Law Professors and their Initial Remarks on the Leahy-Smith Patent Reforms

Certainty + More Prior Art: While I'm concerned about the effect of first-to-file on small inventors, I am pleased that the rule will expand the universe of art that might invalidate obvious patents. Too often, art found within a year of filing is rendered uncertain because the defendant does not know the date of invention. By fixing the cutoff date at filing, the universe of prior art not only grows, but the administrative cost of asserting that art is also decreased. To be sure, some of the obviousness art may come after the invention date, but I'm not so worried about that; after all, simultaneous invention is a consideration for obviousness, so close in time inventions, even if after the patentee's, do not present a great harm to a system that is supposed to reward nonobvious advances. – Professor Michael Risch, Villanova University School of Law

Impact on NPEs: Early reports say that the new law will "do nothing" to impact NPEs. They are wrong. The law will forbid the NPE tactic of naming unrelated companies in a single lawsuit, and the economies of scale it produces. Innocent early infringement done in private, under certain circumstances, won't be penalized anymore. A follow-up study on prior user rights and the impact of NPE litigation are called for. The PTO has expanded fee-setting authority, and the public, a greater right to chime in on questionable patents. As the economics of litigation change, so, necessarily, will the business models based on them. – Professor Colleen Chien, Santa Clara University School of Law

Deceptive Intent: There has been little commentary on the new law's rather quiet removal of all seven occurrences of "without deceptive intention" from the statute. These are for: Inventorship changes (Secs. 116 and 256); reissue (Sec. 251); filing a disclaimer (Sec. 253); suing on a patent containing an invalid claim (Sec. 288); and foreign filing without a license (Secs. 184, 185). It was probably not done to encourage deceptive conduct, but to limit fights over mental state in these areas. – Professor Paul M. Janicke, University of Houston Law Center

Natural Experiment: As someone who practiced patent law for over 10 years before entering academics, I am ambivalent at best about the passage of the America Invents Act.  Unfortunately, we missed an opportunity to meaningfully address fee diversion from the Patent Office, one of the most important issues facing the patent system.  With a backlog of over 700,000 applications, the Patent Office needs to retain all the fees it collects.  As an outside academic observer of the patent system, however, there is a benefit to the America Invents Act.  Changing the patent laws provides me and others the chance to empirically evaluate the effects, if any, of legal changes on the patent system. – Professor David L. Schwartz, IIT Chicago-Kent College of Law

Date of Public Disclosure: The Congressional language about "first-to-file system" is somewhat misleading. The text of the bill, and floor remarks of Sen. Kyl, make clear that the key date is either an inventor's filing date or an inventor's earlier public disclosure date, provided the disclosing inventor follows up by filing within a year of the disclosure. In the latter event, the patent would not go to the first to file, but to the first to publicly disclose. – Professor Paul M. Janicke, University of Houston Law Center

Value of Secrecy: Information about new inventions is critical to technological progress.  By increasing the value of secrecy as an option for monetizing inventions, the Leahy-Smith America Invents Act represents a step backwards in terms of information dissemination.  The prior user defense created by the Act recalibrates inventors' decision between secrecy and patenting so as to favor the choice of secrecy.  This shift has the potential to reduce the number of patents that are filed on secret inventions (and the mandatory disclosures that accompany those patents), as well to encourage inventors to direct their investments in research towards secret inventions as opposed to those that require patents to monetize. – Professor Jason Rantanen, University of Iowa College of Law

Inequitable Conduct: The doctrine of inequitable conduct exists in part to encourage patent applicants to internalize some of the costs of the patent system and ensure applicant candor.  The Federal Circuit in Therasense recently took aggressive steps to relieve patent applicants of some of these obligations.  The Leahy-Smith America Invents Act pushes in the same direction.  With two limited exceptions, it provides that "A patent shall not be held unenforceable on the basis of conduct relating to information that has not been considered, was inadequately considered, or was incorrect in a prior examination of a patent if the information was considered…during a supplemental examination of a patent."  New 35 U.S.C. § 257(c)(1).   This provision appears to effectively empower patent owners with the ability to strategically manipulate disclosures to the PTO.  – Professors Lee Petherbridge, Loyola Law School Los Angeles and Jason Rantanen, University of Iowa College of Law

Whipped Cream: There is no mistake so bad that you cannot cover it up with parsley or whipped cream. - Julia Child via Professor Yvette Liebsman, St. Louis University School of Law

 

99 thoughts on “Law Professors and their Initial Remarks on the Leahy-Smith Patent Reforms

  1. §102(f) has been removed. It was not replaced.

    In contract parlance, has Congress contracted with a nullity?

  2. Steve Hansen has convinced me that the statute has no express condition of patentability that a patent must issue to an inventor. (By issue to an inventor, I include an assignee of an inventor.) §102(f) has been removed. It was not replaced. Therefore, there is no defense that a patent is invalid because none of the named inventors invented subject matter of the patent. I don’t think this was an oversight by those who actually drafted the bill. But I think the senators and congressmen who voted for the bill actually believed that such a provision continued to exist in the statute even though it did not.

    The congressional debates regarding constitutionalalty centered on a discussion of whether a patent could validly issue to a second inventor. In this discussion, it was assumed that a patent would issue to at least some inventor, albeit, a second inventor. There was no discussion in Congress that I know of that the statute would allow valid patents to issue without naming any true inventor. I say “validly” because if there is no defense that the patent is invalid for failing to name a true inventor, the patent is valid.

    Because of the nature of the debates regarding the constitutionality of the bill, I will assume that no one in Congress actually believed that we could constitutionally issue a valid patent to one who was not an inventor. I think they all actually believed that the statute had some requirement in it that would require that a patent issue to a true inventor. But apparently that was not the case.

    I assume therefore that if the above is all true, and I think it is true, then I would suggest that the first-inventor-to file provisions statute are unconstitutional.

  3. MD, what is the cost, actually? I don’t know. I was thinking that the applicant has to file in English anyway in the US. What is the extra cost for getting the translation certified?

  4. The commissioner has the authority to provide by rule

    Does the commissioner actually have authority to provide a rule that impacts substantive rights like that?

  5. You seem to be missing the point. Under the new laws, an examiner can rely on a US reference with foreign based priority. To provide a prima facie case, the *reference* itself needs its foreign priority document translated, not the *application* under review. That, in effect, brings a 3rd party into the examination process, which is overly complicated, time-consuming, unpredictable, and unnecessary.

    MD, in order to provide fairness to all applicants under the new laws, a foreign applicant with a foreign-language priority document should have to file a certified translation for a claim of priority. If the cost is high, so be it. I am not overly concerned with an extra surcharge imposed on foreign applicants for certified translations because they are applying for a US property right, therefore, it should be in the language of the US, which is English.

  6. Max, the priority claim is hypothetical until needed by the applicant. If he seeks to rely on his priority application for a filing date, he has to file a certified translation and demonstrate support for the claims in the priority document.

    If it is not perfected by the applicant during prosecution, the priority claim should be not be considered established for prior art purposes.

    The commissioner has the authority to provide by rule that unless a certified translation is filed, that the priority claim will be considered abandoned by the applicant and, further, that the priority claim will not be printed on either the published application or the printed patent.

  7. “Isn’t another point of this thread the fact that translation is indispensible if the Applicant is going to rely on that reference to establish a patent right (as regards to the critical time)?”

    Max is correct. The MPEP states that the only time an applicant should be required to file a certified tranlsation of the foreign priority application is if there is some intervening prior art and applicant needs to establish a date of invention before the date of the prior art.

  8. Asked and answered.

    No.

    More like asked and avoided, asked again and avoided again, and asked yet again.

    Straight up – Yes or No, is enablement required in the disclosure (it is not an answer to say “it depends” for the reasons already stated).

  9. Isn’t a point of this thread the fact that translation is indispensible if the Examiner is going to use that reference to deny a patent right?

    Isn’t another point of this thread the fact that translation is indispensible if the Applicant is going to rely on that reference to establish a patent right (as regards to the critical time)?

    Otherwise, I would agree that both the Office and the Applicant should have some flexibility for translations that are not indispensible.

  10. if the Examiner alerts Applicant to prior art

    I don’t understand this post. MaxDrei, you seem to indicate that counsel ignores something that an Examiner presents. I know of no one who would ever do such a thing. Or am I misunderstanding your restatement?

  11. Any idea how much translation costs?

    Why require it in any other case except those in which priority Y/N is determinative of the contest between the respective filings?

    That’s the way the EPO does it. What’s wrong with minimising translation requirements and confining them to situations when they are indispensible?

  12. Thanks for that anon, but all i had in mind was that if the Examiner alerts Applicant to prior art which might or might not destroy validity, depending exclusively on relative Patent Office filing dates for respective reservoirs of disclosure, yours and his, (as opposed to different dates of conception and diligent activity) would not Applicant wish in his own interests to check out straightaway the content of the other fellow’s disclosures to a PTO, and what was disclosed to that PTO, on which PTO filing dates?

  13. Giving it further thought, it is unnecessary to require the certified translation for a filing date. You just need it if you want priority.

  14. is this all a consequence of the unique to USA Duty of Candor?

    I do not think that the “USA Duty of Candor” has anything to do with this.

    I should have thought it to be in the vital interests

    I think that you have bought into the fallacy of rampant and out of control litigation. Patent litigation only affects a very small percentage of issued patents, and the rate of litigation, when viewed against the total number of live patents has actually been dropping over the past few years.

    To point, it is the duty of the USPTO to do the examination. Of coourse, this is not to say that a strong application with a diligent search and write-up to avoid the known art is not a “best practice.” That is a best practice. It is also an expensive one. Very expensive. In the commodization of the market, expensive solutions are often not chosen when less expensive solutions are available. It comes down to the client’s decision on how to proceed, balancing cost and risk. The fact is, a patent in the hand (even a weak one) often has more business value than a gold-plated bullet-proof patent.

    I would also correct your statement of “ignore and avert” – that would be an ethical violation and an introduction of unnecessary risk (with my understanding that “to ignore,” one must understand that which is being ignored, which I would characterize as different than a “do not look for” policy).

  15. I have a question for you all, about what is surely going to be a more and more frequently occurring situation, namely, when attention is on the filing of another, which declares a non-US priority date earlier than one’s own “effective date”.

    Now me, I should have thought it to be in the vital interests of the Applicant to engage forthwith, so as to take through to issue claims that are not vulnerable to prior art attacks.

    But from the comments above, I perceive that US patent attorneys see it as the duty of the USPTO to investigate and put together an objection to issue if it can. Until that happens, it is the duty of the prosecuting attorney, and in the interests of his client, to ignore that earlier non-US priority date, avert the eyes, and resolve to deal with the issue, as needed, after issue, should it ever come to pass that there are disputed adversarial inter Partes proceedings).

    My questions: do I see it right and, if so, is this all a consequence of the unique to USA Duty of Candor?

  16. Ned,

    The easy answer is no, as the MPEP you quote from is related to the old law, not the new one. Further, the “for all that it teaches” is analagous to “for all that it enables” and merely returns you to the starting point of the question above. Clearly, a science fiction novel may write about items that “teach” such things as time travel, positronic brains and a myriad of other fantasy itesm, but we can easily see that these things remain fanatasy and cannot be used in a 103 analysis.

    So, the point we return to, this is not an “it depends” question. It is a yes or no question. Do you feel that enablement is required in the disclosure?

  17. I would have thought so, but since they got rid of 102(f) and 102(g), I’m not sure how. There is still a requirement of an inventor declaration, so in theory, there is an inequitable conduct attack that can be made because the first filer’s inventor declaration would be false. I noticed that the heading to Section 3 of the Leahy-Smith Act is “First Inventor to File.” However, the “first inventor” part is not reflected in the body of the statute.

    Section 101 seems to limit the granting of patents to those who invented. The provision is used to attack subject matter that is not statutory, so perhaps the Courts will allow it to be used to attack patents naming non-inventors if this issue arises.

  18. Steve, between rival inventors, the first to file gets the patent unless the second to file publicly discloses first.

    I presume if a non inventor files on an invention of another, there has to be a defense of some sort that the patent is invalid. I find it hard to believe otherwise.

    Regarding partners, you also might have contract issues as to who owns the patent even if the patent names the proper inventors.

  19. I would agree if the second filer publicly disclosed the invention before the first filer files. However, what if the invention was just shared between the first and second filers, a common circumstance with many of my clients who are seeking business partners? 102(a)(1) requires patenting, disclosure in a printed publication, public use, on sale, or “otherwise available to the public.” I can’t see that any of these circumstances would apply.

  20. Patent Law New Bee, If a reference is “removed” by 102(b), it is not prior art. However, 103 always compares the claimed subject matter with the prior art. So there really is no problem about whether the inventor actually knows about the excluded art. He legally does not.

  21. Ned,

    Here’s my problem. These “public disclosures” are not prior art and thus not anticipating under Section 102(b). Read literally, the exceptions only apply to prior art under (a)(1) and (a)(2).

    Section 103 states: “A patent for a claimed invention may not be obtained . . . if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”

    Note the “would have been obvious before the effective filing date.” The “public disclosures” in (b)(1)(B) and (b)(2)(B) occur prior to the “effective filing date.” Thus, would not those teachings be known to a skilled artisan at the effective filing date?

    Obviously, what I’m saying isn’t intended and the language probably wont’ be interpreted that way. Otherwise, the exceptions would become useless. However, a cleaner way to word the language would have been for the public disclosure of (b)(1)(B) and (b)(2)(B) to provide an “effective filing date.”

  22. Prior to publication is another way to go. I originally left it out because I did not want to overcomplicate it, however it’s altogether plausible. A complicating factor is that the publication date is variable, depending on how fast the USPTO examines.

    That’s why I included a possible modification to 1.53(f) – to provide at least some flexibility as to when the certified translation is filed.

  23. SF, an enabling disclosure is required for anticipation. But is it required for obviousness?

    Check MPEP 2121.01

      “II. 35 U.S.C. 103 REJECTIONS AND USE OF INOPERATIVE PRIOR ART

      “Even if a reference discloses an inoperative device, it is prior art for all that it teaches.” Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989). Therefore, “a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991).”

    I think this answers the question, does it not?

  24. I do not see the urgency to make this a requirement for a filing date. It is not as if the filed foreign language application will change once filed, and adding a nother requirement prior to achieving a filing date seems arbitrary. I would not mind if the certified copy was required prior to publication.

  25. Ned, I agree.

    See also 37 CFR 1.55(a)(4)(i) for where a certified translation is required. I think this section should be modified to require a certified translation in all instances.

    Also, modify non-provisional filing requirements under either 1.53(b) or 1.53(f) to include a certified translation as a requirement for a filing date.

  26. again, it will depend on what the reference is.

    Again, this is not an “it depends” question. The law is not specific to “type” of disclosure, does not given optional paths of consideration and the congressional record is likewise silent on this.

    It is an all or nothing shot. Either enablement is required or it is not required. Either Science Fiction rules or it does not rule. You cannot have it both ways with how this law is written.

    From your brochure example (leaving aside for the moment that fact that a brochure is a printed publication and thus a statutory bar ouside of this issue) it appears that you are saying enablement is irrelevant and any publication that discloses the subject matter, without enablement is all one needs. This leads to the supremecy of Science Fiction on its face. Since this leads to an absurd result, the logical result is that enablement is not irrelevant. It will be fun trying to determine “enablement” in the various disclosure modes that are not statutory bars.

  27. It appears to be optional. See, §119(b):

    “3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.”

    Given that the foreign priority document will now be prior art, I think the Director should make the requirement mandatory.

    Ditto with respect to foreign language provisional applications.

  28. SF, again, it will depend on what the reference is. If the reference is a brochure describing whatever it describes, and that is cited against the claims of the patent application, all one should have to do is show prior disclosure of the same subject matter as disclosed in the brochure. The issue of enablement is irrelevant.

    In contrast, if the reference is a patent or patent application, and it discloses how to make and use the subject matter that forms the basis of the rejection, I think there might be a good argument that the prior public disclosure should also be enabling.

  29. You might be right, but it always will depend upon what the references discloses. If it too does not show anything more than the public disclosure, I think the reference is removed.

    Cannot tell from your answer, must the disclosure enable, or does science fiction rule? (it’s an “either-or” question, not “an it-depends” question).

  30. Given this, I think the PTO should require foreign language applicants to provide certified translations of their priority documents, electronically filed, so they will be publicly available on PAIR.

  31. SF, but don’t misdirect too much, here. The issue is whether the prior public disclosure disclosed the same subject matter as the reference. If the reference disclosed how to make the subject matter and the prior disclosure did not, well we then have a very interesting issue.

    You might be right, but it always will depend upon what the references discloses. If it too does not show anything more than the public disclosure, I think the reference is removed.

  32. I will have to be careful “criticizing” the academic IANAE…

    IANAE, you are full of crrp. What makes you think it is OK for an Examiner to be “close enough” with a machine translation just because there may be pictures and just because BRI allows a broad interpretation? The Examiner does not have carte blanche to not unerstand a reference he uses – and going by a machine translation for nuanced understanding (and understanding of more than just the claims is required – it is the application being examined, not just the claims) is necessary as a predicate to a quality examination. The idea that an Examiner can be off just because of BRI is a major reason why First Time Through quality is abysmal.

    Back to the tower with you!

  33. My brief scan of these comments don’t show any mention of the new 35 USC 100(f), which defines an inventor as someone that invents. How will the courts deal with circular logic? How could the drafters let this mistake out? This looks like a first year associate error. Or is there some other part of the bill that clarifies this circulous circulosity?

    Also, 100(f) also defines an inventor as someone that “discovers.” How do you “discover” an invention? Is this just a way to get broader chemical and biochemical protection?

  34. Yes but the point still stands – in all first-to-file systems the first public disclosure date is “key”, as the professor says.

  35. sufficient enough to render the referenced patent (application) unpatentable

    In order to be effective, a reference must enable that which is claimed to be taught, no?

  36. After giving it more thought, a machine translation will probably be insufficient considering how many nuances arise in patent claim language. Therefore, maybe a certified copy will be required.

    Sure, there are “nuances” in claim language, but the claims in question are in English already, and we’re talking about a BRI rather than a formal Markman-type claim construction. All we’re doing at this stage is taking the already-decided meaning of the claim and looking for it in the prior art.

    If all the examiner needs to do is make a prima facie case, a machine translation should be more than enough in most cases. Depending on the art, you might even get by with the drawings alone, maybe referring to the machine translation to confirm what feature 112 is called.

    Besides, if the applicant is looking at a picture of his invention in the prior art, that should help him intelligently decide whether to continue prosecution or not. If he wants to take the chance that a certified translation of the art will reveal “Figure 1 is the opposite of what you should do, actually, and it would never work that way”, that’s his own decision at his own expense. Some of which he can probably save by asking the Chinese/Japanese/German agent down the hall what the spec seems to be saying.

  37. My initial thoughts on this were similar to “Ugly American”‘s post below. However, my thought was that the examiner should provide a machine translation instead of a certified translation. After giving it more thought, a machine translation will probably be insufficient considering how many nuances arise in patent claim language. Therefore, maybe a certified copy will be required.

    Another, still undeveloped, thought would be that international work sharing could provide other routes for translation.

    Still another route would be for the Director to implement rules to require US applications with foreign-based priority to provide a certified translation as a requirement for filing in the US. This would be different than the current rule of requiring the certified translation only in the case of intervening prior art.

  38. Patent Newbie, the way I view it is this:

    If the public disclosure is the same as the reference, or varies only obviously, where is the problem in removing the reference even if the public disclosure would not be sufficient to support an effective filing date? Your thought process, requiring full 112, p. 1 support in the public disclosure, is as if the reference is not simply prior art, like a professor’s paper, but a rival inventor’s patent or patent application claiming the same invention.

    In the latter circumstance, I think all that matters is that the public disclosure should be sufficient enough to render the referenced patent (application) unpatentable so that there might not be two patents issuing on the same invention. The public disclosure is, after all, prior art to the reference patent applicaton. If it is removed as a possible patent, why shouldn’t you, the second filer, but first discloser of the subject matter, get the patent? The alternative would be to knock out the rival patent, while at the same time not allowing you to get a patent as well. That doesn’t make any sense from a policy point of view.

  39. Good question Troy.

    My thought is that since the prima facie case must be made by the Examiner, it is up to the Examiner to make the case and if the Examiner will be using a foreign priority date, then the Examiner must provide a certfied translation. The object of the first examination is to provide the appliant the opportunity to intelligently decide whether to continue prosecution or not. While I do not know if English has been declared to be the official language that the Office must converse in, I think that historical impetus should dictate that that be the case. I think that the American public, largely being “ugly Americans,” will not tolerate a government that speaks to its inventors in a Babel of foreign languages and then tells that inventor, in essence, “you go figure it out.”

  40. Can someone enlighten me as to the prior art status of foreign origin applications. It looks like examiners can cite a US published application (or patent) as prior art as of its foreign priority date (effective filing date). See 102(a)(2). How will the examiner know what is in the priority application if it is in a foreign language? Will the burden be on the applicant to show that the priority application fails to disclose the claimed subject matter?

  41. I apologize if this posts twice, it didn’t look like the first one went through.

    It seems that under the new statute, at least theoretically, two parties with interfering–and valid–claims could end up litigating against one another. In particular, if a first filer obtains the invention from the second filer and files on it, the second filer could remove the first filer’s application as prior art under 102(b)(2). However, there seems to be no provision that would render the first filer’s claims unpatentable (unless the second filer institutes a derivation proceeding within the required time frame). If the two were to litigate each other’s patents against one another, there seems to be no provision that would invalidate the first filer’s claims (assuming the derivation proceeding time limits have passed). In that case, it seems like both parties could have valid patents to the same invention. Is this right or did I miss something?

  42. Or any activities that are in fact not funded by the federal governement

    Doh! Thanks. Total brainfart.

    Okay, so you do some infringing acts, the costs for which are not subsidized by the Federal government (e.g., because no such subsidies are available for such activity). That means that the prior user defense remains available to you, regardless of whether you were obligated to assign your work to a University.

    Correct? Or did I miss something? And assuming it’s correct, why exactly is this a problem?

  43. Here is his comment:

    "The legislative history confirms that Ned's interpretation is correct. See Sen. Kyle's statements in the Congressional Record:
    Under this bill, if a U.S. inventor publicly discloses his
    invention, no third party’s application filed after that date can be valid because the filing date is what will determine priority, not a purported date of conception. Nor can a third party easily contrive fake prior 
    art to defeat the patent. Under the AIA, only those actions that made the invention publicly available will constitute prior art, and these are much 
    harder to fake than are claims of having secretly made the invention in a private laboratory, again, say, in China. 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.
    Congressional Record, September 6, 2011, S5320.
    Best practice will likely develop where applicants first file a provisional (to protect OUS rights) and then very shortyly afterward publish an expanded version of the provisional to invoke the US grace period.
    Also, the early indications are that some of the Pacific Rim Patent Offices may be willing to adopt grace periods similar to the new 102(b)."

    From post Sep 09 at 6:14 AM
    link to patentlyo.com

  44. “The use of these lingusistic traps has been brought into the light by a select few of pro-patent protectors, and their views have been largely ignored.”

    *huge sigh of relief*

  45. Or any activities that are in fact not funded by the federal governement (there is no link to making such unfunded activities illegal ones, so I don’t know where that thought train came from).

    This does indeed swallow the exception, or rather, provides that the rule itself is exceptionally narrow to begin with (only pertains in areas that are fully and solely funded by the federal government).

    The use of these lingusistic traps has been brought into the light by a select few of pro-patent protectors, and their views have been largely ignored.

  46. “activities …[that] could not have been under taken using funds provided by the Federal Government.”

    What sort of activities are these, anyway? The only types of actvities I can think of that “could not have been undertaken using funds provided by the Federal Government” are activities that illegal per se (e.g., criminal activities), or legal activities that are barred from government subsidization (e.g., abortions).

  47. Ned,

    An inventor’s public disclosure is not prior art and is almost a quasi-effective filing date under the 102(b)exceptions.

    Those exceptions state that a “disclosure” “shall not be prior art.”

    Could that prior public disclosure be used as evidence of what is “obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains” under Section 103?

    So could I take a different reference that is prior art and say a PHOSITA would find the claimed invention obvious over that reference? That probably doesn’t make much sense. But the provision states “before the effective filing date” and the “effective filing date” doesn’t start at the date of the inventor’s public disclosure. A PHOSITA would thus have knowledge of that disclosure.

    Actually, I think this is a flaw in the language. The current 103 section doesn’t have this problem because the PHOSITA is measured at the time of invention. These 102(b) exception disclosures aren’t prior art so they are anticipating. But reading 103 literally, they would almost always seem to present a 103 obviousness rejection. The disclosures happen before the “effective filing date,” so a PHOSITA would have knowledge of them, and thus find the claimed invention obvious.

  48. Ned —

    As I’ve stated elsewhere, I can see this interpretation. And you may be right that this may become common best practice unless and until there is precedent stating otherwise. (With the exception that the client may prefer to keep the invention secret. The client may decide not file a non-provisional, keep it a trade secret, and then rely on the prior user defense in the future if necessary. Anything wrong with that approach?)

    But I hope this interpretation is incorrect. If the “public disclosure” doesn’t have to be enabled under Section 112, then where is the line drawn? I don’t see how this can work practically without absurd results. You could later “invent” something new regarding the same “subject matter” and swear back to the public disclosure even though you hadn’t invented yet what you are trying to claim. This boggles my mind.

  49. As you’ve figured out Jules, Ned is correct.

    However, I hope he is wrong and the “disclosure” does have to be enabling (under section 112). The language is vague. If we don’t get a technical amendment, I could see the Fed. Cir. interpreting it either way.

    If the prior disclosure doesn’t have to be enabling, that provides absurd results. (Of course, there are multiple parts of the statute that could result in absurd results — see the prior post regarding “human organisms.”)

  50. Following up on Professor Rantanen’s comments, has anyone taken a close look at section 5 of the passed bill, relating to prior user rights? Particularly, the section codifies the University exception to the prior user rights defense in 35 USC $ 273(e)(5)(A). But 273(e)(5)(B) provides a confusingly-worded exception: “Subparagraph (A) shall not apply if any of the activities required to reduce to practice the subject matter of the claimed invention could not have been under taken using funds provided by the Federal Government.”

    So, I am confused if the University exception does not apply (i.e., the prior user defense can be asserted) if the invention was achieved through federally-funded research. This would appear to swallow the university exception, although I realize that may have been the intent. The language was changed by the Manager’s Amendment that was approved in the House.

  51. Of course that’s a rhetorical question – the sockpuppet commenter who always pops up with a snarky comment about “tinfoil hats” just posted at 02:52 PM

  52. Was this done as a favor for Kappos because the DC Court was the only venue where Appellants could get a fair hearing?

    Has the sockpupppet commenter who always pops up with a snarky comment about “tinfoil hats” gone on vacation this week?

    That’s a rhetorical question.

  53. The Leahy-Smith Act also moves the venue for 145 (and other) actions to the Eastern District of Virginia.

    Would someone like to comment on the reasons and ramifications of this move?

    Was this done as a favor for Kappos because the DC Court was the only venue where Appellants could get a fair hearing?

  54. Jeff, it appears that a public disclosure removes art regardless of whether the claims are supported in the public disclosure. Read the statute and several posts on this topic by me in this thread. Publishing would seem to be the way to go regardless of filing a provisional.

    Which brings me to the proposal I made below:

    Let’s optionally publish (lay open) provisionals by providing a check box on the cover sheet. That way, we can keep it all in one place, the provisional and the publication.

  55. Brad Peterson in another thread said a common best practice for the future would be to file a provisional application coupled with a full publication.

    This is already common practice for many chem/bio applicants.

  56. Jules, good.

    Now I want you to consider something else about the wording. Note that the statute allows one to remove “subject matter” by showing prior public disclosure of that subject matter. It does not require one to show full section 112, paragraph 1, support for the claimed invention in the prior public disclosure. Rather all one has to show in the prior public disclosure is the subject matter of the reference.

    This operates very much like today’s 131 affidavit does, in stark contrast to the requirements to obtain an effective filing date in a prior application.

    Remarkable, if you think about it.

  57. But if you did claim priority, presumably it would be a moot point? And if you did not claim priority and the foreign publication was not immediate, shouldn’t you regardless file in the U.S. within one year of the foreign *filing* date, because if not you could run into a 102(d) problem? Or did America Invents get rid of 102(d)?

  58. Why do I keep hearing that the new joinder provision is going to cut down on troll suits? Doesn’t it just codify the standard that was already being applied?

  59. My mistake. I was reading (b)(1)(A) wrongly into (b)(1)(B).

    It’s confusing because “disclosure” applies to all prior art, not simply the applicant’s/inventor’s own disclosures. I do know how to read, thank you very much.

  60. I have a proposal: let’s provide an optional checkmark on a provisional application which waives secrecy, meaning that the provisional would be laid open on the day it is filed. (One might reasonably limit this option to those provisional applications electronically filed.)

    Brad Peterson in another thread said a common best practice for the future would be to file a provisional application coupled with a full publication. The provisional would give you a priority date if the claims in the non-provisional are fully supported in the provisional application. However, the publication will remove prior art regardless, it seems, of whether the claims are fully supported in the publication.

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

    Note that if a reference discloses certain subject matter, to remove that reference all one needs to do is show prior publication of the subject matter of that reference. This is equivalent to today’s ability to swear behind a reference by showing invention of what the reference discloses prior to the date of the reference regardless that the claims are not fully supported in the prior invention.

    Once people catch on to this, it will become, as Brad Peterson just suggested, the best practice. So if this is true, and I think it is true, why don’t we make this publication very simple: by essentially laying open the filed provisional. We could do so by simply placing an optional checkmark on the cover sheet waiving secrecy.

  61. Ned, read the statute *** in context ***:

    “(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–

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

    This has nothing to do with antedating. It simply says the inventor’s own disclosures can not be used to deny his patent.

  62. Professor Chien writes: “The law will forbid the NPE tactic of naming unrelated companies in a single lawsuit, and the economies of scale it produces.”

    Forgive my ignorance: Which section of the law is that?

  63. Ned, what in your right mind leads you to believe an applicant will be able to “antedate” a reference with a non-patent disclosure? It’s all about the filing date. Period.

  64. Prof Janicke notes that “the patent would not go to the first to file, but to the first to publicly disclose” – assuming the public disclosure occurs prior to any filings, this would be the case in all first-to-file systems since the public disclosure would anticipate any third party’s subsequent filing.

  65. Is the de facto “prior user” free rider right enough of a right to make that statement?

    After all, while a holder of a “prior user” right is free to enjoy the market conditions created by someone else’s patent, the free rider himself cannot sue for infringement or keep anyone else out of the patented zone.

  66. I recall some discussion by Zoe Lofrgren.

    Also see Pennock v. Dialogue, where the Supreme Court said, albeit in dicta, that allowing an indefinite period of trade secret use followed by a patent was unconstitutional. That is why the Supreme Court invented the on sale bar.

    Now, it wouldn’t take too much to stretch that dicta in a prohibition on protecting the trade secret user from a patent granted to one who actually discloses the invention.

    Now, consider Kawanee. link to supreme.justia.com

    That Supreme Court there said the following:

    “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.”

    “The possibility that an inventor who believes his invention meets the standards of patentability will sit back, rely on trade secret law, and, after one year of use, forfeit any right to patent protection, 35 U.S.C. § 102(b), is remote indeed.”

    Clearly, the on-sale bar was critical to the Supreme Court’s holding in Kawanee Oil. If the proponents of the new statute have their way and its interpretation will allow endless trade secret use without that use invoking an on sale bar, when added to the ability of the trade secret user to fend off a patent by a third party via the prior user right, the case is all but overwhelming that the new statute is unconstitutional.

  67. Mike, yes of course what we are talking about are prior public disclosures by the patentee. If a defendant has a piece of prior art less than a year old, he will still have to ascertain whether it is good, i.e., whether there is a prior public disclosure by the patentee and whether it was sufficient.

    Both will not be simple matters to determine in the ordinary case.

  68. First to file places a larger burden on the independent inventor or small entity.

    As soon as a disclosure is even half-baked, it must be rushed to the PTO, whether it fully enables the subsequent claims or not. There will be a huge pressure on applicants and their patent law firms to file “document provisionals”, just a manuscript or less.

    Then, the clock is set running, less time for the inventor or organization without vast resources to fully develop the idea.

    The result = poorer quality patents, less enforceable patents.

    Or maybe that’s the goal of the Wall Street Billionaires, to gut patent power and make economic power the only power that matters.

  69. There is no mistake so bad that you cannot cover it up with parsley or whipped cream.

    Translation: The power of sugar-coating and obfuscation by the spin-masters is completely evident in the passage of this bill.

    Would you like a little more parsley to mask the taste of the arsenic?

  70. I’m not convinced this is the right reading of the statute. First, only disclosures by the patentee are protected. Later independent disclosures of the same thing seem to not be protected by the grace period.

    Second, 103 says obvious at the time of filing. The current caselaw on 102(b) says that it is not really 103 prior art, but instead a hybrid. While the use of 102(b) art is murky, the short answer is that courts have never used the invention date as an absolute bar. I am confident that they will do the same under FTF – by looking at what’s around at the date of filing to see if something was obvious.

  71. Not only “not punished,” but rewarded. Prior user rights extend to all customers of the “prior user,” so this “prior user” has complete immunity and no risk – the ultimate free rider status.

  72. This provision appears to effectively empower patent owners with the ability to strategically manipulate disclosures to the PTO.

    Keep it secret and only share if you get caught, because after all, you can always share later (if you have to)…

  73. after all, simultaneous invention is a consideration for obviousness, so close in time inventions, even if after the patentee’s, do not present a great harm to a system that is supposed to reward nonobvious advances.

    So let’s redefine obviousness as “anything close”…?

    Not only is the race to the Office made different, the ruling of who wins the race would be made different by this academic. Only those who win the race by a big margin get to have a patent. After all, we shouldn’t burden the administrative state with having to make difficult calls, so any close races must be prima facis obvious and no one should win.

    This varient of Flash of Genius brought to you by…

  74. Information about new inventions is critical to technological progress. By increasing the value of secrecy as an option for monetizing inventions, the Leahy-Smith America Invents Act represents a step backwards in terms of information dissemination

    This backward step regarding dissemination may be a strong argument against the constitutionality of the act (if the word “progress” is taken for the meaning that term held at the Founders’ time – “disseminate”)

    Is there anything in the Congressional record on this point?

  75. Does the removal of Deceptive Intent, regardless of if these removals were due to “determining mindset concerns” (which seems to have been an equally quiet concern) move the law towards the ability to more easily decieve the Office without penalty (bad), or more strict in controlling applicant behavior (good)?

  76. “Innocent early infringement done in private, under certain circumstances, won’t be penalized anymore”

    This line belongs on the “Infringers’ Bible” thread.

  77. suppose a jurisdiction published

    What is meant by “jurisdiction publish?

    on the date of filing. That published application”

    So this is a patent application in the first instance?

    should be effective to antedate all subsequent prior art, provided an US patent application were filed within a year

    What is subsequent prior art?
    Is the “provided” section talking about a second application being filed? By whom?

    Help!

  78. Dan, I don’t see why not. Let’s suppose a jurisdiction published on the date of filing. That published application should be effective to antedate all subsequent prior art, provided an US patent application were filed within a year. One wouldn’t even have to claim priority.

    (The assumption is that the published application supports the US claims.)

  79. Professor Risch suggests that prior art is now more reliable because “the defendant does not know the date of invention.” I think he has failed to fully consider that any such art can, under the new act, be antedated by a prior public disclosure. Whether there was such a disclosure will now have to be ascertained; and, if there was one, whether it was sufficient will also have to be ascertained. (Just for example, without any definitions in the statute, or court cases to interpret its meaning, just how can any lawyer give a reliable opinion on whether a particular prior disclosure was sufficient or insufficient?)

    The reliability issue remains. It’s focus has just shifted a bit.

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