Chisum on the New Rules of Patent Priority

Don Chisum was already a leader in the patent field when his multi-volume treatise – Chisum on Patents – was first published in 1978. His authoritative explanation of the law has been cited by hundreds of court opinions and thousands of law review articles. Mr. Chisum has recently turned his attention to the Leahy-Smith America Invents Act and penned a new article titled Priority Among Competing Patent Applicants Under the American Invents Act. Although he had hoped to produce a straightforward explanation of the new priority rules, Chisum found a series of ambiguities and gaps in the new law that will be important for patent strategists. In a message to Congress, he concluded the paper as follows:

If the America Invents Act were a term paper submitted by a student in a patent law seminar, an instructor would, undoubtedly, send it back with a note: SOME GOOD IDEAS, SOME MUDDLED AND UNSUPPORTED IDEAS, POOR GRAMMAR: PLEASE REVISE AND CLARIFY.

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5 thoughts on “Chisum on the New Rules of Patent Priority

  1. David, I disagree. MPEP 710.06 is the fallback after you’ve pointed out the defficiencies in the first action and a supplemental action issues, but without resetting the period for reply. Then you point to MPEP 710.06 and note the requirement for a new period for reply. What’s your authority for the initial premise that further explanation is due?

    Let’s go with a hypo. Reference A teaches a food processor, B teaches a submarine with a torpedo tube and notes that the submarine can stay submerged for up to 3 months. The rejection says it would be obvious to incorporate the torpedo tube of B into the food processor of A to permit the food processor to stay submerged for up to 3 months, with predictable results. My first question is “how would the food processor be modified to include a torpedo tube” and the second is “how does B tie the alleged benefit to the torpedo tube?” I typically start with KSR and the need for some articulated reasoning with some rational underpinning, but what I’d like to find is a case where the proposed modification is a complete abstraction, as in my hypo, and the Board explains why that doesn’t constitute a rational underpinning. Bonus question, what result here is predictable?

  2. OK, I am only 1/3 of the way into this 87 page essay, but I can tell you already it is typically Chisum, which is to say 90% academic pocket pulling. I mean this is the guy who organizes his books with section and subsection numbers 10 deep, which a lot of people who work for a living don’t have time to wade through.

    Chisum starts off with what he calls a “simple” hypothetical. Simple . . . OK, let’s see how simple.

    The subject matter is a gene and it’s protein transcript. I have yet to see a simple case where the subject matter is genes — the gene structure viz a viz gene function issues alone used to induce nose-bleeds even in Einstein when he was examining. Chisum could have chosen, say, a leaf bag with a pumpkin face, which is technology I don’t have too much trouble with.

    One inventor “A” in S. Korea files in KIPO, discloses in N. Korea, and files a PCT. The KIPO application is flawed because of the patent agent’s screw up. Inventor A visits another inventor’s “B” lab in Kentucky. There are cross-disclosures during the visit, setting up interference/ derivation issues. No dates are given for A’s conception or reduction to practice.

    Inventor A files a “continuing” US application, but never files a parent US application, presumably Chisum means that A filed a national phase of the PCT. A national phase is not a continuing application by any terminology I know of.

    Kentucky inventor B files a provisional and then a PCT claiming priority to the provisional. There is no indication that B ever files a US national phase application or any other application that would be examined under AIA. Chisum seems to be saying that PCT applications are examined under AIA, so I don’t know where he’s going with that.

    Some of these events occur years prior to the effective date of the AIA first to file provisions, and some after. So the timeline is about as straight as a politician’s hind leg.

    This is what Chisum refers to as a “simple hypothetical.” He has taken every imaginable complicating situation, stirs them together in a pot, and concocts a hypothetical that is neither simple, nor likely, and probably not even possible. Now we know who the masochist is who writes the 30% pass-rate PTO bar exam.

    Not sure I have the time or patience to wade through 87 pages of this. Ned, please go ahead and analyze this thing and report back to us. Moonbeams is available for consultation.

  3. I would like to comment on the Wertheim issue.

    We are no longer in a first to invent system. We are in a first to file system which operates on the assumption that prior art is art that is publicly disclosed. Obviousness (inventive step) is exclusively based upon the content of art that is in the public domain, with the exception of patent applications that are accorded prior art effect as of the earliest filing date (to which they are entitled). Any interpretation of the new statute should keep these principles in mind, and should abandon notions that are dictated by prior invention, which gave the first inventor a stake in the sand that could not be disrupted by a subsequent inventor filing first.

    In other words, the first inventor could expect to obtain a patent on his invention and to preclude others from obtaining patents on the same invention and obvious variations regardless of when they filed. The same is no longer the case from a policy point of view. The first filer of an application that supports a claimed invention has a right to exclude others from claiming that invention or obvious variations from it. Note that I said the first filer of an application that supports the claimed invention. This is different from the filer of an application that does not support the claimed invention for one reason or another from being able to exclude others from what is disclosed even though he himself has no right to a patent because of lack of disclosure.

    If the patent application filed by the first filer does not support a claimed invention, the first filer has no right to claim that application’s filing date as his filing date in CIP applications. From a policy point of view, what justification is there then, for denying a second filer a patent on an invention that would be obvious were the first filers original application be counted among the prior art. I would say there is no justification.

    For this reason, I would strongly urge the patent bar to support an interpretation of the new act such that the doctrine of In re Wertheim continues, and that is that a reference cited against another be accorded an effective prior art date as of the date that reference itself is entitled to a filing date, and not earlier.

  4. “SOME GOOD IDEAS, SOME MUDDLED AND UNSUPPORTED IDEAS, POOR GRAMMAR: PLEASE REVISE AND CLARIFY.”

    I’d dearly love to send back Office actions with this…

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