Guest Post — Defining Prior Art under the Leahy-Smith AIA

by Howard Skaist and Ted Karr

35 USC 102 is the statutory section that, in effect, legally defines 'prior art.' 'Prior art' is, of course, a key consideration affecting whether to file for a patent, whether a patent will ultimately be secured, and whether, if issued, the patent will be legally enforceable. Furthermore, if patent protection is ultimately sought, 'prior art' will affect how best to draft the patent claims so that all of these are more likely to be accomplished successfully.

Understanding the ins and outs of what constitutes 'prior art 'is largely the domain of the patent attorney. One might expect this term to have a common sense understanding; the reality is that it is far from common sense.

Changes that the Leahy Smith Act makes to what is considered 'prior art' will have far reaching implications. With this in mind, the following is intended as a short list of changes so that the patent practitioner is alerted to potential impact(s) on his or her practice.

Rather than totally rewrite section 102, Congress has retained some features that are well-understood under current law.

  • "Invention" has been changed to "claimed invention," now defined in section 100. The new statute also refers to "the effective filing date" of the claimed invention, now defined in section 100. Also, "inventor" and "joint inventor" are now defined terms in section 100.
  • The "claimed invention" is not novel if "patented," "described in a printed publication," "in public use," or "on sale." Therefore, for these events there is no grace period under the new statute – current law has a one year grace period.
  • "On sale" and "in public use" activities are no longer limited to the United States – current law requires these events to be "in this country."
  • If the claimed invention was "otherwise available to the public" before its effective filing date, it is not novel. However, "disclosures made one year or less before the effective filing date" appear to be intended as an exception. In summary, if one of these disclosures is made by an inventor or joint inventor or "another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"(called "another" below), the disclosure will not be considered 'prior art.' Also, the disclosure will not be considered 'prior art,' if before it, the subject matter was publicly disclosed by an inventor, joint inventor, or "another."
  • Section 102(e) type prior art is now codified as section 102(a)(2), but with different language – for example, "by another" has been changed to "names another inventor." A new subsection (d) defines the date at which "subject matter described" becomes 'prior art.' An exception, however, is referred to as "disclosures appearing in applications and patents." In summary, if the subject matter of one of these disclosures was obtained directly or indirectly from an inventor or joint inventor, then it will not be considered to be 'prior art.' Also, the disclosure will not be considered 'prior art,' if before the effective filing date of the patent or application, the subject matter was publicly disclosed by an inventor, joint inventor, or "another." Finally, if the subject matter disclosed and the claimed invention are owned by the same person (or subject to an obligation to assign to the same person), then the disclosure will not be considered 'prior art.'
  • Current subsections (c), (d), and (g) no longer exist. Subsection (g) is what, in effect, made the United States a first to invent system. Therefore, removing it makes the United States, in effect, a first to file system.
  • The bill is yet to be signed. However, the changes to section 102 (and section 100) go into effect 18 months after enactment, which would be the date the President signs the bill.

Howard Skaist is the founder of Berkeley Law & Technology Group, LLP (BLTG), an intellectual property law firm based in Oregon and, before that, he was the Director of Patents for Intel Corp. Ted Karr P.C. is a BLTG partner and Ted was responsible for patent licensing at Intel Corp. before joining BLTG.

156 thoughts on “Guest Post — Defining Prior Art under the Leahy-Smith AIA

  1. Howard and Ted,
    thanks for the great outline. It will surely come in handy for anyone knee deep in prosecution like myself, but more importantly I will be sharing your posts with those law students studying patent law. This post will surely bridge the gap for those preparing for the patent bar. thanks!

  2. Max,

    Anon and I have been discussing 102(b)(1)(B). Your scenario better applies to 102(b)(2)(B). The same principle applies to both, it’s just that (b)(1)(B) covers disclosing prior to other disclosures and (b)(2)(B) covers disclosing prior to other patent filings.

  3. anon,

    The whole statutory language is:

    “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.”

    Now, to properly analyze the meaning, we need to break this up into three pieces:

    First: “the subject matter disclosed”
    – This means the “invention” or “widget” ostensibly disclosed in the cited reference and the application it was cited against.

    Second: “had, before such disclosure,”
    – This means whatever requirement comed next must have happened BEFORE the disclosure contained in the cited reference . . .

    Third: “been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
    – This is the description of what must happen BEFORE the disclosure in the cited reference.

    Putting it all together:

    1. The cited reference can be a public disclosure by anyone. Whether it came from, or was derived from, the named invetor(s) on the application is irrelevant. In fact, if the source of the cited reference was required to be the named inventors, then (b)(1)(B) would be entirely redundant with (b)(1)(A).

    2. Regardless of its source, the reference will NOT be prior art if . . .

    3. A public disclosure by, or derived from, the named inventors was made BEFORE the cited reference.

    Now, obviously, that antedating public disclosure described in 3. would need to be made less than one year prior to the effective filing date or it would would not satisfy (b)(1)(A) and therefore become prior art.

  4. we are discussing the actions of people who have not derived information about the invention from one another, directly or indirectly.

    I think my articulations have been more than adequate.

    Please show me hw the 102(b)(1)(B) exception applies to those who do note derive when the exeption itself requires that the subject matter be directly or indirectly obtained from one inventor by the other inventor.

    Talk about inarticulate, you want to have a situation that is flatly contradictory to the exception you want to apply.

    Explain how you can have independent invention and yet meet the exception requirement that the subject matter be directly or indirectly obtained from one inventor by the other inventor. Please do so. And be articulate about it.

  5. sockie the hysterical sockpuppet

    The accusations and misdirections are coming from you. I am calmly and explicitly relying on the actual words of the law.

    The Shilling introduces a neutral, third party authority (and one who job it is to understand the law and write the rules from that law), and all you have for a comeback is attacks and degrading comments.

    You even throw in more of the typial Malcolm _xx_.

    Is it that difficult for you to have a mature conversation? Are you that insecure that you feel the need to be such an ass?

  6. MaxDrei,

    Does it bother you that neither Ned nor Malcolm have addressed the explicit distinction between derivation and independent invention (the “obtained… directly or indirectly” phrase of 102(b)(1)(B)? Ned keeps saying that he has constued the term, but cannot explain where or what it means, and Malcolm keeps handwaiving it away entirely and proposing hypotheticals that make up new language or do not touch on the issue that you are seeking clarification of?

    Lots of the typical handwaiving, accusations and misdirections, but a plain and simple accounting of that particular phrase is avoided time and again.

    The point of the matter is that your post at 08:56 AM is correct wherein you carefully (and importantly) establish that Bob and Doug are independent inventors of X and both Bob and Doug cannot obtain patent rights.

    102(b)(1)(B) only provides a saving grace period when the two inventions are “obtained… directly or indirectly” from one inventor in realtion to the other.

    If as you (importantly) establish that this “obtained… directly or indirectly” does not apply – as it would not apply in a case of independent invention – then the grace period of 102(b)(1)(B) does not apply.

    102(b)(1)(B) only applies according to its clear and unmistakeable language when the subject matter is obtained directly or indirectly between the two inventors. Independent invention destroys this nexus. Yet Ned and Malcolm refuse to even discuss this point.

    Indeed, the AIA did not invoke a first to publish patent system. Publication is simply not a universal antidote to the race to the patent office. Yes – there is still a grace period – but that grace period is only for that subject matter that is obtained directly or indirectly.

    This really is not that difficult.

  7. The grace period does not apply to someone’s actions when theat someone is an independent inventor.

    Again, you are an inarticulate buffoon. Learn how to articulate and describe fact patterns clearly. Until then, you must be ignored.

    You keep on trying to handwaive away derivation

    Derivation is not relevant to the fact pattern we are discussing. As you framed the issue (this has been pointed out to you at least twice), we are discussing the actions of people who have not derived information about the invention from one another, directly or indirectly.

    If you wish to discuss another fact pattern, please describe it clearly. Otherwise, xxxxx off.

  8. Except that you have not touched on the actual issue that we are discussing.

    You are a psychotic lxar or simply an ignorant arrogant axxhole. We’re talking about independent inventors, per your own framing of the issue, as I’ve already pointed out to you. Twice.

    If you have a question about a particular fact pattern, then present the fact pattern unambiguously and I’ll analyze it for you. Otherwise, go xxck yourself until you learn how to articulate your way out of a paper bag, at least.

  9. MM: we could then categorize the new system as “First to Publish”. The raison d’etre of any patent system is to get enabling disclosures published as early as possible. I’m told that individual inventors and academics make the best inventions, not companies. Academics must “publish or die”. Individual inventors must publish to get funded. Why then do you think all that is inferior to the EPC model because, in these respects, it strikes me as superior.

  10. intervening filing

    False. The grace period does not apply to someone’s actions when theat someone is an independent inventor.

    You keep on trying to handwaive away derivation and you cannot. Publication is not a universal antidote to the race to the patent office.

  11. 102(b)(1)(B) covers the following fact pattern:

    Bob publishes X
    Doug independently publishes X

    Except that you have not touched on the actual issue that we are discussing. Complete miss.

    I notice that you spun your instant hypothetical to leave out the critical facet of whether or not Doug independetly invents the invention of Bob’s. It is a false premise of yours to insert “independently publishes.” Where are you getting this verbiage? You have conflated the “directly or indirectly” with “publish” [sic – you probably mean disclose] and the plain and clear reading provides that “directly or indirectly” describes “obtained,” and not “diclose.” This has been clearly pointed out to you.

    You then assume the very point that you need to establish – that the grace period applies to someone that neither directly, nor indirectly obtained the invention from the first invention.

    102(b)91)(B) simply does not say that the grace period innures against ALL who come after a first inventor’s disclosure.

    Why are you kicking up such dust?

  12. sockie the extremeley desperate and pathetic sockpuppet: In essence, you have only a start of a thought and have not yet broached the issue.

    Once again, NAL: please take the pills that were prescribed to you.

  13. Ned,

    It does not.

    You do not make a case of whether or not the widget, the common subject matter that they both invented, was derived (directly or indirectly) or not and how this distinction (independent invention, or not) affects the applicability of the grace period afforded by the new 102(b)(1)(B).

    In essence, you have only a start of a thought and have not yet broached the issue.

    Can you complete the thought you merely started and address this issue in some definitive manner?

    Here. Now.

  14. I agree with Ned, MaxDrei. I also think this is a “quirk” in the US system that renders it inferior to the EP system. As a matter of principle, I also do not “understand how either could acquire valid patent rights.” But it’s clearly allowed by the new US law.

  15. As noted by Ned, if Bob files within a year of Bob’s publication, he’s protected both from his own publication and Doug’s intervening filing on the same subject matter.

    I apologize for any confusion caused by my earlier comment where I neglected to point this fact out.

    [see how easy it is to apologize, sockie?]

  16. Sockie the Hysterical Sockpuppet:

    I am afraid that many agree with me. Including, it appears, Bob Stoll.

    The argument from authority! A classic fallacy, and a long-time favorite of the cheetoh-munchers. We wisely choose to ignore.

    The words of 102(b)(1)(B) only pertain to a personal grace period that protects only the inventor from those who directly or indirectly derive from that inventor.

    That’s 102(b)(1)(A), dxpshxt. 102(b)(1)(B) covers the following fact pattern:

    Bob publishes X
    Doug independently publishes X
    Bob files on X within one year

    In other words, Doug’s publication is not novelty destroying because it occurred less than one year before Bob’s filing date and

    “(B) the subject matter disclosed had, before such
    disclosure, been publicly disclosed by the inventor”

    “the subject matter disclosed by Doug had, before Doug’s disclosure, been publicly disclosed by Bob.”

    Pretty straightforward.

  17. Widget is the subject matter.  It is invented by two inventors.  One publishes first.  The other files first.  The publisher can be the inventor, or his coinventor, or someone who derived the widget from the inventor.

    The publisher and the filer are two different people.  Not one.  

    The widget is the common subject matter they both invented.

    Hope this helps.

  18. sockie the hysterical sockpuppet The issue to be addressed is whether or not 102(b)(1)(B) provides an effective grace period. It does not. The only grace it provides is for protection against others who derive from the first inventor.

    False.

    And please stop it with this “first inventor” bizness, which only confuses things. Absent derivation (which is not what we’re discussing here), it no longer matters who the “first inventor” is under the new system. What matters for independent inventors is the timing of publication and filing.

    If Doug (independent) files on X after Bob’s publication of X but before Bob files on X, then Bob is screwed.

    [Again, I have fixed your statement, sockie, because it contained irrelevant, confusing language].

    Bob publishes X but stxpxdly does not file a provisional application or any other application on X.
    Doug files on X.
    Bob files on X

    As Ned notes, assuming that Bob files within a year of Bob’s publication, Bob is not “screwed.” Bob is protected by 102(b)(2)(b). 102(b)(2)(b) is an exception to the rule that disclosures appearing in patent applications (i.e., Doug’s application) are prior art. 102(b)(2)(b) states that such disclosures are not prior art IF “the subject matter disclosed had, before such subject
    matter was effectively filed under subsection (a)(2) [i.e., before Doug’s filing date], been publicly disclosed by the inventor.

    The facts in our hypo show that Bob did publicly disclose the invention before Doug’s filing, so Doug’s filing is not prior art to Bob.

    The inability to pursue the proof that a second inventor “did not derive – either directly or indirectly” was wrongfully dismissed out of hand by Malcolm. He seeks to summarily dismiss the crux of the matter

    No, axxhole. I’m addressing the crux of the matter as framed by you: “the 102(b)(1)(B) provision is not effective to supply a grace period against independent invention.” Derivation is not relevant to the fact pattern. Please try harder. I know it’s difficult for you and you are embarassed occasionally; hence the sockpuppetry. Please try harder.

  19. Ned,

    We will have to agree to disagree, as I cannot find anywhere where you have actually discussed the issue of a second independent inventor in relation to the phrase of “obtained… directly or indirectly” in the new 102(b)(1)(B).

    I see where you have said that you have contrued the phrase. I see where you say that you agree with others on how they view the section, but you have not actually stated how independent invention, which is separate from “obtained… directly or indirectly” is somehow captured by that phrase.

    Can you explain this again for me, clearly, so that we can put this to rest? How is independent invention captured in the phrase “obtained… directly or indirectly“? If indeed independent invention is not captured, then 102(b)(1)(B) cannot offer any grace period to a first inventor, protecting that inventor from a second independent inventor.

    Please do explain. Here. Now.

  20. anon, despite what you say about my not having construed the passage you talk about, I, in fact, have done that numbers of times.  It is just that you do not agree with me.  There is a difference.

    As to Stoll, given the fact that you do not understand the issue, I would also suspect that you do not understand Stoll correctly.

    Ask him to come here and post a blog post so that we can see his views.

  21. Ned,

    I am afraid that many agree with me. Including, it appears, Bob Stoll.

    You do know who Bob Stoll is, do you not?

    As for “nonsensical,” I recall that you still have not construed the particular phrase of 102(b)(1)(B) that I asked you to. Your offering seems to make that phrase just disappear. You seem to never make a clear statement on the fact pattern of independent invention (given most recently above by The Shilling at 5:07 PM. It almost appears that you agree, but then you waffle in the same post (and looking glass calls you out on this). Yet, you have never made an unequivocal statement on the condition of the grace period in connection with independent invention and how 102(b)(1)(B) just does not apply to that condition.

    I hope that you are not relying on the quorum-less speech by Senator Kyl, are you? First, you don’t even get there, because the words are indeed plain and clear – but they just don’t mean what you think they mean. The words of 102(b)(1)(B) only pertain to a personal grace period that protects only the inventor from those who directly or indirectly derive from that inventor. You have not explained how the words – plain and clear – cover independent invention.

    I have calmly explained how independent invention is not covered by the clear and plain words. Please explain yourself and stop the name calling – “nonsensical?” – that is simply not warranted.

  22. if the certified translation raised some questions, then of course the applicant should invest in the translation himself.

    Doesn’t the applicant already pay for the examination?

  23. Let’s please revert to the story of Bob and Doug, both being independent inventors of X, that is, with neither inventor deriving anything from the other.

    Chronology: Bob publishes, then Doug files, then Bob files (all within a year). Later, both of Bob and Doug’s filings are independently published by the USPTO.

    I suppose that Doug’s PTO filing is knocked out by Bob’s independent earlier publication. I suppose that Bob’s filing is knocked out by Doug’s earlier independent PTO filing, as evidenced by its later PTO publication. I do not understand how either could acquire valid patent rights.

    Conversely, it it were the case that Doug derived X from Bob, could Bob take into his own ownership all rights in Doug’s earlier PTO filing date? He could at the EPO, as soon as he could prove it.

  24. Ned,

    Malcolm’s “contention” is a diversion.

    The issue to be addressed is whether or not 102(b)(1)(B) provides an effective grace period.

    It does not.

    The only grace it provides is for protection against others who derive from the first inventor.

    If a second inventor (independent) files after the first inventor’s publication and before the first inventor files, the first inventor is screwed.

    Malcolm does not seem to get the point (the serious fault) that this scenario all but shuts done the ability to publish first – the risk of instigating an “independent” filing is too great. Any such independent filing ruins the ability of the first inventor to actually obtain a patent. In essence, the first inventor’s publication is a public abandonment. This de facto abandonment is great for those who do not like patents to begin with, but this is horrible for those who publish early in the mistaken belief that they are clearing the field for their own patent rights.

    To be clear: publication is a very risky move now.

    The inability to pursue the proof that a second inventor “did not derive – either directly or indirectly” was wrongfully dismissed out of hand by Malcolm. He seeks to summarily dismiss the crux of the matter, and indicates that the first inventor is merely foolish for publishing wihtout also filing. This indicates that he does not understand what the grace period actually means. Nor does he understand the risk that he exposes his “clients” to.

    Your final comment is a non sequitur – no one has ever indicated that the time frame under discussion was more than a year. Please do not kick up more dust.

  25. Looking glass, I was quoting Malcolm Mooney on his contention that Bob would not get a patent. I then provided a “correction” that relied to some extent on additional facts. Malcolm agreed with the” correction.” So at least now, Malcolm and I are on the same page.

    Just to make it clear, my point to Malcolm was this: if Bob’s public disclosure was within a year, Bob gets the patent. I did not contend EVER that Bob would not get the patent if is public disclosure was within a year. However, if is public disclosure was more than a year prior to his filing date, both he and Doug would not get the patent.

  26. Max, thanks.

    Regarding the certified translation filed by the applicant, I think the case law should develop that it should control what is prior art so that if the certified translation does not support the priority claim, the patent or application as the case may be, would not be prior art as of the foreign priority date.  In other words, the applicant facing rejection over such a form priority claim could rely if he so chose on the certified translation to support his case.  The patent office would also have to rely on the certified translation.  For that reason, the certified translation would control in the normal case.

    All that being said, if the matter were important enough, and if the certified translation raised some
    questions, then of course the applicant should invest in the translation himself.

  27. Ned, which is it? You seem to be saying contradictory things:

    Result: neither Doug nor Bob gets a patent

    and

    but Bob can still obtain a patent

    W

    T

    F

  28. OK Ned. The other way around it is then.

    In examination of apps at the EPO, when a WO or an EP-A is used as the basis of a novelty or obviousness attack, how often is the Japanese priority date declared in that WO or EP-A of significance to the question whether that WO or EP-A is good prior art?

    Not often.

    But I see your point now. In the EPO, the Examiner would argue that, prima facie, what is in the WO or EP-A IS entitled to the JP priority date (you know, Paris, “same invention” etc). Then the burden of rebuttal falls on the Applicant. I suppose that, in the USPTO, the Examiner just can’t legitimately do that. If that is so then, of course, it comes to a verified translation of each and every CN KR or JP priority document filed at the USPTO. Over the top, perhaps?

    Meanwhile, are you quite sure those translations will all be accurate? How much trust do you place in such translations? Who’s paying for them? Think about it.

    The EPO is moving to Google, and machines, to do its translation work.

  29. Doug is knocked out by the prior publication of X by Bob, but Bob can still obtain a patent.

    Correct. I see the serious fault now. Why should Bob be granted a patent if, say, Doug independently invents and files a patent on X the day after Bob publishes X but 364 days before Bob actually files a patent? That’s a crime against the public.

  30. MM,

    Do you really not understand what the issue is regarding the grace period?

    Do you understand what the grace period was?

  31. MM: “Bob publishes X but stxpxdly does not file a provisional application or any other application on X.
    Doug files on X.
    Bob files on X
    Result: neither Doug nor Bob gets a patent.

    If within a year, the Bob’s own X publication is not prior art to Bob himself. Doug is knocked out by the prior publication of X by Bob, but Bob can still obtain a patent.

  32. I spoke directly with Bob Stoll who personally told me that the 102(b)(1)(B) provision is not effective to supply a grace period against independent invention.

    So Bob Stoll is smoking the same crack as you?

    That’s nice.

    If someone else invents and publishes after a first inventor publishes, but before that first inventor files, the first inventor is barred from obtaining a patent.

    Let’s try to be clear, shall we? First, let’s recognize that in the context of this discussion there is no point in referring to “first” and “second” inventors. As you note, we’re talking about independent inventors. All that matters under the new statute is (1) when they publish and (2) when they file (assuming both choose to do so). So let’s call our two independent inventors Bob and Doug. Here’s our time line (further down is later in time).

    Bob publishes X but stxpxdly does not file a provisional application or any other application on X.
    Doug files on X.
    Bob files on X.

    Result: neither Doug nor Bob gets a patent.

    I don’t see a “serious fault” with this result. Bob was stxpxd. Not only did he scrxw his foreign rights by waiting to file but also his US rights.

    trying to prove derivation is not supported

    You’re just rambling now. The facts show that you were unable to step up, Shillywilly. You couldn’t articulate the “serious fault” with the statute. Maybe it’s time for you to go cry on Bob Stoll’s shoulder now. Say hello for me.

  33. Proof of entitlement to priority is not the issue.  The FACT that the patent will be prior art as of its foreign priority date is the entire reason for the insistence.  The patentee will benefit from that.   This is NOT an issue of the benefit of priority.  Not at all.  It is a matter of the benefit of the filing date for prior art purposes.

  34. How is this for a step-up: I spoke directly with Bob Stoll who personally told me that the 102(b)(1)(B) provision is not effective to supply a grace period against independent invention.

    If someone else invents and publishes after a first inventor publishes, but before that first inventor files, the first inventor is barred from obtaining a patent.

    If you do not think this is a serious fault, given that trying to prove derivation is not supported, then you have some serious issues (other than the obvious ones).

    So bite me.

  35. What’s the matter, Shill? Do you know the “serious fault” with 102(b)(1)(B)?

    If so, let’s hear it. C’mon, Shill. Instead of your usual namecalling, step up and do the sockpuppet a solid.

    Surprise us.

  36. Ned, these “some” of yours; are they the same as those here who lambast various sovereign States of Europe for having the temerity to insist that patents covering their jurisdiction should actually issue in their own language?

    Have you any idea how rare it is at the EPO, for the Examiner to call for an English translation of a Japanese priority document, to check entitlement to priority? My guess: one in 250 examinations.

  37. Jim,

    1) regarding common ownership, it appears that so long as the subject matter is not prior art by public use, etc., but only because it appears in a patent or patent application, the owner can file as many patent applications on the same invention or close variants as he or she wants without any of them providing self collision. But 101 should still bar issuing two or more patents on the exact same invention.

    Obviously, this practice will be quite beneficial to chemical inventions that need to file a series of applications as new examples and data are discovered.

    Even so, since the patents will not be “prior art” as of their filing dates to common owners, there appears to be no basis for a 103 double patenting rejection.

    2) Regarding foreign priority dates: yes, a US patent (or published application), finding support for a claimed invention in a foreign priority applicaton, will be prior art as of its date for subject matter carried forth into the patent.

    Some of here here, recognizing this new fact of life, have called for making mandatory the filing of a certified translation of the priority application if the applicant wants to obtain the benefit of such a foreign priority date application not filed in English.

  38. I have a question about the combination of new secs. 102(a)(2) and (d)(2). I read these as establishing a non-US priority application as prior art for both novelty and obviousness as of its filing date. This seems broader than in most other jurisdictions. EPC, for example, only gives effect to a filing date for novelty purposes to avoid granting two patents for the same invention. Are others reading these sections the same way? A related question is about the exception for commonly owned inventions – as the law is drafted it seems to permit a company to obtain multiple patents for the same invention. Is Congress relying on the courts and PTO to apply decisional double patenting principles?

  39. Sockie the Sockwhiner : Your clarity totally misses the issue that the 102(b)(1)(B) exception that is meant to stir people to publish has a serious fault with it.

    LOL. Another English-as-second-language poseur who bristles at the notion that his/her writing is clear as mud.

    Do your best to articulate the “serious fault” with 102(b)(1)(B). Hint: take your time and maybe ask a friend to proofread your comment before posting it.

  40. [and who] makes the first disclosure…

    Can you be any more boring? Do you really need to type something just to type?

    Your clarity totally misses the issue that the 102(b)(1)(B) exception that is meant to stir people to publish has a serious fault with it.

    Why don’t you just posit a situation that inventor one files a patent application and inventor two later files an application on the same invention, but is denied because inventor one filed first?

  41. AP an independent obtainer of the subject matter who does not obtain the subject matter [directly or indirectly] from the first inventor [and who] makes the first disclosure prior to the actual filing of the first inventor DESTROYS the ability of that first inventor to obtain a patent,

    Of course this is true (I edited it to make it clearer). A major purpose of the Reform bill was to move the US to a first-to-file system, albeit one with a grace period (1 year) for inventors who publish their invention before filing.

  42. “The point is that when this condition happens, the excpetion of (b)(1)(B) is inapplicable.

    Ned – agree or disagree and why.”

    This is what? the fifth time this explicit question has been asked of you Ned and you have yet to supply a simple answer. Are you having trouble understanding what “inapplicable” means?

    “Keep in mind that ‘directly or indirectly’ pertains to ‘obtained’ and NOT ‘disclosed.’ ”

    This negates your lead in statement of “Sure, the subject matter “publicly disclosed” has to be obtained from the inventor.” because that statement is simply not what the exception discusses when it is using the phrase “obtained… directly or indirectly.” It is a given that the inventor’s disclosure is obtained from the inventor.

    You are completely ignoring the point that the (b)(1)(B) exception does not apply in the situation that the second discloser independently obtained the subject matter.

    Independent is outside of “directly or indirectly obtained from” because independent means not obtained at all from (NEITHER directly NOR indirectly). Thus if independent, the first disclosure (per your post at 3:24 pm) fails the nexus with the second disclosure and CAN serve the patent defeating purpose of an examiner or a defendant.

    Take your time. Diagram this if you must. Just don’t lose track of the premise of an independent obtainer of the subject matter who does not obtain the subject matter from the second disclosure (of the first inventor) but who nonetheless makes the first disclosure prior to the actual filing of the first inventor DESTROYS the ability of that first inventor to obtain a patent, since the grace period exception simply does not cover independent invention. The fundamental question to be answered first is “When does the exception of 102(b)(1)(B) apply and when does it not apply?” The simple answer to this fundamental question is that when a second independent inventor discloses prior to the filing of a first independent inventor, any disclosures of that first indpendent inventor – in relation to the disclosures of the second independent inventor – CANNOT use the benefit of the exception. Independent invention is the DESTROYER of the grace period. Senator Kyl’s non-quorum speech is exactly opposite of what the law – as written – says.

    The only question is why are you not understanding when and when not the exception of 102(b)(1)(B) is applicable. Answer the fundamental question first, then answer the question that has been put to you so many times.

  43. Sure, the subject matter "publicly disclosed"  has to be obtained from the inventor.

    We have no disagreement on this point.

    What I am trying to say is that there are two disclosures in the clause.  A first disclosure and a second disclosure.  The first disclosure is a reference being used by the examiner or by a defendant in court.  The second disclosure is a "public disclosure" by the inventor himself.  This "public disclosure" must be prior to the date of the second disclosure.

    I hope we can agree in this much.  The only question is whether the people disclosing the subject matter in the first disclosure have to be the same people disclosing the subject matter in the second disclosure.  The statute is very specific
    on who has to be the "public discloser."  In contrast, it says nothing at all about who has to be the first  discloser.  Not being nonspecific as to who that is, it could be anybody.

  44. The point is that when this condition happens, the excpetion of (b)(1)(B) is inapplicable.

    Ned – agree or disagree and why.

    Keep in mind that “directly or indirectly” pertains to “obtained” and NOT “disclosed.”

  45. anon, I think I did construe it.  I believe the term refers to the subject matter disclosed by the inventor or joint inventor or by someone who learned of that subject matter from the inventor.  It does not refer, I have tried to make this clear, to the same subject matter disclosed at a different date by potentially someone completely unrelated to the inventor.  this latter subject matter is the subject matter being used as a reference, but as of that different date.  There is no requirement in the statute that I can see that the disclosure of the subject matter at the different date has to be by the inventor, etc. it can be by anybody.

    Subject matter  = widget

    First disclosure mentioned = by
    anybody

    Second disclosure mentioned = by the inventor, etc.

    I hope this clarifies what I think is the proper construction of the statute. 

  46. and i am shocked to see this at the very end of kyl’s speech

    Mr. President, I note the absence of a quorum

    alas, what he said does not matter and is of no accord

  47. found it! – it is senator kyl’s speach.

    it is indeed a vebatim quote – but that quote does not reflect the actual words of the statute, but as he says in his introduction they are only his views.

    he seems very out of touch.

  48. scoured thomas.gov for all congressional records pertaining to the senate on september 6. there is no such quote that i could find. the only thing on september 6 was the cloture motion. perhaps somewhen else?

    i do find lots of ramblings from sneators who say conflciting things. is the quote you reference one of these?

    i do find senators hatch and boxer protests and statements that the bill in fact does not protect the grace period.

    can you provide a link judith?

  49. Ned, just do the simple thing – construe the term.

    Where is the term in your explanation? You have not shown what that term means – it’s as if it has disappeared.

    If you can show me the term in your explanation and why you think it means what you say it means, I may understand why you are thinking what you are thinking. As it is, I am merely left with thinking that you are ignoring a critical term because you don’t know what to do with it.

  50. Anon, I think this is where we do not agree and where I agree with Hover.  The derivation from the inventor is with respect to the prior "public disclosure" of the Widget.  If the inventor — or a person who obtained or derived the Widget from the inventor — "publicly disclosed" the Widget before the later disclosure of the Widget by anyone, then the later disclosure of the Widget by anyone is not prior art.

  51. Ned,

    In relation to what seems to be the pivotal point of “obtained… directly or indirectly,” you say:

    What this means is that the Widget “had” been publicly disclosed by the inventor” prior to the “disclosure” of the Widget forming the basis of the rejection.

    But you do not address if the independent inventor obtains the Widget NEITHER directly nor indirectly, but through independent means. The point is that when this condition happens, the excpetion of (b)(1)(B) is inapplicable. As I asked at 3:53 PM, how are you construing this critical term? It is not in your explanation.

  52. Anon, my read:

    “(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.”

    “The subject matter disclosed” means the subject matter that is used as a reference to the claimed invention. In the case we are discussing, this is the Widget. I will use Widget hereinafter in place of “the subject matter disclosed.”

    “The Widget had, before such disclosure…” means “before” the “disclosure” of the Widget that is forming the basis of the rejection. There is no limit in the clause as to whom is doing the disclosing, where disclosure is taking place, or how disclosure is done. It simply requires that the Widget be “disclosed” and that something has occurred “before such disclosure.”

    The “what” that has occurred before the “disclosure” of the Widget forming the basis of the rejection is the following:

    The Widget has “…been publicly disclosed by the inventor 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.” What this means is that the Widget “had” been publicly disclosed by the inventor” prior to the “disclosure” of the Widget forming the basis of the rejection.

    To wrap up, if the reference is the disclosure of a Widget on January 1, to “remove” that reference, the inventor himself, or one obtaining from the inventor, must have “publicly disclosed” the Widget prior to January 1.

  53. I regret now, anon, that I used the word “convince”. You are quite right, that it was a poor choice of word.

    Of course everybody on the US playing field must play by US rules. That much is trite. That is not my point. I’m sorry you didn’t get it.

    The point is whether you get, in the USA, the same patent defeating effect, as Ned helpfully dubs it, regardless whether you file your Paris Convention priority document in German at the EPO, or in English at the USPTO.

    If it helps, think of it the other way round. What if FtF Europe were to give a European patent defeating effect to its own domestic filings but were to deny any such European patent defeating effect to American Applicants at the EPO who are asserting under the Paris Convention a USPTO priority filing date. In other words, Europe would be saying to America “Heads I win the FtF race, tails you lose the FtF race”. Would that be in accordance with Paris? Not the way I read it.

  54. Above, Ned commented on my statutory reading thus:

    anon, I can see your reading of the statute, but I really don’t think the courts will, in the end, read it that way. I think Hover’s reading, which is also proper linquistically, is the correct one.

    The “subject matter” is the Widget. If Jim discloses the Widget, Joe can still get a patent (on the Widget, or an invention obvious from the Widget, or even on a genus where the Widget is a speciies) if Joe “publically” disclosed the Widget first and files within a year of Jim’s disclosure.

    Derivation of Jim’s disclosure from Joe is not required.

    Sorry – the reply script is not working properly.

    Ned,

    I cannot comment on Hover’s construction, as I have not seen one from him. Likewise, I am not certain of your construction – I wonder where in your statutory construction the phrase “directly or indirectly” has disappeared to, or how you are using that phrase.

    Can you explain?

  55. anon, what I think Hilmer stood for is that priority and prior art are not the same thing. We have (had) a first to invent system where priority was one thing and prior art was something entirely different.

    In a FTF system, the two concepts are not unlinked since they have no concept of prior invention.

    Regardless, I have pointed out to Max before that foreign applications do have “same invention” patent defeating effects as of their filing dates, which is the the effect they have in Europe. In a sense, we do not deny the European any rights he already has. We simply deny him the rights of a US inventor when he is not.

  56. Anon thanks for those efforts, but they don’t convince me.

    Convincing you was not my goal. I offered my post for your education – if you do not wish to learn, I cannot make you.

  57. anon, I can see your reading of the statute, but I really don’t think the courts will, in the end, read it that way. I think Hover’s reading, which is also proper linquistically, is the correct one.

    The “subject matter” is the Widget. If Jim discloses the Widget, Joe can still get a patent (on the Widget, or an invention obvious from the Widget, or even on a genus where the Widget is a speciies) if Joe “publically” disclosed the Widget first and files within a year of Jim’s disclosure.

    Derivation of Jim’s disclosure from Joe is not required.

  58. Amelia’s article, knowledge for which was derived from Jim.

    While true, your statement is immaterial.

    The reason for the flaw: the exception in (b)(1)(B) ends in “publicly disclosed by… another WHO OBTAINED THE SUBJECT MATTER disclosed (this refers to the original subject matter disclosure of Joe’s by Bob) DIRECTLY OR INDIRECTLY from the inventor (this refers to the inventor seeking the protection, that would be Joe, not Jim).

    The (b)(1)(B) exception does not apply (for Joe’s benefit) to the INDEPENDENT disclosure of Jim’s, for Joe’s subsequent actual application, as the subject matter of Amelia’s article was not obtained directly or indirectly from Joe.

    Jim’s INDEPENDENT status is key to barring a later filing by Joe, because:

    the (b)(1)(B) exception ONLY applies to secondary disclosure (here by Jim) of the subject matter that is actually initially disclosed (here by Joe) if the subject matter of the secondary disclosure (here by Jim) if that matter is OBTAINED directly or indirectly (Jim obtains from Joe).

    Publication of Joe’s work by Joe’s agent and publication of Jim’s work by Jim’s agent do not have the necessary nexus of direct or indirect obtainment for the (b)(1)(B) exception to apply. There must be that nexus in addition to the timing factors.

    The statutory reading is a bit difficult as the word “disclosed” in line 8 appears directly before “directly or indirectly” but does not relate to those words. Rather, the word “disclosed” refers to the words “the subject matter.”

    The words “directly or indirectly” related to the words “who obtained,” even though those words are split by the phrase “the subject matter disclosed.”

  59. Anon thanks for those efforts, but they don’t convince me.

    Let’s look at what publications found a good obviousness objection, in the USA, from now on.

    Take two publications out of the USPTO, one from Inventor A, the other from inventor B. A and B are both published after the date of the claim under attack. And A and B had both not filed these docs at the USPTO till after the date of the claim.

    But both A and B claim the priority effect of an earlier PTO filing, that was earlier than the date of the claim. Both are good enough to invalidate the claim, if they are deemed early enough.

    Take it that the respective priority filings of A and B are identical in disclosure and claim content to A and B’s respective USPTO filings. A’s priority document is an earlier USPTO filing whereas B’s is a European Patent Office filing (in German language).

    As I understand present 102(e), A has a good attack but B not.

    As I understand the AIA, B’s attack is just as effective as A’s.

    We are not debating how effective an obviousness attack is, in the USA, or whether it is different from an obviousness attack in Europe, just whether it makes any difference for the obviousness (or, for that matter, novelty) attacker in the USA, a national of a Paris Convention country, whether the basis of the attack document was a USPTO filing or an EPO filing, and whether English works but German doesn’t.

  60. MaxDrei,

    Another way to look at this is that now that the US has a super-powered obvious section law, that same law applies to all people using the US system – those from foreign domains, who are accustomed to THEIR obviousness law, STILL must play by the US rules in the US.

    The Hilmer Doctrine, as correctly understood, still exists.

  61. Again, this is because Bob’s article, knowledge for which was derived from Joe, was published BEFORE Amelia’s article, knowledge for which was derived from Jim.

  62. anon, you are incorrect:

    102(b)(1)(B) provides that: the subject matter disclosed (i.e. the cited reference that “shall not be prior art”) had, BEFORE SUCH DISCLOSURE, been publicly disclosed by the inventor. . .

    Therefore, regardless of when Jim invented, so long as Joe files within 1 year of Bob’s article he will not be barred. Again, so long as Joe files within 1 year of Bob’s article, Bob’s article will be a (b)(1)(A) exception and Amelia’s will be a (b)(1)(B) exception.

  63. I think “rendered obsolete (for now)” is a better view, and of course does have the long term phase-in effects (don’t forget MaxDrei, that CIPs – even those that cancel the connecting “C” claims retain the benefit of the earlier law).

    In truth, the Hilmer Doctrine lives on REGARDLESS, as the Hilmer Doctrine, correctly understood, merely says that everyone must play by the US rules in the US. It just so happens that the US rules are changing to more closely approximate everyone else’s rules. I have not seen anything in this legislation (other than unofficial pundits’ comments) that Hilmer is actually being revoked.

    In other words, if in a few years, the US decides to change the law to be different than ROW, the Hilmer Doctrine would still be in effect – and in actuality, would have never been NOT in effect.

  64. I think “rendered obsolete” is a better view, and of course does have the long term phase-in effects (don’t forget MaxDrei, that CIPs – even those that cancel the connecting “C” claims retain the benefit of the earlier law.

    In truth, the Hilmer Doctrine lives on regardless, as the Hilmer Doctrine, correctly understood, merely says that everyone must play by the US rules in the US. It just so happens that the US rules are changing to more closely approximate everyone else’s rules. I have not seen anything in this legislation (other than unofficial pundits’ comments) that Hilmer is actually being revoked.

    In other words, if in a few years, the US decides to change the law to be different than ROW, the Hilmer Doctrine would still be in effect – and in actuality, would have never been NOT in effect.

  65. Robert,

    Except your example is flawed.

    In your example, Joe has not filed prior to Amelia’s article. Also, Jim has independently invented the same Widget, so even though Jim has done so AFTER the publication by Bob, Jim’s invention is not directly OR INDIRECTLY obtained from Joe.

    Amelias’s article is NOT a subsection B exception for Joe. Joe IS BARRED from recieving a patent (unless he can actually prove – without, I believe, the aid of discovery – that Jim in fact did NOT independently invent the same Widget).

    First to File may be maintained, but the fallacy of the GRACE PERIOD BEING MAINTAINED should be more carefully scrutinized.

  66. 6 was quoting the original guest post, not pushing that viewpoint. The guest post by Mr. Skaist and Mr. Karr was incorrect. The construction of the grace period is as follows:

    A covers the scenario when the cited reference was a disclosure by the PRESENT inventor, a PRESENT joint inventor, or a third-party who learned of the invention from one of the PRESENT inventors.

    B covers the scenario when the cited reference was a disclosure by a DIFFERENT inventor, DIFFERENT joint inventor, or third party who learned of the invention from one of the DIFFERENT inventors. If the DIFFERENT inventors’ public disclosure is antedated by a subsection A exception for the PRESENT inventor, then subsection B kicks in and the cited reference cannot be used.

    For example:

    Inventor Joe tells Bob about his new invention, Widget, and Bob writes an article about it in his local newspaper. Bob’s article is a subsection A exception for Joe.

    Simultaneously, Inventor Jim idependently invents the same Widget. About a month after Bob’s article is published, Jim tells Amelia about Widget. She writes an article in her local newspaper about 3 months after Bob’s article was published. Amelia’s article is a subsection B exception for Joe.

    Thereby, the sections are not redundant, and the underlying principle of first to file is maintained.

  67. OK Merry, if you must look backwards rather than forwards:

    Under FtI there is a credible defence to the Hilmer Doctrine. Cue Ned. Under FItF, I don’t see it.

    But is it not all now moot? I had supposed that the AIA renders Hilmer obsolete.

    Ned, what about transitional provisions. Will Hilmer’s Doctrine live on for 18 months from today, plus another 20 years of life thereafter, before it ceases to protect the validity of any duly issued US patent?

  68. Foreigns get treated the same as domestics, no favors given, playing field level.

    Cue the subtle “Hilmer Doctrine Misconception” discussion…

  69. Ned

    Good catch! My second to last paragraph should have said “public disclosure” as a reference to the various subcategories of publicly disclosed activities referenced in 102(b)(1)(B), instead of publications.

  70. 6 Your statement in this thread was “The “claimed invention” is not novel if “patented,” “described in a printed publication,” “in public use,” or “on sale.” Therefore, for these events there is no grace period under the new statute – current law has a one year grace period.”

    My response was referring to this statement which I do not believe is not accurate, nothing more.

  71. Leahy is offering non-patent application disclosures as being protected.

    On what do you base this assertion? The congressional record would seem to pretty clearly indicate the intention that any kind of disclosure by the inventor within one year before filing is not a bar:

    Leahy says:
    “by ‘public disclosure’ I mean one that results in the claimed invention being ‘described in a printed publication, or in public use, or sale,or otherwise available to the public.’ …
    “We intend that if an inventor’s actions are such as to constitute prior art under subsection 102(a), then those actions necessarily trigger subsection 102(b)’s protections for the inventor and, what would otherwise have been section 102(a) art, would be excluded s prior art by the grace period provided by subsection 102(b). … This
    means that any disclosure by the inventor whatsoever, whether or not in a form that resulted in the disclosure being available to the public,
    is wholly disregarded as prior art.”

    157 Cong. Rec. S1496

    Is this somehow ambiguous?

  72. Ned I don’t ever expect to see a US law to “favor foreign applications” Don’t worry about that.

    The grace period recognised by the EPO runs from the EPO (or PCT) filing date, irrespective whether the declared priority of the earlier patent application is Germany, the USA or China.

    What I do expect to see from those Paris members which honor the rule of law is compliance with the provisions of the Paris Convention. Foreigns get treated the same as domestics, no favors given, playing field level.

  73. Still the question remains whether the Congress has the power to pass laws intended to promote secrecy of patentable inventions. If the issue is framed that way, the question is clearer.

    The question may be clearer but, respectfully, the answer is still “yes.” Also, it seems the goalpost has shifted somewhat but that might be an accident. The proposition was that *any* such law (Federal or State) would violate the Constitution, as it not?

    Either way, it goes without saying (but I’ll say it anyway) that any law which makes it easier for a company to enforce contracts relating to trade secrets is a law which “promotes secrecy of patentable inventions”. Does Congress lack the power to pass such a law? I suppose you could argue that the Commerce Clause wouldn’t permit it but that wasn’t what was discussed above. Could a State pass such a law? We’re waaaaaaaaaaay past that point, if I’m not mistaken.

  74. Agree. For Americans at least, there is an incentive to file asap or publish asap and file within a year of publication. However, for foreigners in absolute novelty countries who plan to file in the US, there is no incentive for them to change their behavior. They must continue to file asap, and they can’t publish before filing.

  75. MAL, you do have a good point there.  Still the question remains whether the Congress has the power to pass laws intended to promote secrecy of patentable inventions.  If the issue is framed that way, the question is clearer.

  76. I understand the policy behind our patent system, Ned.

    But the argument that the Constitution forbids laws that encourage trade secrets or makes trade secrets more favorable than patents in certain circumstances strikes me as ridiculous.

    It’s not a “close” question, either. The dicta in those cases doesn’t change the fact that the Constitution does not even require that patents exist, much less require that if patents do exist that there by a “quid pro quo” or any other particulr set of laws in place in order for inventors to obtain them.

  77. Stuart, I think both count as “public disclosures” by the inventor of the invention.

    If the facts are different such that the “on sale” activity is not a public disclosure, then it depends entirely on whether “on sale” is included withing subsection A. It would not be protected by B because the “on sale” activity would not be “before.”

  78. Max, good question and I will think about it a bit.

    Current 119 provides,

    “But no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.”

    I believe that is being removed from the new 119. This seems to suggest that the grace period runs from the earliest priority date, US or non US, under the new statute.

    Another major shift in US law to favor foreign applications it seems.

  79. Why do you limit the removal effect of B to third party “publications?” What about third party public uses? Are you actually contending that they are not removed?

  80. I definetly agree with you – in the hypo you gave, the info. is 102f prior art only to the Company – but not to the inventor, nor is it prior art to anyone who had no access to the info.

    I can’t see under current law how that would be prior art to anyone but the Company. It’s not a printed publication. As for knowledge or use – a CDA isn’t dispositive. It’s only public when its accessible to the public and that requires no deliberate attempt to keep the info. secret. As far as I’m concerned, a secure email, the US post, Fed Ex, a confidential envelope, a courier, and many other means of normal communication channels evidence a deliberate attempt to keep info. secret – even if you aren’t conciously thinking about it.

  81. I think the incentives for disclosing a trade secret and obtaining a patent are that one should have the right to exclude others from making and using the invention.  If one does not have this right, I think the incentives for disclosing the invention in the first place are greatly reduced.  So the incentives to keep an invention secret are increased and the incentives to disclose are decreased across the board.

  82. This reduces the incentive for an inventor to disclose the invention.

    Other then the secondary affects, the patent right itself has not been changed, has it?

    I mean, the one holding the secret knowledge is bolstered, but the one holding the patent is the one that still can sue and obtain damages, right?

  83. Elf, 102(f) is not prior art to anyone who does not know of the invention from the inventor. That is the topic of conversation here. The question rather is when is an invention made public in the US through use or knowledge.

  84. Landmines, you're making my case.  Your pointing out just how the new law reduces the risk to virtually zero the trade secret user may have versus a later discoverer who might obtain a patent.  This reduces the incentive for an inventor to disclose the invention.  The incentives are backwards from the constitutional purposes: promoting disclosure and promoting the progress in the useful arts through disclosure of the invention.

    Backwards.

    That is the key.

    Congress arguably has no authority or power to pass laws specifically intended or which have the effect to undermine the constitutional purpose of the patent system.  Is not just that Congress chooses here the best way to incent disclosure.
     They have the power to do that.  But Congress does not clearly have the power to pass laws that are intended or have the effect of doing the opposite.

    While the new law certainly will benefit companies in the exploitation of their trade secrets, that certainly does not result in the progress of science and the useful arts through disclosure.

  85. The contributions to this thread bring to my mind the problematic text of the statutory 6 month grace period provided by Article 55(1)(a) of the 1973 European Patent Convention, and the different text of the statutory 6 month grace period of Section 2(4)(a) and (b) of the UK 1977 Patents Act.

    In Europe, there was until recently a tricky issue whether the 6 month grace period is pinned to the declared priority date (in a Paris Convention country) or to the filing date at the EPO. Under the AIA, will those residing outside the USA benefit as much from its statutory 12 month grace period as those who were at the relevant dates residing within the USA? Does anybody yet know?

  86. On a different note, does this act authorize all patent AGENTS to no become de facto attorneys by allowing them to represent clients in the Post-Grant Review scheme???? Not sure this is a good idea – or shall we simply do away with all legal education/requirements and let everyone “practice” whatever/however they desire?

  87. This legislation has always been represented as providing the inventor with a one-year grace period for any public disclosures or prior art activity so long as such disclosures or prior art activity originated with the inventor.

    David, Judith_IP has the grace period correct when she points to Sen. Leahy’s comments. Sen. Kyle made similar comments. 6 is wrong in saying that there is no more grace period. Your statement is correct, but only describes half of the grace periods applied to publicly available art – new 102(a)(1).

    To make the statutory analysis of the grace period for publicly available art easier, let’s take new 102(b)(1) and focus just on the inventor, ignoring the joint inventor and derived from language. As the language on joint inventor and derived from is essentially identical in new 102(b)(1)(A) and (B), this simplification is equivalent to the associative law of statutory construction. So, applying this simplification in order to demonstrate how there are really two kinds of grace periods for publicly available art, not just one, the simplified version would read:

    `(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
    `(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor.

    To avoid construing subsection (B) as being duplicative of section (A) as (A) will have always occurred before (B) if these acts are limited solely to acts of the inventor, then these two subsections should be interpretted as referring to different acts. But what you see by reducing the side issue (joint and derived disclosures) is that there is a timing difference in the statutory language between these two subsections:

    `(A) the disclosure was made by the inventor; (inventor disclosures are exempt for entire 1 year grace period) or
    `(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor. (other disclosures are exempt only for that portion of 1 year grace period that is after inventor disclosure, i.e. between the inventor disclosure and the inventor patent filing)

    Because any subsequent inventor disclosure in the “gap” period between the initial inventor disclosure and the inventor patent filing that is defined by subsection (B) is is already excepted under the entire 1 year grace period for inventor publications that is defined by subsection (A), Congress in it’s statutory language for subsection (B) is defining something else other than the inventor’s own acts that are to be covered by the in-between gap part of the grace period defined by subsection (B).

    Plainly, this statutory construction makes clear that subsection (B) is intended to apply to more than just the work of the inventor. In addition, because the language about joint/derived disclosure is essentially identical between subsection (A) and subsection (B), the difference between the two subsections can’t be attributed to that common language. What this simplification analysis demonstrates is that, consistent with the comments of Sens. Leahy and Kyle, the grace period defined by new 102(1)(B)(2) is directed to publications of third parties, including third parties who independently developed the subject matter in question.

    Effectively, new subsection (B) replaces “reactive” swearing behind in old 102(a) to establish an earlier date of invention with a new “proactive” swearing in front of in the new 102(b)(1)(B) by requiring the inventor to do their “swearing” in advance in the form of “publishing ahead.”

  88. I agree with Mr. French, the authors are incorrect in stating “there is no grace period.” An inventor’s “disclosure” (ie in the exceptions list) clearly encopasses a talk or an academic paper (ie a printed publication) absent some stated restriction to the contrary. There is still a one-year grace period.

  89. Inventor discloses the claimed invention in an academic paper published the dame day as he discloses it at a trade show trying to sell it, then files 364 days later.

    Is his activity a bar?

  90. David French writes:

    I question the statement by Skaist and Karr: “The “claimed invention” is not novel if “patented,” “described in a printed publication,” “in public use,” or “on sale.” Therefore, for these events there is no grace period under the new statute – current law has a one year grace period.” This statement must be wrong.

    This legislation has always been represented as providing the inventor with a one-year grace period for any public disclosures or prior art activity so long as such disclosures or prior art activity originated with the inventor.

  91. Absent that risk, the trade secret user will not have any reason to disclose, and the constitutional purpose identified in Kawanee Oil, among other cases, will be frustrated.

    Still not sure where you are going with this Ned, as I mentioned, the one with the prior user right is not the one trying to get a patent. Kawanee Oil dealt with an entity with a trade secret trying to get a patent. You are reading frustration into a case that does not have one, as no one is forced to get a patent, and the entity in my case with the prior user rights is not trying to have those rights and obtain patent rights. In my case, the trade secret user was never going to disclose anyway, it is the other guy that disclosed (the sucker). It is the other guy that has the patent and the patent system – rewarding disclosure with a patent is still in effect. The other guy disclosed, and the other guy got a patent.

    All this law does is allow a trade secret holder to not disclose and gain some of the benefit of (and full immunity from) the actual patent holder. Sure, the patent holder is worse off, having a compromised “exclusivity” Quo…

    …and a compromised market situation…

    …and gets to foot all of the prosecution and enforcement costs…

    …and received the benefit of being the one to disclose…

    but no one forced the schlup to ask for a patent, correct? And as for Kawanee Oil, there still is no entity in my situation that wants to have and receives both Trade Secret and Patent protection. The patent holder is just not the same entity as the entity with the prior user rights – two entities, two different sets of rights.

    I am just not seeing the point you are trying to make.

  92. MAL,

    It’s a close case, consider this from Pennock,

    Story, J.

    “The Constitution of the United States has declared, that Congress shall have power “to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It contemplates, therefore, that this exclusive right shall exist but
    for a limited period, and that the period shall be subject to the discretion of Congress.

    While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was “to promote the progress of science and useful arts;” and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible, having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, …and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent and thus exclude the public from any further use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts and give a premium to those who should be least prompt to communicate their discoveries.

    A provision, therefore, that should withhold from an inventor the privilege of an exclusive right unless he should, as early as he should allow the public use, put the public in possession of his secret and commence the running of the period that should limit that right would not be deemed unreasonable….”

    Now, consider Kawanee Oil,

    “The interest of the public is that the bargain of 17 years of exclusive use in return for disclosure be accepted. If a State, through a system of protection, were to cause a substantial risk that holders of patentable inventions would not seek patents, but rather would rely on the state protection, we would be compelled to hold that such a system could not constitutionally continue to exist. ”

    While the specific issue in Kawanee was “preemption,” the rationale was that strong trade secret protection would interfere with the constitutional objective of promoting disclosure.

    Both Pennock and Kawanee represent two sides of the same coin, and the policy implications are clear.

  93. Landmine, Kawanee justified trade secret protection of patentable inventions on the basis that few, if anybody, would rely on such protections because of the risk of another inventor obtaining a patent and shutting them down.

    Now, think about that for a second. What do prior user rights actually do? Remove the very risk that justified trade secret protection in the first place. Absent that risk, the trade secret user will not have any reason to disclose, and the constitutional purpose identified in Kawanee Oil, among other cases, will be frustrated.

  94. Landmine, I invite you to read Kawanee Oil. The Supreme Court said that if it were to believe that a trade secret user of a patentable invention were to have any legal right to risk keeping his invention secret vis-a-via a later patent, they would hold the statute or law authorizing that incentive unconstitutional.

    What part of the Constitution forbids such laws?

  95. Judith_IP,

    I do not think that your 1 and 3 points are correct.

    Leahy’s voicing of the protection is that protection afforded a patent application (in 1). In 3, Leahy is offering non-patent application disclosures as being protected.

  96. Ned,

    You are not suggesting that HR 1249 should be considered the same as the 1952 act, are you?

    If you think so, you are in for a very rude surprise.

  97. Not sure where you are going with that Ned, the one with the prior user right is not trying to get a patent. The one with the prior user right doesn’t care about the patent except that it keeps out others (except the actual patent holder – read that as sucker – and whomever the prior user right wants to make a deal with. Kawanee Oil has nothing to do with the one with the prior user rights.

  98. Landmine, I invite you to read Kawanee Oil.  The Supreme Court said that if it were to believe that a trade secret user of a patentable invention were to have any legal right to risk keeping his invention secret vis-a-via a later patent, they would hold the statute or law authorizing that incentive unconstitutional.

  99. Coke and a Smile, for the life of me then I cannot understand why you would believe Congress would intentionally change the meaning of “on sale” from that it has had since 1829, and Pennock v. Dialogue, without any discussion whatsoever in the record. That doesn’t make any sense whatsover, IMHO.

    Compare, when Congress enacted 103, the Supreme Court dealt with it as a codification of its case law, not as a repeal of its case law.

  100. “How this would work in the real world is beyond me. In particular, the lack of definition of “disclosure” is going to be problematic.

    Only if people insist on being tards and the courts allow it.

  101. The PTO says: Effective date (pages 23-4): Takes effect 18 months from date of enactment; and Applies to any application and patent (i) with a claim having an effective date on or after enactment, or (ii) having a specific reference under sections 120, 121, or 365(c) to an application having such a claim.

    link to uspto.gov

  102. I believe what Leahy is saying that:
    1. If an inventor discloses on date A
    2. There is a prior art reference available dated A+1 (e.g. later than A)
    3. The inventor file on date B, after A+1 but less than 1 year after A, then the prior art reference, dated A+1 is not in fact a statutory bar. It falls under the exceptions clause of 102(b)(1)(B). In contrast, a prior art reference at A-1 (e.g. earlier than A) would be barring. Thus, only “subsequent prior art” e.g. prior art which is published after the inventor’s own disclosure, falls within the exception.

    How this would work in the real world is beyond me. In particular, the lack of definition of “disclosure” is going to be problematic.

  103. I believe you even without a cite – but please define “subsequent prior.”

    Also, please take note of the ongoing discussion on which disclosures are statutory bars and which are not. It appears that the “full advantage of the grace period…academic papers and at trade showsonly applies if the applicant has complied with the narrow type of “disclosure” exception – that is, if the applicant has already filed an application. Only by filing an application is such protection afforded that Leahy speaks of, which is quite a bit different than the applicant merely “disclosing” and garnering the protection that Leahy mentions.

    Sometimes, the best l i e has a kernel of truth.

  104. but if “on sale” were required to be public

    I don’t recall saying that. In fact, i think I allude to the opposite: any “on sale,” public or private is a statutory bar.

    No redundancy. No worry.

    is not a personal bar to the applicant, he could use the trade secret privately ad infinitum and still be able to obtain a patent.

    I don’t recall saying that either. The bar is not a personal bar, it is a statutory bar. Why are you limiting it to a personal bar? Where is that in HR 12449?

  105. Section 35: Effective Date
    Except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent issued on or after that effective date.

    There is no provision otherwise with respect to 102.

  106. I don’t know about the constitutioanl angle, but the prior user right is a very strong one.

    There is a definite shift towards the prior user, who not only is immune from the patent holder, but enjoys the fruits of that holder’s labor.

    I do not see why anyone could not legally avoid a patent holder by becoming a customer of someone with prior user rights.

    Ka-boom.

  107. Except Judith_IP, Leahy said that after the vote was taken and outside of the congressional record.

    In other words – what he said does not matter and is of no accord.

  108. A printed publication is prior art today anywhere is published. Prior use and knowledge, today, are only prior art if they occur in United States. I would be very surprised, indeed shocked, if there is any case law that would suggest that the disclosure, without more such as being indexed in a library, of a single copy of a written description of the invention outside the United States would be prior art as printed publication so as to avoid the “in United States” requirement for public use and knowledge. If any such case actually exists, I would say it was written by Rader.

  109. Except that Leahy said the following about that “disclosure” which makes it a First to Disclose Or File:

    Under new section 102(b)(1)(B), once the U.S. inventor discloses his invention, no subsequent prior art can defeat the invention. The U.S. inventor does not need to prove that the third party disclosures following his own disclosures are derived from him. He can thus take full advantage of the grace period and disclose his invention in academic papers and at trade shows without worrying that such disclosures will lead to theft or fraudulent invalidation of his patent.

  110. Indecent, I must admit I am not following you here. Are you suggesting that under current law that disclosure of a single copy of a document to a person who has no obligation of confidentiality is a “printed publication?”

    So back to my original question, assume that even though there was no confidentiality agreement between the discloser and the company, but nevertheless the company endeavors to keep the invention secret within the company. What is this?

  111. Sign a quick deal with Coke?

    You are making a strong case there that the new prior user statute is unconstitutional if anyone could avoid a patent by signing a deal with a prior user.

  112. A Coke and a Smile, but if “on sale” were required to be public, I think this point you are driving, and you essentially be reading “on sale” out of the statute, because any activity that would place the invention into the public domain would be prior art as a public use or under the catchall provision, rendering the requirement to show some offer for sale or commercial activity completely redundant.

    I don’t think the courts will do that.

    Second, if a private, trade secret use, is not a personal bar to the applicant, he could use the trade secret privately ad infinitum and still be able to obtain a patent. This flies in the face of Pennock v. Dialogue, which stated that Congress could not constitutionally authorized this practice. Compare also Kawanee Oil, which heavily rely on the on sale bar to kill the trade secret user’s right to a patent as the basis for its holding in that case that states could constitutionally protect patentable trade secret uses.

    Taken together, I cannot see the courts interpreting “on sale” any differently from the way they do now.

  113. But, what if that portion of the statute is struck down as unconstitutional?

    I thought that the severability clause amendment in the statute did not make it in. Doesn’t it mean that if that portion gets struck down, the whole thing goes down?

  114. (Leave aside the new prior user defense.)

    Why?

    It makes better sense to let Pepsi have the patent and thus preclude anyone else from joining the party that is not a customer of Coke.

    The new prior user rights are Golden.

    I doubt that they can sue a non-party. This applies in disputes currently and the patent law really does not have any impact. I do not see the problem. Of course, if I were X, I would sign a quick deal with Coke and enjoy the prior user defense too (that way you ensure that there is no problem to be seen).

  115. Will the change in section 102(e) be applied to now pending applications, or just applications filed after enactment or 18 months after enactment?

  116. the new law and the old law read the same.

    But they do not read the same. That is the point.

    Why would the courts even begin to think that a change in the law was intended?

    Because Congress said so. It is right there on page one of HR 1249.

  117. Let's say, Pepsi.  If they discover a formula that makes their new drink taste exactly like Coke, obtain a patent, sue Coke, can Coke defend on the basis that the Coke product long on sale anticipated the new Pepsi product?  (Leave aside the new prior user defense.)

    Can they sue party X, not Coke, and can party X obtain discovery from Coke of the formula to prove the Pepsi patent is anticipated?

    See the problem?

  118. The written disclosure is a printed publication, even if kept private.

    It is only with confidentiality that you remove the “publication” aspect, although that too may be challenged. For example, in looking to copyright law, one may say that “publication” includes the offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

    If one wants to wander down the rabbit hole, an offer to disclose to a group of persons constitutes publication and thus acts as a statutory bar, unless the offer is to a disclosure of an application or patent.

  119. Third party sales activity not amounting to a public use should not be prior art.

    should

    “Should” won’t cut it. That isn’t what the law says and the new law just does not make the distinction you wnt to make. If you were to apply the not any differently than it does now logic, the law becomes a nullity. Probably the only interpretation that will not fly would be that one.

  120. I think the courts will not construe “on sale” any differently than it does now. This means that “on sale” will remain a personal bar. Third party sales activity not amounting to a public use should not be prior art.

  121. Indecent, what about a private, but non confidential written disclosure? For example, an inventor submits a disclosure to a company on a non confidential basis for “evaluation” purposes. What is this?

  122. “The “claimed invention” is not novel if “patented,” “described in a printed publication,” “in public use,” or “on sale.” Therefore, for these events there is no grace period under the new statute – current law has a one year grace period.
    “On sale” and “in public use” activities are no longer limited to the United States – current law requires these events to be “in this country.” ”

    In other words, at least one part of the law was updated to reflect the modern world. Well at least they got something right.

  123. ‘prior art’ will affect how best to draft the patent claims

    While not doubting that this is indeed the best practice, one should be aware that there is no requirement for applicants to actually search the prior art.

    Still.

    ‘patented,’ ‘described in a printed publication,’ ‘in public use,’ or ‘on sale.’ Therefore, for these events there is no grace period under the new statute

    OK, then “disclosure” cannot mean any of these (including described in a printed publication of the own applicant’s – except if that printed publication is an application or patent – so a different type of printed publication, as in a tech journal is a bar – even if by applicant??).

    In other words, the only “disclosure” left is by a word of mouth that is not an offer for sale…

    Any other modes…?

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