prior art discussed in the opening blog post?

  13. Lawrence, I think that was ME v. Kenyon Bearing.

    However consider this extraordinary!!! opinion by none other than Chief Rader. INVITROGEN CORPORATION v. BIOCREST MANUFACTURING, L.P.,

    link to patenthawk.com

    Here Rader held that a private use for the intended purpose did not bar the inventor from obtaining a patent. In doing so, Rader, the misquoter in chief, said the basis for the Supreme Court’s holding in Electric Storage Battery involving a third party commercial use of an invention in its own factory was the commercial nature of the use — totally ignoring that the Supreme Court had further noted that the use was known to the employees of the factory and that no effort was made to keep the invention confidential.

    This case directly contradicts, at least in dicta, much of what we have been saying here about trade secret use not being prior art.

    But, it is a Rader opinion and it has to be considered as such.

  14. It is important to remember that Metalizing Engineering and D.L. Auld v. Chromagraphics are not based on statutorily defined prior art but on a judicial doctrine of forfeiture; one can not secretly but commercially exploit one’s invention (such as a production process) for more than a year and then still obtain a patent. W.L. Grace v. Garlock makes it clear that such secrete exploitation does not create prior art against anyone else.

    It is not clear to me whether the Patent reform Law (S23 and HR 1429) or the Leahy-Hatch colloquy are intended to or will effect this judicial doctrine. But if changes in the Statute are successfully argued as a basis for eliminating the judicial doctrine, then there is a real possibility that an inventor can commercially practice a trade secret process for years and then obtain a patent on the process.

  15. But call someone a monkey name, and

    waaaaaaaaaaaaahhhhhhhhh, Big D, make em stop,waaaaaaaaaaaaahhhhhhhhh

    chuckle city

  16. Yup. Specially reserved for deserving axxholes like you.

    Cancer survivors have their own specially reserved denigrations.

    You stay classy, San Diego.

  17. It is said that the public disclosure that enables the second filer to prevail over the first filer’s patent has to be enabling? (Of what, exactly?)

    Why?

    All that should be required is that the disclosure render unpatentable the first filer’s patent claims. That could even be under theories of obviousness over what was disclosed, for example, a species of a genus or the critical element of a combination.

    But procedurally, how would this work? I can see no alternative to an interference where the patentablity of the rival claims to the same invention, as opposed to date of invention, would be the primary point at issue.

    But, since removing interferences is the whole object of this exercise, why are we doing this in the first place?

  18. March 2, to April 11. At least then got almost 40 days.. and 40 nights LOL. But that didn’t amount to a hill of beans being in a Box.
    Here is an Algebra question for you. If AA gives A an Application to file. And then B files it and A stays involved then what is the true answer?<><><><><><><><>

    C is the true answer. So if C = AA+B+A also, then EXACTLY!

  19. “markup in the full House Judiciary Committee”

    As if this has never happened before… I dunno Bruce, I’m not holding my breath. There are much more important issues facing this great Nation. The patent system is not one of them, despite the hoo haw…

  20. What we seemingly do not appreciate is that the Patent Office does not have a clear way to itself invoke interferences when two patent applications are disclosing and claiming the same invention. The first to file does not have a clear right to the patent, and the second to file does not have a clearly invalid patent application.

    Who should get the patent should be decided upon who first filed an fully described and enabled disclosure and who, outside the PTO, publicly disclosed an enabling disclosure. These matter cannot be fully addressed in ex parte prosecution. We still need interferences, but none is allowed in the new statute.

    So, we can expect, unless something is done, for many patents to issue claiming (at least nominally) the same invention.

    What a mess.

  21. Egad! Excellent point there Les. Massive room for misunderstanding when I said that “disclose” has no well accepted meaning in the “art.” What was I thinking?

  22. That’s a good idea Ned. But in a world where : “process means process, art or method” can be interpreted to mean process must be tied to another statutory class or transform an article to a different state or thing, whats the point?

  23. Sorry, but I don’t think loaded language furthers the debate.

    It sure dont, not with my main man MIA.

  24. No obvious agenda? There must be a hole in your obviousness filter, Ned. Did you miss the part where fred twice assumed infringement of an unpatented technology?

  25. David I agree in principle. But since “publicly disclosed” is undefined, what is A to do when he sees B getting a patent based on his affidavit and the patent office denying you a patent on the same invention based on 101 even though they cite no prior art against you?

  26. … there are instances where no one will be able to file a patent. A boon to those who “infringe”!

    Aren’t we putting the cart before the horse, here? You can’t infringe if there’s no patent.

    Not knowing about each other, both A and B might try to file, but both would lose their patent rights and the infringer would win.

    No, both would be denied a patent, and there would be no infringement. There is no inchoate “patent right” before the patent is granted. The only right you have is to apply for a patent under the government’s rules.

    Sorry, but I don’t think loaded language furthers the debate.

  27. fred, most people would disagree with you. B publicly disclosed first. This means he can file an affidavit proving his prior public disclosure thereby overcoming A’s filing date.

    But that educated people with no obvious agenda could disagree on these issues must mean the draft statute is ambiguous.

  28. In my scenario A independently invents AND B independently invents. B does not derive. So A is barred because of B’s disclosure and B is barred because A was first to file.

  29. Given all the new definitions, why don’t we define “discloses” and “publicly discloses.” These terms have no well accepted meaning in the art.

    Why not something like this:

    The term “disclose” shall include the non experimental use of the invention for its intended purpose, offering the invention for sale, or making the invention available to a party other than the inventor on a non confidential basis where the period of confidentiality expires before a patent application is filed on the disclosed subject matter.

    The term publicly disclosed means a disclosure that enables the public to make and use the invention.

    This should make it clear that any non experimental use, offers for sale or other non confidential disclosures less than a year would not bar the inventor.

    Define the terms.

    This said, I think the grace period also needs to allow the first inventor to swear behind prior art not disclosing the same invention being claimed, i.e., subject matter that only makes the claimed subject matter obvious. I have no idea why it is important to stop this.

    Under this regime, the first-to-file (or publicly disclose) the invention in the manner described in Section 112, p. I, would prevent second filers from obtaining a patent on the invention. That is all that is really needed. This would be somewhat equivalent to the European approach where the first filed application is only used for novelty purposes.

  30. b/c there can only be one true inventor

    Yes, it has been discussed already.

    You’re assuming that “inventor” means “the first.”

    That’s not how the courts have interpreted it. Instead, the courts’ interpretation is closer to “one who produces or contrives something previously not available to those skilled in the relevant art, by the use of ingenuity or imagination.”

    o

  31. Davie, would you be talking about the next to impossible to prove derivation protocol?

    Good luck with that.

  32. there can only be one true inventor

    Um, like why? What possibly rules out simultaneuos independent invention?

  33. This has probably been discussed already, but aren’t there constitutional issues with first to file…

    “To promote the Progress of Science…. to Inventors… the exclusive right to their…Discoveries”

    Doesn’t that mean the inventor gets the exclusive right, not the filer, and the idea of first inventor to file seems internally inconsistent b/c there can only be one true inventor. Is anyone expecting an immediate constitutional challenge if this passes?

  34. “Didn’t I read somewhere that 6 tried to get hired as an incompetent attorney and couldn’t?”

    Nah, that’s not how it went. 6 updated his resume on Monster and a powerful DC mega firm just happened to be trollin’ the site and took notice. Called him up and begged him to come in for an interview.

    lulz

  35. This is the law in Canada, as you describe it. But section 102(b)(2)(B)prevents this result under S. 23:

    102(b)(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

    ‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

    ‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; …

  36. And: would it not be a good thing, to have fewer patent monopolies gumming up the conduits of industry?

    Sounds like ya have the answer ya want already in your gummy mind.

  37. “”Additionally, the first to file provision will create a malpractice night mare,”

    For incompetent attorneys like Les. ”

    Didn’t I read somewhere that 6 tried to get hired as an incompetent attorney and couldn’t?

  38. “Therefore, applications will be rushed and the information “disclosed” to the public through the application process will be full of errors and inconsistencies and create confusion”

    Like in Europe. Oh, no, my bad…

    “Additionally, the first to file provision will create a malpractice night mare,”

    For incompetent attorneys like Les.

  39. Dear Les, you think you know more about First to File in practice than I do after forty years of practising it. Don’t worry old chap. What you are frightened of: it might actually never happen.

    When did you ever see a “team of expert lawyers” prepare and file a patent application even half as fast as an attentive patent attorney who has been serving his or her neighbourhood innovators loyally and knows their technology inside out and backwards. Small is nimble, in patent drafting as in most other things. Where the teams of lawyers score is in litigation. Why don’t you complain about that? Can’t you do anything about that scandal?

  40. Staff writes: This bill is a wholesale slaughter of US jobs.

    I guess he is imagining the awful vista of unemployment statistics reaching the shocking levels now manifested in old First to File Germany. Those high-priced Germans in the German Mittelstand network of small manufacturing companies, they just can’t run their innovative products off the production line fast enough to meet world-wide demand. It is all hands to the pumps. What’s their secret of success, I wonder?

  41. Dear Congressman -

    Please vote against HR 1249. The First to File provisions would create a race to the patent office that would advantage large corporations over start-ups and individuals and degrade patent application quality. The large corporations can hire teams of expert lawyers to rapidly prepare patent applications whereas individuals can barely afford to hire a single attorney.

    Additionally, the first to file provision will create a malpractice night mare, with every patent attorney that loses the race to the patent office being sued for not filing an application fast enough.

    Therefore, applications will be rushed and the information “disclosed” to the public through the application process will be full of errors and inconsistencies and create confusion, where the intention is to make technology “patently obvious”.

    Again, please vote against HR 1249.

    Please feel free to use the above as the basis for your own note.

    You Congressman can be emailed from here:
    link to writerep.house.gov

  42. First, do no harm. Obviously, the bill was not fully baked.

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what they paid for) and with them the jobs they would have created. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help in the fight to defeat this bill should contact us as below.

    Small entities have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion’s share of new jobs.

    Please see link to truereform.piausa.org for a different/opposing view on patent reform.
    link to docs.piausa.org

  43. “In other words, I already counsel most of my American clients to disclose and file as if absolute-novelty were the rule because that is the rule they must follow if they want foreign protection.”

    This is pretty standard advice. That’s why the changes aren’t that big a deal for those who are already competent.

  44. Les, reading Bruce, it sounds like the pols have lost interest in further discussion, and have moved on to something else. Mr Kappos told us last week in London that the Bill is going through.

    fred, there are two rival Promote the Progress theories that are offered in justification of the restraint on trade imposed on society by a grant of patent monopolies. One is the “prospect” theory. The other is the “disclosure” theory. Thinking about i) First to Invent ii) First Inventor to File iii) ROW First to File, which one of these three actually fits the theory? And: would it not be a good thing, to have fewer patent monopolies gumming up the conduits of industry?

  45. Instead of trying to patch a half a fix to the wrong headed first-to-file, provisions, why not advocate for maintaining the far fairer first-to-invent language?

    Even if fairness is difficult to administer, or even if few take full advantage of fair rules, that doesn’t mean we should change to rules to something that is inherently unfair.

    Please also remember all the malpractice suits that will stem from alleged slowness in the preparation and filing of applications….

  46. Even under this new revision (with managers amendment), there are instances where no one will be able to file a patent. A boon to those who “infringe”!

    Specific example (and there are many): A invents; B invents; B discloses (available to the public); A files. Assume this happened within time periods. A can’t get a patent because of B’s actions and the grace period is personal. B can’t get a patent because A has filed. Not knowing about each other, both A and B might try to file, but both would lose their patent rights and the infringer would win.

  47. Truer words have never been spoken! The new prior art provisions have been pending in prior versions of the bill since 2005, with relatively little change, out in the open, and available for public discourse. It’s basically too late to have a meaningful conversation now.

  48. Markup in the full House Judiciary Committee Thursday, and it looks likely that if the bill hits the floor, it will be locked down against amendments, and will likely pass, due to lack of interest by all those concerned, and a sell-off by the ABA and the AIPLA in supporting the legislation.

  49. I was wondering Malcolm if, for an inventor, the tension between optimal conduct to make money out of an invention in the USA and what is optimal to make money everywhere else will increase when the new First to Publish regime comes in. Academics have always wanted to publish their new science earlier than anybody else. If the new US patent law indulges this urge, also in patentable inventions for applications of that science, you are going to be doing even more jury-rigging (in the old naval sense of course) than you were before.

    I should stop though. I’m beginning to sound like Chicken Little.

  50. those of us with substantial foreign practices

    LOL, Mooney, you spend too much time on P’O to have any kind of practice. But to the extent that you have a practice at all, I’m sure it’s quite foreign…

  51. This is like the “New Rules” fiasco. Everyone spent a bunch of time and money trying to figure out how to apply the 5/25 claim limitations and the like. Then, nothing.

    I would not waste my time with this. FTF is notnever going to pass.

  52. Now this would be the right usage of 4000 dollers examination acceleration instead of capos big business plan you could hire a small army of patent file and internet searchers to check for novelty and immediatly award conception.

  53. I’m glad you brought up Gore v. Garlock, since it seems to be one of the clearest but least understood or appreciated Fed. Cir. decisions. Gore v. Garlock and other CAFC cases make it clear that a secret process use, even for making commercial products, is NOT statutory prior art or a statutory bar, and thus does NOT prevent independent invention and patenting of that same secret process later by someone else. [Which is a key reason why in 1999 Congress put a "business method prior user" personal defense in the AIPA law.]
    The secret prior user itself, however is estopped from patenting the secret process it has been using commercially beyond the bar date period. That is clear from Gore v. Garlock and other decisions expressly approving that prior personal estoppel doctrine developed by Judge Learned Hand in his famous Metalizing Engineering case. Metalizing Engineering developed or clarified a doctrine of non-statutory equitable estoppel against getting a patent yourself on a secret process after you commercially use the secret process to make a commercial product for more than the bar date time period (then 2 years, now 1 year).

    This does not, however, solve the problems with the “..in public use, on sale, or otherwise available to the public” languge of the statute. The “on sale” bar clearly does NOT require any public availability or disclosure of the inventon to be a statutory bar to the invention placed “on sale” as of that bar date.

  54. The real problem seems to be two-fold. On one hand, the arrogance of the secret lobbyist and staff drafters of such legislation, who apparently think they have thought of everything themselves, and know all of the law themselves, and thus have no need for it to be reviewed by numerous experienced patent practitioners for unforeseen ambiguities or consequences. On the other hand, the apathy of almost all practitioners towards reviewing and publicly commenting on the numerous prior versions of this legislation that have been pending for six years, until finally spurred into action by actual passage by the Senate and approaching passage by the House.

  55. This change still allows discredible patent evidencing by not being required to file in the patent office. returning the initial document disclosure program will fix this however it still is not the most accurate inventorship determination method. there is still the opertunity for file tampering to steal inventions. The best solution is global immediate on filing novelty checks using internet and office files and immediate awarding of conception this will ignite a flurry of high importance patents like nothing seen before since it will be the first integtritious patent system in U.S. history.These legislaters need to wake up to reality there 50 years behind the times. The economy is going nowhere because of there buracratic inability to see the right direction.

  56. Sunshine’s day for substance (well, as close as he ever has gotten) – drink it up ya’all, it wont last long.

  57. MD, maybe you missed this in my 5:49 comment: For those of us with substantial foreign practices

    In other words, I already counsel most of my American clients to disclose and file as if absolute-novelty were the rule because that is the rule they must follow if they want foreign protection.

    When they (usually an inventor, not the in-house counsel) screw up and don’t follow the rule, that’s when they need to be reminded of the rule, and that’s when we counsel them about the differences in various countries that may allow them to proceed in spite of their screw-up.

  58. MD When First to File comes in, many in America will (I suspect)take it for granted that what the law says inside the USA also applies outside the USA.

    Sorry, MD. “Many in America” already assume that the current law inside the USA says also applies outside the USA. When First to File comes in, that view will become closer to the truth (although still incorrect). And eventually the patent laws will be more harmonized, although I doubt perfectly.

    nobody supposes that the patent system of the USA has anything at all in common with that of the rest of the world.

    The similarities between the US, EP, Canada, Australia and Japan vastly outweigh the differences, MD.

  59. mmmm does the inventor give up priority date for other unclaimed embodiments?

    As Ted pointed out, it would be helpful if you provided a specific hypothetical where your concern would be expected to present itself.

    You seem to be suggesting that an inventor who discloses inventions X, Y, and Z in a specification but only claims X is somehow “giving up” a “priority date” for Y and Z. But if he/she never claims Y and Z, he/she will have given up more than just a “priority date” for Y and Z. If he/she later claims Y and Z in a proper continuation or divisional, the effective filing date remains the same for X, Y, and Z.

    Note that the section that “we” (“we” meaning Ted and I — not sure about you) are discussing only concerns the effect of an inventor’s own disclosures (direct or derived) against his/her later-filed claims. If an invention disclosed by X is never claimed by X, then the section has no relevance to X.

  60. No big deal? Well, I’m not so sure about that Malcolm. As of now, nobody supposes that the patent system of the USA has anything at all in common with that of the rest of the world. When First to File comes in, many in America will (I suspect)take it for granted that what the law says inside the USA also applies outside the USA. Over time, this will have unfortunate long term consequences for their patent positions, everywhere in the world except the USA.

  61. You know, I’m thinking that the trouble started when the drafters plagiarised the text of the 1973 European Patent Convention, which defines the state of the art as that which has been “made available to the public, by written or oral decription, by use or in any other way”. Would it not have been much better if they had not made any effort whatsoever, to harmonise with the rest of the world?

  62. In an effort to keep it simple by moving to first-to-file, we are making a hash that may have far reaching unthought of effects simply because we are using language that is undefined

    I guess we just add to include some definitions, then, or use better language. I think this is the issue that Ted is raising here.

    No need to panic, Ned. First-to-file is coming, whether you like it or not. For those of us with substantial foreign practices, it’s not really that big of a deal.

  63. Ted – Well, if the filing date is determined by the claimed invention, as it is currently, then in the case of a patent filed only claiming one embodiment, does the inventor give up priority date for other unclaimed embodiments?

  64. I disagree with the premise of Ted’s argument. I do not believe the current draft statute would bar an inventor from filing if any activity discussed occurs within a year.

    But that reasonable minds may disagree on this point illustrates the folly of this whole exercise. In an effort to keep it simple by moving to first-to-file, we are making a hash that may have far reaching unthought of effects simply because we are using language that is undefined and are writing on a slate filed with 200 years of case law that pertains to a first to invent system.

  65. Some brief responses:

    (1) Malcolm–I tried to mirror the language in the current bill with my revisions, but yours is certainly more concise.

    (2) 6–If you want to skip the background, just start reading at “The policy problem with treating (at least many) sales and uses ….”

    (3) mmm–Enablement analysis is always performed with respect to a specific claim. So I don’t see why there is a problem using “claimed invention” in determining enablement. Similarly, for an effective filing date, one must determine whether a particular claim is supported by the specification under consideration. Can you provide a hypothetical situation where “claimed invention” presents a problem?

  66. I’ve raised this point elsewhere, is no one else bothered by the use of the term “claimed invention”? By its own terms, merely an enabling disclosure in the application is not enough, it needs to be “claimed”.

    This problem appears in lots of places, not the least of which is “filing date.”

  67. A disclosure, use, offer for sale, or sale made 1 year or less before the effective filing date of a claimed invention, or making the claimed invention available to the public 1 year or less before the effective filing date of the claimed invention, shall not be prior art to the claimed invention under subsection (a)(1) if

    Great article, Ted, and I’m in 100% agreement (if the grace period actually comes to pass), but the above passage is still clunky. I prefer the following:

    Disclosing, using, offering for sale, selling, or otherwise making a claimed invention available to the public shall not be prior art to the claimed invention under subsection (a)(1) if the activities in this paragraph occurred one year or less prior to the effective filing date of the claimed invention AND

    (A) …

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