35 U.S.C. § 102 (newly amended by the Leahy-Smith America Invents Act of 2011)

As a site for referral and contemplation, I wanted to include the text of the newly drafted statute 35 U.S.C. § 102.

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; or

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.

(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.

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; or

C.    the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c)    {CREATE ACT Save for later}

(d)    Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

1.    if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

2.    if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’.

 

151 thoughts on “35 U.S.C. § 102 (newly amended by the Leahy-Smith America Invents Act of 2011)

  1. Repeat:

    Does anyone have a link to Wegner’s article on the effective date of FITF?

    Specifically, why does he contend it does not apply to certain claims in an application which is otherwise covered by the new Act?

  2. I think you are right.

    As to Wegner’s piece discussed by Anon, I have no idea why he would say the claims that are entitled to an earlier priority would be governed by the old law. The statute on its face seems to say something different entirely.

    If anyone has a link to Wegner’s piece, we should look see his views before we make up out mind here.

  3. Julie, I do not agree with Ned on this exact point.

    Hal Wegner has written an article that I do not have at my fingertips currently. In that article he laid out the rationale – given by the Office – on why CIP’s that had at least one single claim in common with an application prior to March 16, 2013 at the time of filing of the CIP would have to be examined under the old law. That holds true for duplicate claims that are later dropped in a preliminary amendment. The only trigger to engage the full force of the old law was “a claim in common.” CIPs will be a massive source of endrun around the March 16, 2013 date.

    In other words, the transition process after the final trigger date will be excessively slow and all CIP’s will enjoy the current law workings. With the current backlog and the expected surge prior to that date one can readily imagine a mixed bag of law being applied to applications for well over a seven year period. If I recall correctly, there are still application in process enjoying the last priority date change legislation – only a handful, but some still exist.

  4. Thank you Ned. Please confirm my understanding: This is a reason to NOT file a CIP after March 16, 2013. You would be better off filing a straight continuation off of the parent, and filing a separate brand new application claiming the new matter. If a CIP were filed after March 16, 2013, containing both CIP claims and straight continuation claims, both claim types would be subject to the new law. And, to your point, even if the CIP claims were cancelled, the straight continuation claims are still subject to the new law.

  5. If any claim, at any time, cancelled or not, has an effective filing date on or after March 16, 2013, the new law applies.

    this of course can work in the other direction, for example a CIP that can clsim prioruty to an pre-change app adopts the old law, even if the conecting material and claim are later dropped.

    In other words, ther are ways to “sneak in” new matter.

  6. This whole provision needs elimination corperations need to file a initial disclosure document showing complete conception like any one else. additions should be allowed afterwards for 2 years to perfect manufacturing or compounds but conception should award the patent otherwise the playing field is tilted to big business and inventors cant sell there conceptions

  7. (n) EFFECTIVE DATE.—
    (1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
    (A) a claim to a claimed invention that has an effective
    filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
    (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

    Julie, the listed priority date is not determinative. If any claim, at any time, cancelled or not, has an effective filing date on or after March 16, 2013, the new law applies.

    In other words, watch out for new matter.

  8. They need to take out all issued patents with no new intellectual materials detected and put them in a seperate data base this will cut complexity of deravation discovery. Ive found corrupt file insertions of advanced documents before and during prosecution is rampant and a total disincentive to file at all. Immediate document discloaure program on fileing is the only way to end this.Deravation or patenting around by the public after patent publishing is another disincentive to file needing correction

  9. I understand that the effective date for application of the new 102 is March 16, 2013. I would think that any applications filed after that date, but which have foreign or domestic priority before March 16, 2013, would be subject to the old law. Could someone please point out where this is stated in the new law?
    Thank you for your help.

  10. Hi, simple questions, see my post below on "implied derivation."  Without some kind of "obvious variation" exception it seems to me that we would not have an effective grace period at all.  If all one would have to do to defeat someone else's patent would be to publish an obvious variation of the inventors prior public disclosure, we would not have a grace period.  The grace period we would have would be so easily bypassed as to make Congress's intent to provide a grace period clearly frustrated.

    From: TypePad

  11. This method of evidencing is reminesent of back dating inventions to claim priority except on the front side . Its less credible than what should be the normal stronger evidencing method of steping to the microphone at all federal buildings and video coresponding recording at uspto after experation of 30 days notice of intention to disclose. initial document disclosure program needs to return to with original low cost for indegent inventors. also indegent patent issuances with lean due on sale of patent.

  12. Would rather not. But if you drop over to the Patent Watchdog blog run by Eugene Quinn you will find the same misapprehension displayed.

    I’d be interested to know what the split is, between those who think new 102 graces independent publications, and those that think it doesn’t. Is it 50:50, I wonder.

  13. Ned,

    Why would the courts do so? The new law does not include “obvious variations,” does it? Can the courts expand the law like you suggest?

    In a more general sense, I am having trouble with the law as written in that as I read (a)(1) and (a)(2), the object of both sentences is “the claimed invention.”

    How does one have a “claimed invention” in a “public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” that is, before any claims have been written?

    There is a possiblity that there are no claims at all in the “claimed invention before the effective filing date” at the supposed time of comparision.

    Also, I think that Mr Boundy’s reply of a specific specious as the only thing possible to be covered, it seems that the specific specious must be explicitly covered. A claim to a genus is not the same as a claimed invention to a species. So unless a whole genus is in publis use, or on sale or otherwise available to the public, there will be a mismatch between the claimed invention and the product that is “out there.”

  14. Anon, "Sorry Ned, I am not convinced by your argument.
    102 has been completely rewritten. Do you at least agree to that simple fact?"
     
    No.  Printed publication, public use and on sale are carried over.

  15. Ned,

    My reply has beeen eaten three times now and I do not have time to figure out why.

    Suffice to say though that your premis of “the new law is very much like the old” is just not true. This is a major revamp, and has been recognized at the onset by Congress as such.

    102(a) does not make the distinction between personal bar and absolute bar that you want it to have. It just does not do so.

  16. Sorry Ned, I am not convinced by your argument.

    The following is a quick recap of a post that was eaten:

    102 has been completely rewritten. Do you at least agree to that simple fact?

    Statutory construction overrides the case law that you want to bring in from the old. In fact, read the background on why prior user rights were expanded – that explanation dovetails with the non-personal bar aspect of the new 102(a). If you want a meaning other than the plain meaning of the words chosen, it is you that must supply the foundation of such a position. And that foundation must come from the new law or the congressional record surrounding this new law. Merely passing a conclusory statement about absent specific words to the contrary will not support your belief of what the proper interpretation should be. With such a new law as 102, the plain meaning of the words trumps any “reading into” that you are attempting to do. Rather than having the opposing view supply specific words to the contrary, it is you that must supply some type of grounding to read the words in a way other than their plain meaning. Simply put, there is no indication that the list of 102(a) is meant to be read with some terms a strict bar and other terms a personal bar. Unless you can support such a reading from the law itself or the congressional record, you are merely overreaching without a foundation.

    There is no such foundation in the new 102(a). It is as simple as that.

  17. Sorry Ned, I am not convinced by your argument.

    102 has been completely rewritten. Do you at least agree to that simple fact?

    Statutory construction overrides the case law that you want to bring in from the old. In fact, read the background on why prior user rights were expanded – that explanation dovetails with the non-personal bar aspect of the new 102(a). If you want a meaning other than the plain meaning of the words chosen, it is you that must supply the foundation of such a position. And that foundation must come from the new law or the congressional record surrounding this new law (old case law is pertinent to the old 102 – not to the new 102).

    Merely passing a conclusory statement about “absent specific words to the contrary” will not support your belief of what the proper interpretation should be. With such a new law as 102, the plain meaning of the words and of the structure trumps any “reading into” that you are attempting to do. Rather than having the opposing view supply specific words to the contrary, it is you that must supply some type of grounding to read the words in a way other than their plain meaning. Simply put, there is no indication that the list of 102(a) is meant to be read with some terms as strict bars and other terms as personal bars. Unless you can support such a reading from the law itself or the congressional record, you are merely overreaching without a foundation.

    There is no such foundation in the new 102(a). It is as simple as that.

  18. anon, the new law is very much like the old.  "On sale" was listed among items of prior art in 102(b).  Even so, it was never interpreted to be prior art to third parties.   It was always considered to be only a personal bar.
     
    The drafter must have known this.  They must have drafted with knowledge that putting "on sale" in a list of prior art would NOT be construed as a specific intention to change the current law that "on sale" is not prior art to third parties.
     
    Absent specific words to the contrary in the statute itself, no other interpretation can be proper.

  19. MaxDrei,

    The “carrot and stick approach” suggestion you have made does make further sense when one considers that prior user rights have been substantially increased. One way of looking at this move (increased prior user rights) is that the stick is lessoned to the point where the “punishment” for delay is that the delay-er cannot obtain a patent himself.

    Of course, we both know that the unintended consequence of this is a weaker patent system and a stronger trade secret system.

    Ned,

    I think DP has a much stronger statutory construction than the one you offer. As DP mentions, each item in the list of 102(a) is a bar item. That much is clear. There are a few things that raise exceptions to the bar, and those are in 102(b), with 102(c) and 102(d) outlining additional types of exceptions and understanding of the bar items of 102(a). But there is nothing anywhere to suggest, as you attempt to do, that the list of 102(a) is a mix of bar items and “personal” bar items. Nowhere is there support for such an idealized assertion.

    I see no way for the selective choice of meaning for an item from the list of barring events to label that particular item a non-barring event. To me, it appears that only with wishful thinking can you arrive at that conclusion.

    Likewise, the belief of incentivizing public disclosure is greatly undone by the expansion of prior user rights. You are correct that this scheme does in fact incentivize the opposite – but that does not change what the law actually says. One does not read the law as one wants the law to be, but rather, the law is read as it is actually written. The fact of the matter is that bad law does get passed and this is bad law and has passed. No amount of wishful thinking can change what the law actually says now.

  20. I totally agree. The new law needs to presume derivation with respect to obvious variations from a "public disclosure". If the law does not make this presumption, the law is toothless and will frustrate the whole point of a grace period.


    From:

  21. Good morning Ned,

    It looks like you are inching closer to understanding the points being made about independent invention and when the safe harbor of disclosing prior to filing may not be the same safe harbor that we had under the old 102/103.

    Also keep in mind with you rpath towards “presumed derivation” that as the law will be, not only is derivation not assumed, but proving derivation will be difficult as the procedural aspects are lacking (Dave Boundy phrases this much more clearly).

    This new law really does have a sizable dose from the Infringers’ Handbook.

  22. Simply, yes.

    But, as you suggest, any other interpretation in this context would be illogical . Therefore, I suggest, that the courts will adopt the most logical interpretation.


    From:

  23. Presumed derivation

    The prior publication of A will, under the new statute, remove as a reference a later publication or patent application disclosing A. However what if they later publication discloses not A, but B. And further what if B is obvious from A. I would suggest that unless the statute also automatically removes B, the statute would be toothless against third parties publishing obvious variations which would deprive the first discloser of a patent. Derivation proceedings should not be required, only that B be demonstrated to be obvious.

  24. Dear Prudence , the current §102 simply list “on sale” among other items which are prior art. There is nothing in the current statute that would indicate that “on sale” is intended to be only a bar, and not prior to third parties .

    Therefore, listing “on sale” among other items that are prior art should imply nothing.

    Moreover, limiting the preclusive effects of prior art to third parties to only that subject matter in the public domain will incentivize public disclosure. Allowing private information that is not public to invalidate third-party patents wouldn’t incentivize the opposite, trade secret use. The policy objectives therefore are backwards in the system you hypothesize.

  25. So Prudence, is the sense of Congress one of both carrots and sticks. A carrot to those who are first to make enabling disclosures of new and improved technology available to the public. A stick to beat those who keep their improvements secret, stripping all their underlying inventions of any patentability, as soon as one year from their first offer for sale.

    Makes sense Ned, doesn’t it?

    But does it bring any clarity, about what is patentable and what is not? I suspect not.

  26. The reason I say this is that I do not believe that the basic law regarding “on sale” has been repealed.

    There is a substantial school of thought that if the law cannot be interpreted in any other way but that a trade secret user could still obtain a patent in the United States after a year of secret commercial use, then the statute would be unconstitutional on their Pennock v. Dialogue.

    I am not sure that you need a “repealed” to substantively change the law surrounding “on sale.”

    In general section 102(a), and 102(a)(1) in particular, deal with fundamental bars to patentability that affect all users of the patent system. It does not make sense to me, given that this 102 is a major rewrite of the old 102, to carry along any of the old case law unless that law is compeltely unaffected.

    Any law on “on sale” fails to pass this test.

    Since the plain reading of the new statute merely lists a string if items that raise a bar, and some of the conditions explicitly invoke “public” while others do not, I must conclude that those not explicitly specifying “public” are not limited to “public.” The absence of the explicit term clearly indicates that “on sale” – for the bar effect – includes both public and private “on sale” events. The only way to confuse this new law is to follow the old law, which is not appropriate for the whole section 102 rewrite.

    Further, there is nothing in the plain language of the statute to indicate that the bar to patentability is strictly limited to that party who offered an item “on sale.” The “on sale” listing appears as just another (equal) term to the rest of the bars, and thus no special treatment (e.g. making it a personal bar) is indicated by the plain language. To read more into the plain language is impermissble.

    Lastly, the Supreme Court as recently as in Bilski was adament in not adding judicial renderings that go beyond the explicit wording of Patent Law as written by Congress.

    In fact, one of the takeaways from the Pennock case is the deference to Congress in writing the law. To be clear, I am not advocating that a trade secret user could still obtain a patent in the United States after a year of secret commercial use. Clearly, how I understand the new law (that “on sale” includes both public and private “on sale”) is a more faithful following of that decision. For example, if private “on sale” events were not subject to the exclusion of 102(a)(1), then such private “on sale” events would not bar such a secret on sale and allow secret on sale events without regard to time (any exceptions from 102(b) would not apply because the “on sale” bar would not have been tripped in the first place.

    When one has made an “on sale” event, the patent defeating aspect of 102(a)(1) is kicked in. It only becomes important as to whether that “on sale” event was public or private in regards to which of the possible exceptions to the patent bar may exist: either 102(b)(1)(A) or 102(b)(1)(B). In other words, having made any offer for sale, the bar of 102(a)(1) is kicked in. As far as I know, there are no explicit impediments to this bar being erected. It is only after the erection of the bar can we then look at 102(b)(1) to see if an exception can be made. Looking for this exception is divorced from instituting the bar, it is a separate step in application of the law.

    As has been pointed out, a possible exception may exist in 102(b)(1)(B), but that exception would only apply to a public “on sale” event. From 102(b)(1)(B), private “on sale” events find no succor. If you have a private “on sale” event then, the only possible exception wll come from 102(b)(1)(A). That exception is the rather narrow “derived from” exception, and largely is of very little help to the small inventor.

    It should be obvious then that any disclosure under the “on sale” event should be avoided altogether.

  27. I agree that this is the most logical reading, but you’d think that for something this critical Congress would have removed all doubt and actually defined the term as such.

  28. Max, I think, but I do not know, that your secret cake would not be prior art to any third party, but it would bar the cake maker who invented it and commercially used it from obtaining a patent if he filed more than a year after his commercial use for us began.

    The reason I say this is that I do not believe that the basic law regarding “on sale” has been repealed.

    There is a substantial school of thought that if the law cannot be interpreted in any other way but that a trade secret user could still obtain a patent in the United States after a year of secret commercial use, then the statute would be unconstitutional on their Pennock v. Dialogue.

  29. Paul, we also have the doctrine in the United States that prior art has to be enabling in order to anticipate, albeit prior art does not have to be enabling to make an invention obvious under some circumstances. I would have preferred that this distinction be encoded into the new statute in some fashion.

    For example, 102 (a) could have read something like this:

    “the claimed invention was made available to the public in a manner such as to allow the public to make and use the claimed invention.”

    And 103:

    “Regardless that a public disclosure as provided in 102(a) did not fully enable the public to make and use the claimed invention, it still may be used in combination with other prior art or with the ordinary skill of the relevant art in considering whether the claimed invention would have been obvious to one of ordinary skill in the art at the time the patent application was filed.”

  30. Paul, “public” and “secret” cannot be the same thing. The confusion started in Pennock v. Dialogue where the Supreme Court had a problem in that case with the secret commercial exploitation of the firehose making invention. At that time, “on sale” was not yet part of the statute. So they called the commercial use of the invention prior to the filing of a patent application a “public use” even though, in that case, the art of making the firehose was not available to the public.

    After they put “on sale” into the statute, there was no longer a need to call private commercial exploitation of the invention a “public use,” but the courts continued to do so and mistakingly so. It would have been better that the Supreme Court would have cleared up the confusion long ago.

  31. Simple, just to make sure we are talking about the same thing, imagine you are prosecuting a patent application in the examiner applies a reference for its disclosure of X. Your provisional application discloses X. Your published paper discloses X. But your claim under consideration is a genus claim that only includes X and which is otherwise not “fully” supported in your provisional application.

    Under these circumstances your priority claim to your provisional application fails. However,! your publication does not fail. It is effective to remove the reference because the publication and the reference both disclose the same subject matter, X.

    Does this help?

  32. Simple, just to make sure we are talking about the same thing, imagine you are prosecuting a patent application in the examiner applies a reference for its disclosure of X. Your provisional application discloses X. Your published paper discloses X. But your claim under consideration is a genus claim that only includes X and which is otherwise not “fully” supported in your provisional application.

    Under these circumstances your priority claim to your provisional application fails. However,! your publication does not fail. It is effective to remove the reference because the publication and the reference both disclose the same subject matter, X.

    Does this help?

  33. Here’s my re-write for 102(b)(1)(B), does it mean the same thing?

    “the disclosure is later in time than a disclosure under 102(b)(1)(A)”.

  34. Ned, I wouild prefer an “I don’t know” to this type of snide comment.

    Obviously the new 102 has different terms and is a substantive change. Your “Wow!… all prior meaning of well known terms” is condenscending. You asked for a quote and one was given to you. The appropriate response would have been “Thank you!”

  35. Your lack of basic understanding of the law burdens this conversation.

    Is it a burden to explain how a disclosure provides any additional benefit than a filing?

    I am not asking for any type of explanation that you should not be able to give. You should be able to understand what a filing provide, what a disclosure provides and compare the two in total.

    I am aware of the priority effect given to a filing, but that does not mean that a filing has no other attributes than the priority effects.

  36. The benefit of publication Is that it knocks out prior art regardless of whether the claims are fully supported.

    Ned, an application filing does the same thing. Did you read my question through?

  37. link to philly.com

    MANCHESTER, Conn. – When Keith Wearne goes grocery shopping, checking out with a cashier is worth the few extra moments, rather than risking that a self-serve machine might go awry and delay him even more.

    Most shoppers side with Wearne, studies show. And with that in mind, some grocery store chains nationwide are bagging the do-it-yourself option, once considered the wave of the future, in the name of customer service.

    “It’s just more interactive,” Wearne said during a recent shopping trip at Manchester’s Big Y Foods. “You get someone who says hello; you get a person to talk to if there’s a problem.”

    PROMOTE THE PROGRESS!

    LOL.

  38. Courtenay,

    How are you reading that 102(b)(2)(c) only applies to applications? 102(b)(2) states “DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.” I don’t think it only applies to applications.

  39. Yes, that is exactly where we are — a grace period that is too weak to be commercially useful ex ante during R&D, and is just a wild card that will come in to complicate litigation ex post.

  40. i am sorry to interupt the serious discussion over here.
    My name is sooraj k abraham and am a law student in india.
    since this section postulates a first file policy i have some comments to make please evaluate it and tell me whether its correct or not.

    “Some inventions are made with the object of life saving and situations might demand to use the same asap. if the new amendment follows a first file policy wouldn’t it abrrogate the whole object of invention?”

  41. If you think there is a good reason to file a PPA and the NON PPA and for them to be at the sames time, and it is a valid argument, then that is a perfect opportunity for the USPTO to offer an Application that does both.

  42. Suppose the inventor makes cakes, with a process all of his own, that is his secret. He sells his cakes. Within a year, prompted by the commercial success, he files a patent application directed to his new and non-obvious process, setting out a detailed description that enables others to bake cakes just as delicious.

    Suppose you simply cannot determine the process by reverse engineering from the cakes on sale.

    In Europe, we would say that the patentable process has not been “made available” to any member of “the public” so the process is still patentable. Is it still patentable under the AIA?

    Would it still be patentable under the AIA if the patent application were filed later than a year after the first sale, or more than one year on from the commercial success? Can anybody tell me? Does anybody yet know?

    I ask because my sense is that Congress recoiled in revulsion from harmonising with the European patent law, lest it enable cake makers to delay patenting their baking processes until after achieving commercial success.

    As if they would! Ha!

    And if they were to do that, so what?

  43. Second, your summary of current law is not correct.

    I was not talking about pre-AIA law Ned. Maybe that is why you are so confused.

  44. Ned – you yourself have been talking about more than just 102(b)(1)(B) – see below at 11:01 AM.

    You are playing that “indignation” game again. Please grow up.

  45. Huh? You are now talking nonsense.   Unless we change the law, applications are not published on the same day they are filed.  A publication on the same date of filing IS what we are talking about.

    Sent from iPhone

  46. about removing a reference throughout this thread, we were talking only about B.

    Don’t see that in this thread. There are several discussion on this thread that discuss more than just (B) – so lose the attitude. It’s not very professional.

    102(b)(1)(A) is an applicable exception which proves the point that “on sale” is not a personal bar. Whatever you think 102(b)(1)(B) says, the fact that 102(b)(1)(A) provides for a non-personal bar for “on sale” makes the topic germane – and your little temper tantrum inappropriate. Let’s stay adults here, shall we?

    Do you really think that 102(b)(1)(B) overrides the fact that 102(b)(1)(A) provides that “on sale” includes both private and public on sale events?

  47. Page 1: “To amend title 35, United States Code, to provide for patent reform.”

    This is not a new concept.

  48. I didn’t say the application was a publication.

    Did I say that you said an application was a publication?

    No.

    Is an application a publication?

    Yes, it can be – quite easily. Do you understand the ramifications of this?

    Once species A is published, the later application by another disclosing species A is removed as a reference.

    No one is arguing otherwise. The point that you keep missing is that the application can serve as a publication. Indeed, you have not said this – but you need to say it. Once you say it, it might sink into your thoughtst that the truth of the statement makes your tactic of file and publish separately inthe same day quite meaningless. There is no need for anyone to understand what you said, there is a need for you to undersand why what you said is bogus.

    Once you file, there is no need for publishing on a secondary basis.

    This is not a difficult concept.

  49. Dumkopf.  Please do not change the topic, erect strawmen, move goalposts and the like.

    When we are talking about removing a reference throughout this thread, we were talking only about B.

    Sent from iPhone

  50. Anon, let's not be cute.  We all know that the grace period applies only to activity within a year.

    The question with "on sale" is whether a private use within the year is excused. I think it is.

    The reason it is is because the term "disclosure" in 102(b) references 102 (a). Therefore I think everything in 102 (a) is included within the meaning of the term "disclosure."

    Sent from iPhone

  51. The subject matter of the reference not in the publication is not removed.

    I hope you understand the implications of this.  

    I think we largely agree on the result.  

    Sent from iPhone

  52. The major problem with you analysis is your assumption that the recitation of well known terms on 102 was intended to change or could change their meaning or interpretation in any way.  

    Second, your summary of current law is not correct.

    Sent from iPhone

  53. Um, who cares? What is up with you patentbaggers

    What is a patentbagger?

    Do you realize that this is a patent website?

    If you do not want to see hypos on patent law, you do not have to come to this website. If you do not want to add to the discussion, then please keep your comments to yourself. “gotta screech” indeed.

    No one is forcing you to be here. You are welcome to leave anytime the discussion is on patent matters that do not fit your fancy.

  54. There is no indication of any change

    Ned, this too is incorrect. Directly on page one of HR 1249 the indication is there that these are changes to the current law. Your statement is without backing.

  55. but that is require to remove a reference.

    Also not correct Ned.

    The exception in 102(b)(1)(A) to remove a reference does not call out that the disclosure must be a public one.

    102(b)(1)(A): 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 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.

    The word “public” is nowhere to be found.

  56. Ned,

    That would be incorrect.

    102(b)(1)(A) does provide an exception – but it is the exception that proves the rule.

    The 102(b)(1)(A) exception as applied to the “on sale” (both public and private) bar event of 102(a)(1) is a limited exception. LImits of the exception include a one year or less time frame, and the (A) section indicates a derivation requirement.

    Nowhere in the exception of (A) is there anything that overrides the plain “on sale” bar, nor indicates that all private sales are captured in the exception. For example, a private sale made one year and one day prior to the effective filing date would fail to engage the exception, and even such a private event is a bar against the would be patentee. Further, this type of bare event applies to everyone wanting a patent.

    I do not see this as “close” at all. The words, or rather the lack of words in 102(a)(1) do not paint an ambiguous picture of the “on sale” bar.

  57. Q: How does one view the bars of 102(a) to be personal or not?

    A: “personal” is a misnomer. 102 does not distinguish between public and personal, but rather, 102 distinguishes between public and private. “Private” is not the same thing as “personal.” The writing of 102 dictates which bars have a public component (patent, public use and otherwise available to the public) and which can extend into the private realm (printed publication, on sale). Regardless of public or private, none of the bars are personal bars – each applies to all.

    I like the way that 102(a) starts out: “a person shall be entitled to a patent” This may drive some people nuts, as it supports an entitlement philosophy (pro-patent).

    The rest of 102(a) gives two sets of conditions that bar a person from obtaining their entitlement (this is not “personal” as the requirements are universal – applying to ALL persons). If a claimed invention has already been patented, then everyone is barred from obtaining a patent. Each of the bars in 102(a) act in the same way – barring obtainment for anyone to get a patent for each condition. These are all bars against anyone obtaining a patent when each condition exists. In this sense, it really is a misnomer to think that there are “personal bars”
    Some conditions explicit set the bar at a public disclosure – for example, use must be a public use. Private use is not barred. One can have a private use and that private use would not remove entitlement to a patent.

    Likewise “otherwise available to the public” requires a disclosure in that category to be a public disclosure.

    While both of these prescriptions explicitly call out “public” – the bars in 102(a) are not all public bars. Some of the elements called out as bars do not explicitly limit the bar to a public event.

    The prescription uses “public” in other barring events, but does not use it in the “on sale” event, so the “on sale” bar to entitlement in 102(a) is for both public and private “on sale” events. I do not understand what is meant when the phrase “public disclosure” is used in connection to the “on sale” bar, because the prescription against entitlement to a patent applies to all on sale events, both public “on sale” events and to private “on sale” events. Whether an “on sale” event is “personal” or not is a meaningless distinction. Likewise, one can have a private printed publication and that private printed publication would remove entitlement to a patent just as would a public printed publication. 102(a) is not ambiguous as to which bars call for public disclosure and which do not.

    Is it a good idea to have such private matters be bars? Probably not, as their very nature make it difficult for Examiners to be aware of them. Will the non-disclosure of such private items rise to the level of inequitable conduct? Possibly. From a policy standpoint, such private bars are exactly the type of thing that the Office needs to have applicants be forthright about.

  58. Um, who cares? What is up with you patentbaggers and your ridiculous hypos for everything?

    OMG! The international date line!!!
    OMG! What about patents on jump gates! Babylon 5!
    OMG! What about the small inventors that can’t afford the $15 provisional filing fee increase!

    Patentbaggers gotta screech, I guess.

  59. But, under your hypo, both are SF because both are the same.

    OK, now change the scenario a bit (as disscussed in this thread = the second disclosure is an actual invention with true enablement. It is only the subject matter of the second that is the same as the first. Now the later is not just SF, but does a science fiction publication still remove later prior art disclosing the same subject matter regardless of what is being claimed?

    The point (if it is too difficult to discern), is that mere disclosure of the same subject matter acts to the opposite of promoting the arts. Anyone can dream and disclose dreams – those dreams (same subject matter) should not stand in the way of actual inventions on that same subject matter.

  60. The publication removes later prior art disclosing the same subject matter regardless of what is being claimed. Priority is not involved.

    So a science fiction publication removes later prior art disclosing the same subject matter regardless of what is being claimed?

  61. i think this is more than just first to publish but a first to publish AND to file.

    bo, do you think you need to be first in both?

    Scenario 1) Tom publishes first. Jerry publishes second (not derived from Tom). Jerry files first. Since Tom can no longer be first to publish and first to file, Tom cannot get a patent. (I do not think this to be correct).

    Scenario 2) Tom publishes first. Jerry files first (not derived from Tom). Since Tom can no longer be first to publish and first to file, Tom cannot get a patent. (I do not think this to be correct).

    Now let’s add some interesting details

    Scenario 3) Tom publishes a science fiction novel about the subject matter. The novel clearly does not enable. Jerry, inspired by the science fiction sets out and actually does invent a device based on the the science fiction subject matter. Jerry files a provisional and publishes on the same day. Is Jerry prevented from obtaining a patent since Tom had previously disclosed the claimed invention (albeit at the time is was pure fantasy)? Tom, inspired by Jerry, “invents” an improvement upon Jerry’s enabled publication and promptly files an application (within the one year time period of his first science fiction story). Does the science fiction disclosure of Jerry’s remove Tom’s disclosures (provisional application and public disclosure) as prior art to Jerry’s application? Does this exception thereby allow Tom to bypass the need for Tom to actually invent the device from scratch? If we think that Jerry can get a patent on the subject matter, is Tom exempt from that patent since Tom actually made a first disclosure? Patent or not, is Jerry exempt from taking Tom’s patented item and removing the one feature added (assuming this is possible) and then reselling the device that he actually first enabled and first filed upon?

  62. I am trying to find “public disclosure” in the new 102, and cannot.

    I do find publicly disclosed, but that is not the same thing, is it?

    Does the bare bones item of “on sale” in 102(a)(1) include both public and private sales? I think it does. Does the pertinent exception 102(b)(1) (keyed to 102(a)(1)) provide only a partial exception to sales activity? Likewise, I think it does. It seems that private on sale activity does not merit the exception of 102(b)(1).

    So in other words, if two parties are negotiating non-publicly, and an offer for sale is made by one party, does the “on sale” bar preclude the person from obtaining a patent? I think it does. It appears that the 102(a)(1) is triggered by the private offer for sale, and since the offer was private, there is no exception to reclaim the material for patenting in 102(b)(1). Private offers for sale are a trap.

    This seems like an exceptionally devious trap for the small inventor, who now must not make any private offers for sale before filing an application. You either need to not disclose at all (not likely, as disclose is necessary for funding reasons), or disclose fully publicly (which destroys the negotiation power of the small inventor).

  63. I didn’t say the application was a publication. I said that species A was published. Once species A is published, the later application by another disclosing species A is removed as a reference.

    I hope the some helps you understand what I said.

  64. Correction, the above “..made available to the public by printed publication, public use, on-sale, or otherwise” is providing one of many examples of
    how easily AIA 102(a)(1) could have been written to clearly change current law to Eliminate secret commercial use or secret on-sale activities as any bar to getting those commercial beefits for years yet also getting patents years later, if that was really intended, as some Senate floor discussions would seem to suggest.

  65. note that they also retained “public use” in 102(a)(1), and there is clear case law

    Is any of that clear case law applicable to a statute so heavily revised?

  66. That is an interesting argument for the AIA 102(a)(1) bar covering both secret and non-secret on-sale activities.
    But that requires a big assumption that they were being that thoughtful yet deviously not writing 102(a)(1) to make that CLEAR, which would have been so easy. E.g., “..made available to the public by printed publication, public use, on-sale, or otherwise.”
    Also, note that they also retained “public use” in 102(a)(1), and there is clear case law that secret “public use” is NOT a bar to anyone unless it is Commercial secret use, and even then it is only a “forfeture” personally impacting only the secret user itself.

  67. Ned, you are not thinking.

    An application serves as both a publication and as a priority seeking document. While you may be correct in what you are saying about the priority side, you are missing the boat that an application still serves as a publicaiton.

    It just does not make sense to have both a disclosure and an application.

  68. This is intended for Ned, and on the subject of prior art vs priority of filing.

    Typical is to file a pro (a priority application) then, a year later, a full application. Sometimes what turns out to be the important claim is not entitled to priority and in the interval between the pro and the full application there was a filing or publication of the same subject matter, which is therefore prior art to the claim and destroys it.

    UK law, prior to 1978, had a provision which noted the disclosure content of the pro, and rendered it ineffective as the basis of validity attacks on a claim of the full application. That provision did not make it into the EPC.

    Now, under AIA, I see in 102 wording that reminds me of the old pre-1978 law of the UK, but applicable in the one year period before the pro is filed.

    Can the new 102 wording also work, in practice, like the old UK provision, to insulate any claim which happens not to be entitled to the date of the pro from prior art attacks based on the information content of the inventor’s pro, or (come to think of it) the inventor’s pre-filing disclosure?

  69. On sale is not prior art to thrd parties.

    On sale can be by trade secret use. There is no requirement of a public disclosure.

    Not everything in 102(a) is a public disclosure; but that is require to remove a reference.

  70. Example: prov. application and a public disclosure of species A.

    Reference: Species A.

    Claim: genus including A.

    Result:  no priority.  However, reference is removed.

    Sent from iPhone

  71. Public disclosure” and “disclosure” are not the same.

    So?

    “categorically” and “in a category” are also not thesame thing.

    Just what are you trying to say, Ned?

  72. New matter.

    Think.

    Think indeed – as has been commented upon, any new matter (which would – or rather should – not happen in the situation you have been asked aobut -the same day provisional andpublication) would need a new provisional anyway – there is nor use for publications – they do not buy you anything more than what you already protect by simply filing another provisional.

    Think indeed.

  73. The offer for sale may bar Andre, but it is not prior art to Sheryl.

    102(a)(1) clearly lists a condition of “on sale” as a bar,

    There is nothing in the law to suggest that this bar is limited to being a bar only the person who puts the claimed invention on sale,

    102(a)(1) does not explicitly indicate that “what” is put on sale must itself meet all requirements for patent (e.g. enablement), thus per the new 102, the offer for sale by Andre (the integrator-disintegrator) is prior art to Sheryl. Sheryl’s claimed invention (a integrator-disintegrator) is anticipated by Andre’s offer for sale.

    Score: 0 (given the time period, the (b)(1) exception is not available to Andre, so the offer for sale does more than “may bar,” it does bar.

    The offer for sale is Not a public disclosure. It will not remove Sheryl as prior art to Andre.

    The fact pattern had the offer for sale by Andre. Offer for sale is one of the explicit items listed in 102(a)(1) and thus is one of the items for which 102(b)(1)(B) applies. Being “on sale” is a public disclosure.

    Thus Sheryl’s disclosure, being the subject matter that had been disclosed by Andre, is removed as prior art to Andre.

    Score: 0

    Sheryl gets the patent.

    Andre’s offer for sale is an item clearly listed under (a)(1). The offer for sale is a constructive disclosure. On the facts given, the “offer for sale” disclosure is prior to Sheryl and thus counts as prior art against Sheryl. No exceptions apply, as Andre’s disclosure was not made by Sheryl and Andre did not obtain the subject matter from Sheryl.

    Sheryl is barred from getting a patent.

    Score: 0

    So far, Ned’s results are 0/3.

  74. Compare

    The offer for sale is Not a public disclosure.

    and

    This is simple. The term DISCLOSURE means the acts implicitly described in 102(a) — all of them.

    W

    T

    F

  75. That something is the “subject matter” that has to be “publicly disclosed” by the applicant

    Unecessary – no “Period!” required – one does not have to file and publish – the filing provides the benefit and publishing does nothing in addition. If the subject matter is in the filing, you do not have to disclose after you file.

    Don’t be rude and say something is a “lack of basic understanding” when you have been asked to explain a condition of your position (and you have yet to explain it – merely repeating yourself is not an explanation).

    The burden on the conversation is your lack of willingness to give answers when you have been asked. You take a position and then do not (or cannot) defend that position.

    So, once again, what it the additional benefit to be attained by publishing after you file? Your advice to publish after you file in the same day is nonsense. Your explaining by saying that the other party lacks basic understanding is also nonsense. And rude.

  76. The offer for sale may bar Andre, but it is not prior art to Sheryl.

    The offer for sale is Not a public disclosure.  It will not remove Sheryl as prior art to Andre.

    Sheryl gets the patent.

  77. The offer for sale may bar Andre, but it is not prior art to Sheryl.

    The offer for sale is Not a public disclosure.  It will not remove Sheryl as prior art to Andre.

    Sheryl gets the patent.

    Sent from iPhone

  78. So if someone (let’s call her Sheryl) comes up with an actual integrator-disintegrator five years after the public disclosure of the science fiction subject matter of an integrator-disintegrator by Andre – Andre is first to disclose through his offer for sale, which of the following are true statements:

    1) There is no bonafide seller or enablement requirement that prevents an offer for sale from becoming a block to others’ subsequent attempts to patent per (a)(1) – even if the offer for sale is a sale of something not yet invented.

    2) Sheryl is barred from obtaining a patent on her integrator-disintegrator per (a)(1).

    3) For this question add to the setting that Sheryl, very excited by her prospects, but not knowing that Andre has made an offer for sale (which predates Sheryl’s filing and disclosure by five years), applied for a provisional patent application and disclosed the same day. Now then – Andre, since the subject matter of his disclosure is the same as Sheryl’s (subject matter – not depth or enablement of the subject matter), Andre is not barred from obtaining a patent after Sheryl’s disclosure, provided Andre files less than one year after Sheryl’s disclosure- (b)(1)(B).

    4) This law is F’d up.

    5) All of the above.

  79. Your lack of basic understanding of the law burdens this conversation.

    An examiner will cite a reference for it’s disclosure of something. That something is the “subject matter” that has to be “publicly disclosed” by the applicant to remove the reference.

    Period!

  80. What about having to publicly disclose the subject matter of the reference do you not understand?

    We are not talking about the effect of the public disclosure on the patenability of the reference.  We only are taking about removing the reference as prior art to the second-filed application.  These are two entirely different topics.

    Sent from iPhone

  81. Do you believe everything that you have read?

    Should you?

    If we allow something to defeat patent rights merely because the idea was published, without more (such as enablement), we retard rather than promote the useful arts. I think the tie in is to your choise of words “regardless of what is being claimed,” taking that phrase and running it out in a Kantian logical extreme.

    Andre has offered for sale an integrator-disintegrator.

    According to the law as written (new 35 USC 102(a)(1), this is now enough to bar a patent on an actual integrator-disintegrator, unless we maintain that disclosure must be an enabled/enabling disclosure for the subject matter (prohibit the fantasy effect from preventing patent grants). It is not certain how to apply the law to a pure “offer for sale” without more, as the law itself, on its face, does not require more. That is, of course, if we do not migrate enablement reuqirements into the new law.

    Perhaps the congressional record already covers this…

  82. This was known well before passage of the bill in both the House and Senate. I know that I personally talked with my representatives about this and received a “thank you” prior to being elsewise ignored.

  83. Max, the benefit of publication Is that it knocks out prior art regardless of whether the claims are fully supported.

    Ned,

    So does an application.

    An application is prior art for what it contains, in addition to the priority function that it may deliver.

    Are you involved in answering Office Actions? Cited art is typically cited for what is written in the body of the applications and not for wht is written in the claims.

    It appears that your view of an application is too limited. Also, the law includes the entire provisional and not just as you put – that which forms the basis (note the “deemed as published”).

    There is no benefit from publishing that you do not already have from filing. Why does it appear that you are trying so hard to “save” the policy of disclosure? The plain truth is that you should not bother with publishing.

  84. Paul, if the drafters wanted to limit “on sale” to “public disclosures,” they would not have had to even put “on sale” into the statute because a public disclosure would have been covered either by “public use” or by “otherwise made available to the public.”

  85. Actually Malcolm, In rereading your post about the effect of a published provisional, I think you have to revise your remarks. A published patent or patent application is prior art as of the provisional filing date only to extent that at least one claim is supported in the provisional and further to the extent that the subject matter which forms the basis of the prior art is carried forward into the published application or published patent.

  86. Here’s a nice quote to make you all feel better:

    Wegner, The 2011 Patent Law [2nd edition]
    Foreword to the Second Edition:

    “Careless, Patent-Ignorant Draftsmanship

    In the period since the first edition of this book many questions have been received where the only answer is, ―I don‘t know! This is due to drafting ambiguities that permeate the statute and more and more are being seen the hallmark of this legislation. All too often the apparent intention of the legislature is countered by statutory wording that is inconsistent with that apparent intention. Indeed, much of this book is devoted to these ambiguities with the goal of providing information to patent experts to help them make their own assessments as to how the law will ultimately be interpreted.”

  87. It is interesting that we now have legal requirements that certain consumer contracts have to be written in “plain English.”
    Whomever drafted AIA 102 obviously did not, in view of the difficulty even some patent attorneys are having in figuring it out.

    Dennis, how about offering prize to whomever can redraft AIA 102 in the best “plain English”?

    I don’t mean those aspects of 102 which were simply left undefined. Such as how MUCH disclosure has to be in the prior pubic disclosure of an applicant relying on the new grace period in order for that grace-period-applicant to avoid intermediate-date prior art of others. As discussed two blog posts earlier

    But what about prior-date but secret commerial use or secret “on-sale” activities of the inventors, or of others, under the AIA? A properly written AIA 102(a)(1) would certainly require something less missleading than an apparent mere omnibus or “catch-all” tag end phrase of: “OR OTHERWISE available to the public before the effective filing date of the claimed invention.”] That ambiguity could have been so easily avoided with a extremely simple word change to render AIA 102(a)(1)in unabiguous English and proper, normal, legislative langage. Or, was this a creation of competing lobbyists who could not agree on overuling the long established case law [now left in limbo?] on secret commerial use of the inventors as an personal equitable estoppel and secret “on-sale” activities as a bar? Especially, by letting the AIA 102(a)(1) retain, unqualified, the same previous statutory bar terms “in public use” and “on sale”.
    [Not even to mention retaining the archaic term "printed publication" even though neither "printing" or distribution of plural copies has been required for years.]

  88. In contrast the new “prior publication” exception to prior art knocks out the prior art regardless of what is being claimed

    Isn’t this the “science fiction” debate? If I post a mere story about trans warp speed, transporters and food replicators, would subsequent actual applications (with enablement) be barred by the mere fact that something has been disclosed? Offer for sale: one used integrator-disintegrator – now what?

    Or do the old rules about enablement still apply to this broad disclosure paradigm?

  89. Froggy,

    Starting on the 26th, that small entity provisional filing will be $125.

    Forget about the micro fee – blowing through four applications will place that beyond the reach of almost everybody.

  90. Ned,

    I agree with MM.

    Your mention of “new matter” is covered in my original comment of 9:55. You have not made a case for publication, especially the application/publication combination you suggest at 1:58.

    Let me see if I ask differently I can understand th value you see.

    What additional value do you get if you publish the same day you file? I think it a fair assumption that since both are happening the same day, that there is no new matter between the two.

    Why bother publishing?

  91. Like MM, I don’t see what you get in the USA by publication that you don’t also get by filing a pro and allowing it to go in due course to PTO publication.

    Outside the USA, of course, early publication is much more potent, as a way to keep your development path clear of the patents of others, than is filing a pro at the USPTO. And that is the case even if you put that pro disclosure into a PCT, word for word, and see it through to publication as a WO that includes a valid priority declaration under Paris of the date of filing of your pro. It’s all about obviousness.

  92. New matter. Priority requires full section 112, paragraph 1 support. The presence of new matter may prevent that with respect to some or with respect all claims.

    Also true under the old rules. Nothing new here.

    In contrast the new “prior publication” exception to prior art knocks out the prior art regardless of what is being claimed .

    Published provisional applications are prior art against others as of their filing dates, for all they disclose. There is a timing issue, as the provisional may not be published at a time when it is “needed” to act against a competitor’s filing. The issues of secrecy (i.e., keeping the invention “hidden” until the publication date) versus a more immediate defense will still be weighed by many applicants (and many will come out in favor of secrecy).

  93. New matter. Priority requires full section 112, paragraph 1 support. The presence of new matter may prevent that with respect to some or with respect all claims. In contrast the new "prior publication" exception to prior art knocks out the prior art regardless of what is being claimed .

    Sent from iPhone

  94. The protections of publication are different from the protections of priority.

    Can you explain?

    I would think that once you file (obtain the protection of priority), then you are done. What protection can publication give you when you have crossed the finish line? If anything, publication tips your hand to your competition. If you think publication “covers you” – if you have missed some aspect in your provisional, then you still have to file again. And you are returned to the same point of choosing whethr to file another provisional or publish, with the same answer that filing provides complete protection (not to mention that isn’t better to simply make sure you don’t miss anything in your initial filing?).

    Publication puts you into a morass. File and be done with it all.

  95. I believe that the act is attempting to rectify the realities of the corporate world, i.e., parts of corporations do not function synergistically. Let us take the the 102b1A and 102b1B exceptions. The 102b(1)(A) applies to acts of the inventor. The 102(b)(1)(B) applies to acts by people other than the inventor. So let’s say the marketing guy can’t keep his mouth shut, because he wants to make that sale (if you have never been in this position you have never worked in house) and he goes and offers the invention for sale, the offer of which operates to disclose the invention, well if the inventor had failed to previously disclose the invention I think that you have a bar. If the inventor did previously discose the invention then you need to file within one year. The more interesting question for me is what happens with an actual sale of the invention. I would appear to me that in the corporate context one would want inventors to start disclosing their inventions publically should it be decided to sale the same embodied in a product were such sale to occur before the filing of a patent.

  96. When you see the next ones,
    you will surely see,
    it’s all about what’s simple.
    And that is how I be.

    A little bit of Quaker,
    to Shaker, yes a must.
    Just because it’s simple,
    doesn’t mean you erase Us!

    This should surely tell you,
    We all have flashes of Blue.
    Some are truly Genius,
    some solve problems too.

  97. Well Ned if you are correct… then maybe that is what the Machine needs …. more Money.. I would never file a PP ever, but if it meant more protection, then surely 110.00 would be Insurance well spent.

  98. You tell me if it makes any difference, Simple. I don’t know.

    I don’t yet know for sure that the Boston firm is wrong. Perhaps I misunderstood its Newsletter. Perhaps I misunderstood new 102.

  99. Mr Boundy, B is independent of A. Therefore, we already know that the likelihood that B discloses exactly the same as A is vanishingly small. The subject matter that B discloses is such as to overlap with what A already disclosed, but will surely be different. I had thought that much was so obvious as to be implicit in my scenario. So, your scenario is not “slightly different” from mine. It is in real life identical to mine. B’s disclosure cannot be anything else than “slightly different”. That’s what will always happen, unless there is derivation.

    Would you say that the USA now has all the negative features of FtF, but AIA has failed to capture the one advantage of FtF which trumps all of its diasadvantages? I allude to the EPC advantage of legal certainty.

    Who benefits from a low level of legal certainty, I wonder. Trolls perhaps.

  100. Fly, I was trying to keep things simple. I agree with you though, the fact that there is a world east of DC, that gets up earlier than they do in EST DC, does make things more complicated.

    Why this interest in the International Date Line, all of a sudden? In how many cases will it be decisive? One every 30 years perhaps.

  101. Alex, but we will file a provisional and publish on th same day. The protections of publication are different from the protections of priority. To not take full advantage of each makes one a fool and opens one to malpractice.

  102. Please reminder that what we will have is a First to “file” system instead of first to “disclose” system. Dont expect too much when u do anything other than first to file.
    Just similar to the patent practice in all other country, disclosure b4 filing patent is never suggested.

  103. Which is terrific if you’re a large firm, with finance, R&D, and marketing all commonly owned.

    But the bill takes away the flexibility today’s small firms and startups have to find these cross-firm alliances within today’s § 102(a) grace period.

  104. The authors of the bill didn’t think this through (along with most of the rest of the practical consequences).

    Suppose in Max’s hypothetical B does something slightly different than A.

    OK, A has a ‘grace period” — but only for what A disclosed. Typically, if it’s not a patent document, what A discloses by an offer for sale or public use is only one species.

    So now B’s disclosure is not a bar to A’s single species, but it’s enough to bar A from getting any worthwhile patent protection.

    The grace period left under this bill is totally worthless as a commercial matter.

  105. Except that 102(b)(2)(C) only applies to applications. So, it does broaden the common ownership/joint research exception and basically eliminates what we now call 102(e) prior art for commonly owned/joint research applications.

  106. OK … I’m trying to understand the following language, which is 35 USC 102(b)(2)(C):

    “the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.”

    Old 35 USC 103(c)(1) included the following language:
    “Subject matter developed by another person … shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.”

    Obviously, 35 USC 103(c)(1) only applied to 103 rejections. However, the new 35 USC 102(b)(2)(C) also applies to 102 rejections. Am I reading this correctly in that so long as the patent/publication hasn’t published (i.e., 102(a)(1)) at the time of filing and falls within 102(a)(2), which requires that the prior publication “names another inventor,” you can antedate a 102 rejection — assuming that the old 103(c) requirements are met: (i) common assignment and (ii) filing before the publication?

  107. In reviewing the exceptions of the new §102, and of the entire new §102 itself, one is struck by the inconsistent use of parallelism. Typically, when a law is written, language is chosen to be as parallel as possible in order to bring clarity and structure to the law. In the new §102, there is some parallelism, but in some aspects the absence of parallelism raises some serious questions as to not only what particular sections mean, but further, as to how the entire new §102 is to be interpreted.

    One quickly realizes two things about the exceptions in §102(b):
    1) The §102(b)(1)(B) and §102(b)(2)(B) sections have a high degree of parallelism.
    2) The two sections each are constrained to a specific section of §102(a).

    But §102(a) is where the parallelism starts to fall apart. §102(a) is broken into two sections. Each of the two sections deal with “disclosures,” with the §102(a)(2) section apparently dealing with disclosures by another inventor (“Other”), leaving at first blush the §102(a)(1) section to be dealing with a particular inventor (the inventor as person of the preamble of §102(a) – (“Person”)).

    What little parallelism between §102(a)(1) and §102(a)(2) exists is constrained to only fully patent and merely partially printed patent publications. Why? Why are other publications (than a patent application), public use, sale or otherwise available (whatever this omnibus term means) not mirrored in §102(a)(2)?

    Since the drafters do not explicitly indicate that §102(a)(1) is actually only directed to activities of Person (other than the faint indication from the partial parallelism and the hints from the exceptions), are we to understand that the limitations of extra-publication (publication of things other than patent applications), public use, sale, or “otherwise” encompass a ban on obtaining a patent by Person based on those activities by Other, or do these statutory limitations only pertain to activities by Person? Are these personal bans due to a strong statutory parallelism, or is the addition of §102(a)(2) merely partially redundant? Is the time factor missing in §102(b)(2) an indication that patent and patent application exceptions unlimited in time? What conclusions can be drawn from the fact that §102(b)(2)(C), dealing with the same ownership or obligation to assign to same ownership, is strictly constrained to §102(a)(2) – the section geared to Other, but that that §102(a) section merely contains a patent and patent application section, omitting parallels in other types of publications, public use, sale and “otherwise”? Are these much more numerous types of limitations not susceptible to co-ownership? Is this an oversight? The lack of parallelism here points to these items in §102(a)(1) being more a personal bar, but this clashes with the notion of public use or “otherwise” which involve the public at large and thus point to a bar for more than just for Person. Why is there no mirror of §102(b)(2)(C) in §102(b)(1)? And why again is the §102(b)(2) exception without any time limit?

    Given the limited nature of the starting point in §102(a)(2), that of Other, it would appear that the exception package of §102(b)(2) is completely geared to a non-derivative type of nature. Yet this directly clashes with those parts of the exception that follow a stronger parallel to the §102(b)(1) section, notably the oft discussed “obtained… directly or indirectly portions. On its face then, we are faced with a contradiction, if we are to apply the generally accepted notion that independent invention is immaterial. The exception in §102(b)(2) provide for derived subject matter but that very exception is constrained to the §102(a) section that mandates the naming of an Other inventor – the independent inventor. The exception, as written, cannot apply to the rule, as written. How can this defect be corrected?

    Why do we even care? Should we care? (well, besides the obvious point of caring, that is)

    I think we need to care, because at the same time that the exceptions exhibit a high degree of parallelism, they each are tightly constrained to either §102(a)(1) or §102(a)(2).

    There are also seeming clues as well in the inner parallelism, or lack thereof within each of the two exception sections.

    Is it reading too much from the structure to notice that §102(b)(2), constrained to §102(a)(2) and dealing with Other has each subsection starting with “the subject matter disclosed,” while §102(b)(1), constrained to §102(a)(1) has two different opening structures to its subparts? One of which mirrors the Other style, and the other subpart focusing not on the subject matter but on the disclosure itself. Does this mean that the focus is not on the subject matter, but rather on the actions? Whose actions? To what level are these actions captured by the exception? Does a mere action even remotely related to the “subsection-silent subject matter” indicate a very permissive allowance of the exception?

    I really don’t know the answers to these questions, and the more I look at the entire §102, the more incomplete the law seems.

  108. Thank you for providing this consolidated text, Professor. As I wrote to you on Facebook, I am hoping to see a redlined (with AIA)consolidated text soon – this is a good start!

  109. Under EP law, no, but I know that that wasn’t the question.

    The location could make a difference, though.

    The paper in Hong-Kong is dated 2 January AM, but could be read online in the US on 1 January.

    The application’s filing date is 2 January.

    Is the HK publication prior art or not?

    Did anyone anywhere ever tried to make a case using the International Date Line?

  110. B’s disclosure seems to fall squarely within the exception of 102(b)(1)(B):

    1) “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—…” B made a disclosure 1 year or less before the effective filing date.

    2) “B. the subject matter disclosed had, before such disclosure [i.e. B's disclosure], been publicly disclosed by the inventor … ” In this scenario, A is the inventor (or at least an inventor) and A disclosed before B.

    The exception applies. What am I missing?

    There must be something more to the so-called misapprehension. I do not see where “disclosure” is explicitly defined in the act. Thus, it is not expressly clear whether “disclosure” is broader than, narrower than, or coextensive with “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” in 102(a)(1). In the hypothetical, B’s disclosure clearly falls within the types of disclosure found in 102(a)(1), but the nature of A’s “disclosure” is not described.

    I am assuming that any act described in 102(a)(1) is indisputably a “disclosure” under 102(b)(2)(B) [although I'd be fascinated to see arguments to the contrary], so in order to be worried about whether B’s disclosure will be prior art, it seems that one would have to believe that there are other non-102(a)(1)-type disclosures that should trigger the exception under 102(b)(2)(B) and that there is an ambiguity about whether they do.

  111. Thanks,

    What is this reputable Boston firm that so clearly does not understand that we have passed a First to Publish regime?

    Curious too, as to why you add the disclosure happens in a Hong Kong newspaper. Does it make a difference if it is in a Hong Kong newspaper or a US technical journal?

  112. OK, here goes:

    A discloses. Shortly afterwards, B discloses. Then C discloses. finally, A files, within a year of A’s disclosure. The B disclosure owes nothing to A. The C disclosure is derived from A and so does not prejudice A’s validity.

    That independent B disclosure which owes nothing to A. It happens in (say) a Hong Kong newspaper, in English. Does it prejudice the validity of A’s later filing. The misapprehension is that it does.

  113. It appears to me to suffer from the same misapprehension of the plain meaning of 102(b)(1)(B)

    In your view, what is this misapprehension?

  114. I have just read a Newsletter from a prominent Boston patent law firm which comments on the new 102 above. It appears to me to suffer from the same misapprehension of the plain meaning of 102(b)(1)(B) as we have seen in earlier threads on this blog. How can this be, that two schools of thought are both convinced that they are indisputably correct? Is the new 102 incurably and hopelessly ambiguous? Where’s the sense of Congress on this?

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