2011 Recap: The Practically Important Elements of the America Invents Act of 2011

As a new year begins, Paul Morgan reflects on the practical importance of the Leahy-Smith America Invents Act of 2011 – the major patent reform effort that was enacted in September 2011. Although admittedly oversimplified (like any short-list), Paul's list provides some food for thought for patent strategists. He looks forward to comments.

By Paul Morgan

1. Regarding the hyper-hyped "first inventor to file" replacing of "first to invent" — the number of situations in which two different parties file patent applications on the same or substantially the same invention, and the second to file obtains valid dominant patent claims, is miniscule (now less than 20 a year). Cases involving invention "derivation" are a small percentage of even that miniscule number. In other words, the removal of alleged prior "invention date" arguments is not a significant AIA change.

2. The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art. The AIA provides a considerable simplification (albeit with a few ambiguities). Also, most prior art will now become instant "bars-to-patentability." U.S. application foreign priority filing dates and foreign public disclosure dates both becoming U.S. prior art dates will provide a significant prior art increase. The ending of PTO Rule 131 alleged prior invention dates declarations "swearing behind" earlier prior art dates will have a limited effect on some patent grants, but little or no effect on successfully litigating patents. [Rule 131 declarations are ex parte, uncontested, and often inadequately examined, so they rarely survive litigation challenges and easily raise inequitable conduct issues.]

3. Delaying filing patent applications after publicly disclosing one's invention is foolishly dangerous now, and will remain so. It will also continue to destroy foreign patent rights. There is a [sole remaining] one year "grace period" for doing that, but that grace period is ambiguous as to its disclosure extent requirements and effect. Delaying the filing of at least provisional applications for new products still under development will become more dangerous even if kept secret, due to the above changes in prior art and its effective dates.

4. The AIA significant increases the value of trade secrecy protection (instead of or even in addition to patenting) for any inventions which can be kept secret while being commercially exploited. There is potential dual IP protection from the AIA elimination of "best mode" defenses. Even more so if disputed ambiguities in AIA 102(a)(1) are held to overrule the long-established Metalizing Engineering doctrine that "forfeits" patenting after having already commercially exploited an invention, which would allow tacking on full term patent protection after unlimited years of trade secrecy protection. A rather surprising impact of "patent" legislation.

5. The ability to eliminate any inequitable conduct defense before patent litigation is provided in the new "Supplemental Examination." [An ex parte reexamination solely for patent owners to request and participate in, and thus a potentially powerful new tool for patent enforceability, although its PTO rules and actual usage remain to be seen.]

6. Ending the "false marking suits" plague and the naming of numerous defendants in the same patent suit [to avoid venue transfers] is already accomplished. Also, there is a new "virtual" marking system that really ought to be used.

Finally, the practical effects of many other text-extensive AIA changes, such as the new or amended and Board-run inter partes reexaminations and 9 month only PGR opposition systems, are too soon to predict. Especially given their potentially dangerous estoppels, predictable higher costs, un-issued PTO rules, and the limited number of them that the PTO will accept each year.

120 thoughts on “2011 Recap: The Practically Important Elements of the America Invents Act of 2011

  1. If they were trying to build a progressive patent system The concieved intellectual property of the first inventor would be recognized as the parent patent and require subsiquent improvement patent filings to be dependant on the parent meaning a requirement for collaberative improvement must occur for the second filer to gain anything This preserves the incentive to create.

  2. Ned,

    Is this the type of thing that you were pressing for?

    It seems to me that the entity desiring to use a foreign reference would naturally be the one that must provide an English transalation of that reference. It makes no sense, then, for the Office to not be responsible for providing that translation if it is the Office initiating the use of that foreign reference. Babbel Boy in his 10:54 post captures this well.

  3. Reguarding item 1 of the review you cant call this anything less than inventor fraud and political corruption. If your actually not awarding to the actual inventorbut rather the second filer that had the disadvantage of fileing first then everyone wants to file second not first so fraud. Saying that there is only 20 incidents per year is saying there is only 20 frauds that were now allowing. No doubt concerning the 20 most valuable inventions. so now whats your incentive to create and file I say none and human advancement stops so next year youll have 0 thefts as people become hip to the rip

  4. Ned,

    You may be pleased to note that the proposed 37 CFR 1.290 requires any third party submitting documents to provide English translations of all relevant portions of the submitted documents that are not in English.

  5. Bagel Boy, just to clarify, the issue of a grace period is not strictly the question at issue. The grace period applies to one’s own disclosures. Removing intervening prior art applies to third-party disclosures or patent applications.

    I think that what Congress was trying to do with respect to the latter was that they were trying to provide a categorical presumption that if the inventor makes a prior public disclosure of certain “subject matter” (note that this is not the same thing as the invention) that subsequent disclosures or patent applications describing that same subject matter (note again that this is not the same thing as the invention) will be categorically presumed to be derived.

    Regardless, all the statute requires to remove the reference is a demonstration that the “subject matter” of the reference that is being cited against the applicant’s patent application was publicly disclosed first by the applicant.

  6. I knew I only had 30 seconds to get that correction in, Max, before you spanked me. I just barely beat you to the buzzer. LOL.

  7. Nurse Chapel, just to make it clear to you, if I have not, I agree with the court system, with the cited article, with you, with Kirk, Spock, Sulu and with Bones that a prior art rejection based on section 103 must be enabling when considered as a whole. It cannot be based upon science fiction – alone.

    But that is not the issue here.

  8. Babble Boy, I hope you are right.

    However, all I asked for in the end from Mr. Native was an MPEP cite, or case cite, to support his, and now your, assertion that this was legally required of the examiner if you press him.

    Note there's a subtle difference here as well between relying on a foreign language publication and relying on and English-language patent that has a foreign language priority date. If you ask the examiner what text he is relying on, he will cite the text from the patent. If you ask him to justify his assertion that the English-language patent is entitled to the foreign priority date, he will cite the priority claim on the face of the patent.

    What we need I believe is a new rule that actually requires the examiner to provide a translation, a certified translation, if he does rely on the foreign priority date. I will clarify things quite a bit, as we are in a situation here with the fall of the Hilmer doctrine that we have never been in before.

  9. (that’s the fiction part, anyone can dream up anything and merely writing about these make believe things cannot serve as appropriate 103 items).

    Science fiction is a very strong motivation to combine other references, when the use of the other references is apparent. Notice that whenever someone comes up with a new example of experimental quantum weirdness, all the newspaper and magazine headlines talk about Star Trek-style transporters.

    Pretty sure a hoverboard would also be an obvious modification in view of fiction if someone discloses the propulsion system in isolation.

    At least under the current system you can swear a 131 affidavit that you conceived of the claimed invention prior to stardate 1312.4.

  10. Ned,

    You seem to be sidestepping the issue of whether or not Science Fiction is suitable 103 material.

    Looking at Mr. Sulu’s example in his post, clearly, Science Fiction will typically pre-date any ability to remove the Science Fiction reference (that’s the fiction part, anyone can dream up anything and merely writing about these make believe things cannot serve as appropriate 103 items).

  11. Knee jerk reaction: In your “So” para, Applicant has definitely “shot himself in the…” wrt foreign whenever his pre-filing publication is enough to support an obviousness attack.

    Care to clarify what you had in mind?

  12. It’s gonna’ get interesting.

    Ned has previously warned that using this new public disclosure 1 year grace period will cut off foreign rights.

    BUT now he seems to say that applicant gets the grace period so long as he publicly discloses the subject matter, even if not enabling the claims.

    BUT David seems to argue that foreign rights are not cut off if the disclosure is not enabling.

    WHILE Max seems to argue that enabling in EPO is irrelevant to obviousness.

    SO, putting this together, US applicant who makes a non-enabling public disclosure of the subject matter less than one year prior to US filing will get the benefit of the grace period in the US and foreign so long as the reference is used in an obviousness rejection.

    BUT, US applicant who makes enabling public disclosure of the future claims less than one year to US filing will be OK in the US but has shot himself in the foot w/ respect to foreign.

    Let us all pray that Pauline is still on the bench when this first hits the CAFC.

  13. Yur shifting the goal posts, aren’t you, Ned.

    Native’s position is absolutely correct, at least in my experience.

    I have often forced the examiner to either state on the record that he is relying on an English abstract [in which case I dissect him] or provide an English translation of the foreign patent. What I usually get in reply is a machine generated “translation” that would not possibly hold up, even before the slanted BPAI. The problem is that the examiner did not have the translation before entering the rejection but then goes back and tries tho shoe-horn the rejection into the translation.

    This is a common examiner bluff that you HAVE to call them on.

    If you can make a valid argument that AIA somehow changes the PTO’s obligation to provide a translation of a reference it relies on in a rejection, wuld luv to see it.

  14. Mr. Sulu, we agree that US law requires that the prior art considered as a whole must disclose the invention and must enable one to make and use the invention. We also seem to agree that this does not require that a particular reference disclose the entire invention, or that a particular reference disclose how they make and use the entire invention.

    I suspect that we can further agree that the effective date of the prior art for prior art purposes probably is the date the whole package becomes enabled, but I have never seen a case on that issue.

    Regardless of all of the above, if the examiner is citing a reference disclosing A, all one has to do to remove that reference is to show prior public disclosure of A. It makes no difference whether A is enabled. That simply is not a requirement of the statute.

  15. Hey, NOT, thanks for the reference. But, trust me, applicants do not have to file translations of foreign priority documents unless they actually intend to rely on them to prove entitlement to priority.

  16. Paul,

    How about an article listing the top ten “ambiguit[ies] needing fixing in a technical corrections bill“?

    Nominations…?

  17. Ref. 1 discloses A, but no enablement. Ref. 2 discloses how to make A. The examiner combines both in a rejection. Why not?

    Think. Say Ref. 1 is science fiction written 50 years prior to Ref. 2. What priority date are you giving this combination?

    Think. If, as you indicate, Ref. 2 discloses how to make “A,” what is wrong in using Ref. 2 on its own? Clearly, Ref. 2 is enabling. There is no need to reach back to the fiction of Ref. 1. Is fiction something that is truly “in the art,” as that phrase is understood in the patent sense?

    Granted, in the 103 analysis, enablement is a matter of the references “as a whole,” and each reference need not enable, but if you read the Lincicum article closely, it does not stand for the idea that science fiction is 103 worthy. See especially footnote 55.

  18. where in the statute

    There is more to law, especially patent law, than what is in the statute.

    Ignoring the judicially created law is not advisable.

  19. to require foreign applicants to file certified translations of priority documents as a condition of obtaining the patent grant.

    See 37 CFR 1.52(b)(1)(ii)

    You are welcome.

  20. Perhaps.

    I too often disagree with the Federal Circuit.  But here, I tend to agree with it.

    Think.  Ref. 1 discloses A, but no enablement.  Ref. 2 discloses how to make A.  The examiner combines both in a rejection.  Why not?

    I suspect you would say that the applicant could get a patent over such a combination?  Really?

  21. There is confusion in this answer =

    prior art as a whole…

    remove a reference that alone…

    Which is it? Alone or as a whole?

  22. Well, NOT, we learn something every day, do we not?  

    It would be nice if you could provide Patently O and the whole patent bar an MPEP cite or Fed. Cir. case on point.

  23. on the assumption that support exists

    Assumptions do not carry a prima facie case. Period.

    There is no need to address this by rule, the law is already clear. If an applicant wants to use something, the applicant is free to provide the translation. If the Office wants to use something, it must provide the translation.

  24. Shatner, I am afraid that you did not read my posts as a whole or if you did, you did not understand them.  I specifically referred to a Harvard Law Review article to describe the enablement requirements for 103.  Why don't you click the link and read the article, particularly at page 558.

    When you have read the article. Please report back.

    Thank you.

  25. irresitable because of its ironic truth

    Again, the political rhetoric drowning the actuality of this bill Law is astounding.

  26. Native, I've thought about objecting that the examiner has not presented a prima facie case if he doesn't show support in the priority document (provisional application) but I have always taken it upon myself review the provisional and object that there is no support if that is the case in fact.  I think that is how things will work with foreign priority documents as well.  The Examiner will cite the US patent effective as of the foreign priority date on the assumption that support exists.  The will force us to obtain a translation to rebutt the examiner if there is no support or insufficient support.

    Native, I think this issue is of such importance that the Director should address it by rule.  What I would do, were I the Director, is exercise my authority under 119 to require foreign applicants to file certified translations of priority documents as a condition of obtaining the patent grant.  (This will at least defer the translation costs for a number of years.)  Otherwise, we will be shifting costs of translations away from foreign applicants and onto US applicants generally, meaning, US inventors.

  27. The question: Can science fiction be used for 103 rejections.

    The answers:
    MM: Yes
    Ned: Yes

    Think about it. Science Fiction is FICTION, make believe, not real.

    Seriously folks, get a life.

  28. I understood what the situation was.

    My question still stands. Isn’t there a requirement that English be used?

    I know that an application is itself required to be in English (or its equivalent, that is, a translation provided and sworn to its accuracy).

    I know that an Examiner is required to present his response so that an applicant can make a decision how to proceed.

    If the Examiner is allowed to cite a reference that is not understood, then the Examiner has failed to carry his burden of persuasion.

    In order to carry his burden, the Examiner must provide a rejection that can be read.

    Therefore, the rejection must include a translation, if the Examiner is relying on some portion of the earlier cited reference for that earlier date.

    Please note that there is a difference in citing a reference that is an application, that is a publication and that is a patent. If the Examiner is reaching back to the earlier priority date, then the Examiner must provide proof that that earlier version supports his argument. The Examiner therefore must be the one that supplies the translation.

  29. I repeat my earlier response as it fits in here as well.

    Prior art is a knockout if it makes the invention “available to the public”.

    An inventor can shield himself from third-party prior art if he can arrange to “publicly disclose” the invention (as eventually claimed). This is an alternative to filing a patent application. Effectively, a public disclosure generates a virtual filing date.

    These quoted phrases are different expressions. The concept that an inventor can shelter himself against subsequent prior art by arranging to “publicly disclose” an invention is a novel construct for a patent law. I don’t know what will be required to constitute an effective, protective public disclosure. But European jurisprudence requires that prior art be enabling, at least in the sense that the invention must have been “made available to the public” in order to qualify as prior art.

    I’ll let you tell me what we can expect the US courts to do with this legislation. But the safest procedure is to file 1st with the best disclosure that you can generate and then upgrade the disclosure with further filings when you see that this is appropriate. Unfortunately, written documents don’t always tell the full story, but a public demonstration of a working embodiment with full access to members of the public must qualify as an adequate public disclosure. That’s why I suggest that these combinations of procedures are the safest course.

  30. Paul F…

    Thanks for your very pragmatic take on things as they seem to appear to be right now. However, as you allude to, there is much to be clarified between when the gavel went down on the *Legislation* that is be *phased in* over the next 2 years or so. One aspect that has me pretty nervous is what will happen with the Prior User Rights, as the language included in the bill seems to be somewhat contradictory and ambiguous. What in the world did they mean by “or otherwise available to the Public”? Would that be an enabling demonstration or just an article in a Trade Journal, or just a rudimental document about when they started doing what? Maybe just the NPA itself with all the claims included would suffice for an answer, provided they happened to file in time.

    I would like to Second Paul’s suggestion that practitioners get a bit pro-active if no other reason than their clients’ best interests, by going to the comment section at the USPTO and get busy trying to mitigate at least a little bit of the damage that the AIA might inflict upon smaller entities. link to uspto.gov

    The new 9-month only Post-Grant-Review program has me especially nervous, as it seems to shield challengers for the most part, and would seem to be somewhat of a loose cannon until Congress can spell things out a little more clearly. Notably, any number of entities can challenge, but they all just get one bite at it, but I for one can think of at least two ways around that. Since they never even finished the language of the bill in the first place, there would seem to be no particular fine print to examine, at least as far as I have been able to discern.

    Please go and comment if you get a chance, as Director Kappos has been asking sincerely for guidance for about 3 months about how to implement the AIA, and I really think he deserves some intelligent professional opinions to help him and et al try to get things right at the Get-Go.

    Best wishes,
    Stan~

  31. I have been away from my desk and am flattered to see such an exchange. This is a very import part of the new legislation. Here’s my understanding.

    Prior art is a knockout if it makes the invention “available to the public”.

    An inventor can shield himself from third-party prior art if he can arrange to “publicly disclose” the invention (as eventually claimed). This is an alternative to filing a patent application. Effectively, a public disclosure generates a virtual filing date.

    These quoted phrases are different expressions. The concept that an inventor can shelter himself against subsequent prior art by arranging to “publicly disclose” an invention is a novel construct for a patent law. I don’t know what will be required to constitute an effective, protective public disclosure. But European jurisprudence requires that prior art be enabling, at least in the sense that the invention must have been “made available to the public”.

    I’ll let you tell me what we can expect the US courts to do with this legislation. But the safest procedure is to file 1st with the best disclosure that you can generate and then upgrade the disclosure with further filings when you see that this is appropriate. Unfortunately, written documents don’t always tell the full story, but a public demonstration of a working embodiment with full access to members of the public must qualify as an adequate public disclosure. That’s why I suggest that these combinations of procedures are the safest course.

    I look forward to where this thread may eventually lead.

  32. Wrong master inventor creates the lions share of new jobs when the patent system starts working correctly and thats not yet

  33. I think I get it now, Ned.

    Malcolm, Max and I were taking about two filings by the same inventor and the first filing potentially being prior art to the second under 102(a)(2). It is not. But in Europe, under the analog provisions of the EPC, it is.

    As noted upthread, this is true in the EP for novelty purposes only (not inventive step). As for clueless applicants being “appalled”, well, maybe they should have done just a tad more legal research before dropping the big bucks in the EP.

  34. Here is a very appropriate and timely comment published today by Hal Wegner:
    “Last month in GPX Intern. Tire Corp. v. U.S., __ F.3d __, 2011 Westlaw 6371903 (Fed. Cir. 2011)(Dyk, J.), the court provides guidance on its view of statutory interpretation, particularly legislative reenactment, as well as Chevron deference.
    The statutory interpretation issues aired in this case will be replayed over and over and over again in the coming decade as the Federal Circuit will be called upon to interpret less than artfully drafted statutory provisions in the new Leahy Smith America Invents Act, Publc Law 112-29 (2011).”

  35. Re the extensive above arguments about whether or not a public disclosure has to be “enabling” or not to trigger the only remaining grace period [or filing applications by the inventors of what was disclosed within one year], and to what extent something that might not meet 112 requirements for a provisional could overcome prior art filed or published before the period claimant’s belated filing date?
    That is precisely why my AIA summary indicates that this new grace period is ambiguous, both as to what is required to trigger it, and its effect. The statute itself is not specific. Senator Hatch in the Congressional Record at or slightly after the Senate passage does use the word “enabling” but others in that same reported discussion of the AIA did not. [Just to add to your confusion.] The PTO will have to have to making calls on that when they start examining AIA applications in a few years, and those who have guessed wrong about what this statute means will risk losing later. Which is another good reason not to rely on this grace period unless forced to, e.g., by some professor-inventor who insists on publishing before filing for his own self-interests rather than his university’s.
    This is a good example of an ambiguity needing fixing in a technical corrections bill.

  36. IANAE.  I agree — but only to an extent:

    There is always an internal debate about the risk of not filing.  The risk is that someone else will discover the process and will file suit based on the fact that you are both producing the same product and therefor must be using the same process.  (Discovery will soon demonstrate whether or not the the process is actually being used.)  

    In contrast, if the public domain product does not provide any reliable information about the process being use, it might be better to keep the  process secret even under today's law.  

  37. Malcolm, Max and I were taking about two filings by the same inventor and the first filing potentially being prior art to the second under 102(a)(2).  It is not.  But in Europe, under the analog provisions of the EPC, it is.

    We were not talking about 102(a)(1) at all.  But, I will agree with you that if the earlier filing was published more than a year prior to the second filing, the first filing is prior art to the second filing based on its publication date. 

    But, the whole topic of discussion between Max and myself was the self-collision problem of two patent application that are potential prior art to each other based only on 102(a)(2) type considerations.  We were not talking about the earlier filing being prior art because it was published.  We were noting the difference between US law and Euro law on self collision only.  

  38. I would argue that only fools will file on trade-secret-protectable processes in the future, as they will not obtain exclusive rights if they do disclose.

    I would argue that only fools file on them now. If you could have kept it secret, then so can an infringer. And what do you care if someone else gets a later patent, so long as you can keep your own infringement secret?

  39. So much for fulfilling the constitutional mandate by rewarding inventors with EXCLUSIVE rights in exchange for their disclosure.

    I would argue that only fools will file on trade-secret-protectable processes in the future, as they will not obtain exclusive rights if they do disclose. Instead they will be granted a piece of all but worthless paper named a patent; worthless because of the uncertainty of prior user rights. One can even argue that the law may allow you to practice the trade secret invention for as long as you can keep it secret and still allow you to obtain a patent once the secret has leaked. Why rush?

  40. Excuse me, Ned? Please confirm that your earlier statement (“FTI remains in the statute to the extent that one’s own earlier filings are not prior art”) is incorrect (or misleading at best) to the extent it ignores the fact that the grace period is limited to one year.

    My 2:04 pm is accurate. Your earlier statement is not.

  41. "to the extent that" 

    Obviously, we are talking about 102(a)(2), the new equivalent of the former 102(e).  It reads,

    "(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."

    The new statute, like the old, applies only when the referenced application is by a different inventive entity.

  42. Yes, complete public policy consistency is not an AIA feature. There are features benefiting patent enforcement by eliminating defenses as well as features expanding some.
    Although I supposed one could note that the prior users statute is only for prior COMMERCIAL users who have at least given the public the benefit of the invention in their commercial products, even though they will now get to conceal the invention in how to make the product without having to worry much any more about someone else re-inventing and getting a patent on the same invention later on and suing them.

  43. It appears that FTI remains in the statute to the extent that one’s own earlier filings are not prior art.

    For the love of patent jeebus, Ned, can we please try to keep the basic facts straight? Inventors have one year to seek patent protection for their inventions that they have disclosed to the public, directly or indirectly. It’s called a “grace period.” After that year, those publications (whether they are published as patent applications or journal articles) are certainly prior art against new attempts ((i.e., non-continuation/divisional filings) to patent any inventions disclosed therein.

  44. Surely there have been additional jobs created for all those charging for all the CLE courses that patent attorneys and agents will need for working under the AIA? Perhaps even some more jobs in the malpractice insurance industry?
    [Sorry, just a bit of irresitable sardonic humor.]

  45. Yet small entities create the lion’s share of new jobs.

    At least with respect to “small entities” who rely on the patent system, this statement is completely false.

    Keep shilling, though.

  46. You are fully entitled to your opinion, and parts of it may have some validity, but quoting speeches from some patent-law-clueless-politician as a source of authority as to what the AIA is all about is not going to convince anyone. Especially given the overwhelming support this legislation got from both political parties after its six years of prior Congressional Committee debate and amendments [during which most the patent bar was basicly ignoring it].
    What is needed now is specific, concrete suggestions for a “technical corrections bill” to “fix the fixable.” “Just vote no to anything” is no longer an option for legislation that is already law.

  47. when a key purpose of a patent system is disclosing useful arts to the public rather than keeping them secret.

    Curious, then, why are we rewarding Trade Secret Holders with the advanced Prior User Rights section…?

  48. Understood, but the argument for the other side is that it is not “fair” to award patents to those who delayed filing as compared to someone who filed, OR publicly disclosed, faster, when a key purpose of a patent system is disclosing useful arts to the public rather than keeping them secret.
    Also, many inventors are enamored of “first to invent” [as an appealing slogan] because they erroniously think that having a bare conception [without an actual reduction to practice or continuous dilligene], gives them a “first to invent” date for their bare conception date, and that is simply not the law, which is 35 USC 102(g) and its case law. It’s their myth that is being ended.

  49. Funny No its a tragedy because now job creation wont happen until genuine progressive reform happens

  50. I thought the goal of the IPO and AIPLA was harmonization?

    Why would you think that? Forever and a day has it been pointed out that the AIA would not be a harmonization with ROW.

    Are we to be surprised now that AIA does not harmonize? I think not.

  51. Agreed. And you could add the new AIA grace period for public disclosures. [Note that “achieving full harmonization” was NOT among my list of top AIA features. But you have to admit that it will be somewhat closer in other prior art respects.]

  52. Spock, you are now confusing prior art with the applicant's public disclosure.  The prior art as a whole must be enabling, but a particular reference does not.  Read the linked article beginning at page 558.

    The question is whether one's own prior disclosure must be enabling to remove a reference that alone is not.

  53. Glacier, there is no requirement to file in the U.S. if you file in another country, as long as you get a foreign filing license for your draft application from the USPTO first, which is not difficult. [In fact, filing only in some small foreign country with a fast laying-open proceedure in an language most people cannot read can provide a defensive publication value with a low risk of any competitor reading it until you need to use it.]
    But what was the other “requirement” you were referring to?

  54. That would be incorrect sir.

    Your way of thinking would make each piece of science fiction ever written have a critical date as of the date of writing of the science fiction when in the future that science fiction is no longer science ficiton but science fact due to a later person’s actual invention.

    Such is eminently illogical.

  55. Max, I thought David was arguing that the applicant's prior public disclosure had to be enabling of what it disclosed in order to remove a reference that had an effect prior art date subsequent to the public disclosure and prior to the applicant's filing date. 
     
    I don't think the statute can be read that way.  All I think the statute requires is that the applicant disclose what the reference discloses, do so first, and do so publicly.
     

     

  56. Sure it can. 
     
    Ref 1 illustrates the transporter.  But it discloses no means to build it.
     
    Ref. 2 illustrates how to build it.
     
    Together 1 and 2 disclose and enable the transporter.
     
    Now, can I remove 1 if I earlier publish the all the details of Ref. 1, but not Ref. 2?  Ref. 2 enables both my prior public disclosure and the prior art ref. 1.
     
    I say yes.
     
    The statute does not say no.
     

     

  57. science fiction cannot be used for 103 rejections, can it?

    Why not? Science fiction is often a very straightforward expression of how we would like the world (and everything in it) to be. Why should it not be used as evidence of motivation to combine prior art, if nothing else?

  58. Max, thanks. 
     
    It appears that FTI remains in the statute to the extent that one's own earlier filings are not prior art.  I wonder why we didn't change that in going to FTF?  Oversight?  I thought the goal of the IPO and AIPLA was harmonization? 

     

  59. No one?

    I think every congressman, senator and even the President mentioned that “job creation” was going to be a benefit of the AIA.

    Exactly how the AIA was supposed to lead to this was not mentioned by anyone, at least with a straight face…

  60. Perhaps Mr. Lincicum is mistaken and the leading to absurdities belongs to the inclusion under 103 of anything “not enabled.”

    After all, science fiction cannot be used for 103 rejections, can it?

  61. >>>Well well, it is refreshing to finally read that anyone posting on this blog, who also seems to be American, sees the F2F as not a big deal. Good for you Paul Morgan (and MM who even implied it was a good thing).<<<<

    I think what Paul and most of the others are saying is that the impact from switching to F2F will not be great. I agree with that sentiment, too. But many of us (including myself) opposed F2F on the ground that it is not “fair”.

  62. Off the top of my head, start with checking the blatently favorable provision for universities in the greatly amended “Prior Commercial Users” section.

  63. MM I am only too well aware that invalid patents can have considerable “licensing” [or “shakedown”] values for all the potential defendants who will settle to avoid litigation costs, deposition and discovery harrassments, and jury trials.

    But, everyone will now have an even greater choice of reexaminations, in which a Rule 131 declaration invalid on its face, especially to any competent APJ in any inter partes reexamination [or easily challenged in the discovery the AIA will provide], can easily lead to fast slam-dunk claim cancellations.

  64. OK Ned, here goes.

    The EPO routinely cites against the novelty of claims under examination documents that the EPO has published after the date due to the claim under examination. We call them Art.54(3) documents.

    It can do this if the disclosure prejudicial to novelty, found in the 54(3) ref, was filed at a PTO earlier than the date of the claim.

    Now here’s the thing. The EPC makes no distinction between the 54(3) docs of others and the inventor’s own 54(3) docs. As far as I know, that will not be so at the USPTO. Here in Europe, Applicants from outside Europe are often surprised, even appalled, when they discover that their own earlier filings are fatal to their later filings.

    This is what I mean by doing it once and getting it right first time. As an Applicant in Europe, you don’t get a second bite at the cherry. Ironic: I bet you those in the USA who are most vehement that the PTO Examiner must get it right first time are, at the same time, most vehement that the EPC is wrong, to impose the same pressure on an Applicant.

  65. Ned could it be that French and I are both referring to publication by Applicant only AFTER that Applicant files at the PTO, whereas you are assuming that French is urging Applicant to publish BEFORE filing at the PTO?

    David, are you there? Can you help us?

  66. David, OK. But just to avoid confusion here, that enablement standard is with respect to the reference. In the US, I believe enablement now only applies to 102, and not to 103.* To anticipate, the reference must be enabling. But even if a reference is not enabling, it still might be used under 103 to invalidate the claims if combined with other art or knowledge of one of ordinary skill.

    Now, your post seem to suggest that “enablement” is a requirement of the applicant’s prior public disclosure in order to remove a reference that itself may not be enabling. There is nothing in the statute to even suggest this, as far as I can see. Further it would lead to absurdities if required.

    *See, e.g., Lincicum, “A KNOT IN THE ETERNAL GOLDEN BRAID: SEARCHING FOR
    COHERENCE IN THE RELATIONSHIP BETWEEN
    ENABLEMENT, ANTICIPATION, AND OBVIOUSNESS,” Harvard Journal of Law & Technology, Volume 23, Number 2 Spring 2010, at 598

    link to docs.google.com

  67. Don’t we get into the “science fiction” realm if it is not enabled?

    “Enabled” is most definitely an issue, albeit, an inherent one. Mere speculation, of which identity of subject matter may encapsulate, is not enough.

  68. Max, I don’t care under what statute the prior art is cited. All that is required to remove it is that the subject matter of the reference that is used against the patent in prosecution be publicly disclosed by the applicant before the effective date of the reference (and within one year of the applicant’s filing date.) Enablement is not an issue at all. It is a question of identity of subject matter of the reference and of the prior disclosure.

  69. “patent reform”

    “This is not a patent reform bill” Senator Maria Cantwell (D-WA) complained, despite other democrats praising the overhaul. “This is a big corporation patent giveaway that tramples on the right of small inventors.”

    Senator Cantwell is right. Just because they call it “reform” doesn’t mean it is. The agents of banks, huge multinationals, and China are at it again trying to brain wash and bankrupt America.

    They should have called the bill the America STOPS Inventing Act or ASIA, because that’s where it is sending all our jobs.

    The patent bill is nothing less than another monumental federal giveaway for banks, huge multinationals, and China and an off shoring job killing nightmare for America. Even the leading patent expert in China has stated the bill will help them steal our inventions. Who are the supporters of this bill working for??

    Patent reform is a fraud on America. This bill will not do what they claim it will. What it will do is help large multinational corporations maintain their monopolies by robbing and killing their small entity and startup competitors (so it will do exactly what the large multinationals paid for) and with them the jobs they would have created. The bill will make it harder and more expensive for small firms to get and enforce their patents. Without patents we cant get funded. Yet small entities create the lion’s share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” This bill is a wholesale slaughter of US jobs. Those wishing to help fight this bill should contact us as below.

    Small entities and inventors have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Congress tinkering with patent law while gagging inventors is like a surgeon operating before examining the patient.

    Those wishing to help fight big business giveaways should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.

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

  70. In reply to Ned, the novelty standard “available to the public” originated in Europe at the “Strasbourg Convention” (check Wikipedia) in 1963. After it was adopted as part of the PCT and European Patent Convention the courts in Europe ruled that something wasn’t “available to the public” unless the disclosure was sufficient to enable others to re-create the invention. I assume that American courts will follow European jurisprudence.

  71. Well well, it is refreshing to finally read that anyone posting on this blog, who also seems to be American, sees the F2F as not a big deal. Good for you Paul Morgan (and MM who even implied it was a good thing).
    In my little country, as in other non-US countries, we have been doing just fine with F2F, despite experiencing pressure from clients at times, who think a patent application is quick and easy.
    I wasn’t sure I’d live long enough to see what I’ll call “harmonization” in this regard.

  72. Does it not depend on whether the prior publication is cited under 102 or under 103?

    In Europe, if it ain’t enabling, it ain’t a novelty destroyer but, for obviousness, a hint or suggestion is all you need.

  73. Can we discuss how unharmonised the world is, on the issue of earlier filed but later published patent applications? In particular I have in mind:

    1. Your own earlier filings, when later published, prejudice novelty in Europe but not in the USA

    2. Earlier filings, if not earlier published, are unavailable in Europe for obviousness attacks, but are so available in the USA.

    I see enormous scope for mutual misunderstanding, between EPC land and the USA, leading to filing policies formulated by individual applicant entities that fit in one of these jurisdictions but are a disaster in the other.

  74. David, where in the statute does your limitation of applicant public disclosures to “enabling” come from? All I see in the statute is that prior public disclosure must be of the subject matter of the reference. That, meine freunde, is a whole different kettle of fish.

  75. Palmer and IANAE see it in line with my 30+ years of experience under the EPC. Seldom does the case hang on the disclosure content of a priority document. When it does, the prio is typically in English. Very often the paragraph structure of the prio is just the same as that of the WO.

    Yes there are ticklish cases, where the prior art is a reference with 6 prio dates at the JPO, and only if the prejudicial matter is entitled to the earliest or next to earliest prio date is it a problem. Great fun they are, especially when the parties oppose each other.

    But when you as Applicant are in that situation, you yourself want to know exactly how you stand. Before you end up litigating you want to carry valid claims through to issue. If a competitor filed on much the same matter, on much the same date, don’t you want to know which of you dominates the other? Under FtF, it is (at some expense) relatively easy to work it out for sure.

  76. This is the way it works in practice, so you might be right.  However, I always check provisionals for support and find that many do not have it.  However, foreign patent applications which typically do not add new matter when being filed in the US.  In the ordinary case, they should have support for the prior art rejection.  But time will tell, and I may be wrong.

  77. “The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art.”

    This is the big message, and we should thank Paul for announcing it so clearly. As of March 16, 2013 US patent law will operate on the basis of “absolute world novelty” in respect of initiatives by 3rd parties. Any event occurring anywhere in the world that makes an invention “available to the public” will qualify as prior art. This will be true both with respect to anticipation and in respect of obviousness. This is an elevated standard for determining when inventions are patentable.

    This is the standard that most of the world lives by. This is the standard that will apply to both American and foreign inventors. Foreigners will no longer have the advantage of the old “local novelty” rules regarding offers for sale and public use. This is important now that more than 50% of US patents are granted for inventions by foreign inventors, a ratio that will rise to 60% and 70% in the near future.

    Apart from policy considerations and the national good, a key issue is how American inventors should change their behavior. They should file early and file often. They should publish their inventions, preferably by public presentation of working prototypes, as soon as possible. This will ensure that an “enabling” public disclosure will have taken place, thereby barring others from obtaining a patent on the disclosed technology.

    Congratulations Paul for focusing attention on the most important issue.

  78. Now US patents and applications are effective as of their foreign priority dates, which is normally 18 months earlier.

    Which is really when they should be effective as prior art, assuming they’re entitled to their priority.

    and we can and should expect a dramatic increase in translation costs because of it.

    You won’t have to translate the priority application in every case. Many rejections citing even English-language art are based primarily on the figures (I assume because examiners don’t have time to read the spec in depth), and you don’t need a translation to see whether the same figures are present in the priority document. You might have a colleague down the hall who reads German or Japanese well enough to help you out to the minimal extent required – e.g. ascertaining whether a particular key feature is mentioned. Sometimes you can tell by the reference numerals scattered throughout the spec that the priority application is identical to the cited US application.

    And then, of course, there are the situations where a simple machine translation gives you enough material to traverse the rejection.

  79. Can you name the other benefits that are special to universities? I am genuinely curious (I do believe you).

    Thanks!

  80. No doubt we already have to translate foreign language references. But until this year, they have been effective as prior art only as of their publication dates. Now US patents and applications are effective as of their foreign priority dates, which is normally 18 months earlier. This is going to make a lot more foreign-priority art available against US patents, and we can and should expect a dramatic increase in translation costs because of it.

  81. Native, we are talking next year where US patents and applications will have effective prior art dates as of their foreign filing dates, assuming support in the foreign-filed case. This prior art effect is regardless of language of the priority case. Thus a US patent application can be cited as prior art effective as of its foreign filing date, where the foreign-filed case is not in English.

    What this will do, IMHO, is shift to applicants against which such prior art is cited the burden of translation, when that burden should be upon the original applicant claiming foreign priority. 35 USC 119 allows the Director to require such translations when benefit is claimed. However, it is my understanding that the yet-to-be-ratified PLT forbids such a requirement to obtain the benefit of priority.

  82. And like I stated before the PP Application price being raised is a perfect way to get the revenues necessary to bring the USPTO up to speed, all Politics aside!

  83. I don’t understand why if you are from the US that it is a requirement, and that if you File in another country you must file here also. That could very easily be Law. It would fix the Black Hole!

  84. I agree with Ned – the Office does a lot of things without support.

    That’s why we have the backlog and the ever growing mountains of RCE’s and Appeals.

    But isn’t there a requirement that English be used?

  85. With all due respect, the office already uses provisional filing dates without demonstrating support.  Why should we expect anything different when the priority is foreign?

    Sent from iPhone

  86. It depends on what language the priority documents are in and the language abilities of counsel, plus the availability of existing translations. However, in any case, the Examiner is likely to assert that the priority document supports the reference whether it does or not, and we will have to prove them wrong if we can. If it is in French or German I will be able to read it, and the Examiners will have to go back to their in-house translators if they try to assert something that it does not actually say. If it is in Japanese, which is more likely, then they will rely on the machine translations (of the published app) by the JPO because they fall so readily to hand, and I will most likely have to do the same unless my client is Japanese, which some of them are. This is no different than the existing situation for foreign art per se. I have already had a situation where a Japanese client provided a translation of a Japanese reference that differed from the machine translation, and which the PTO examiner accepted after consulting one of their own translators.

  87. This may force a lot of us to translate the foreign priority documents just to see if the priority document supports the prior art rejection. Such translations will drive up prosecution costs big time

    Nonsense.

    It is still up to the Office to provide the persuasion. Merely citing an untranslated foreign reference will not avail and the examiner will not have performed his duty to inform the applicant.

    The Office will need to provide a certified translation, not the applicant.

  88. Bottom line is that obtaining a patent is 98% of all that is required in The Game of Patents.

    Corrected.

    And that’s a generous 2% set-aside.

  89. Paul, the expansion of what is prior art will probably impact most of us very soon as Examiner will, for example, now cite references effective as of their foreign priority dates. (Hilmer overruled.) This may force a lot of us to translate the foreign priority documents just to see if the priority document supports the prior art rejection. Such translations will drive up prosecution costs big time, that is, unless the Office implements a rule that requires an applicant to file certified translations of foreign priority documents. (I understand that such a requirement would violate the (still unratified) Patent Law Treaty, which means, it will be a cold day in H before the Office proposes such a rule.)

  90. Paul, I know you realize this, but it should be pointed that there is a large universe outside of the Federal Circuit where patents are important. And Rule 131 decs have certainly been used to obtain a significant number of patents (I’ve never been a huge fan of such decs for the reasons you allude to; of course, that doesn’t mean they have never been helpful or necessary).

    Bottom line is that obtaining a patent is 95% of all that is required in The Game of Patents. Focusing on what happens in patent litigation can be misleading and this is one of those circumstances. Elimination of Rule 131 decs is certainly significant. All that said, I believe our patent system will be improved by ditching the silly “first to invent” system.

  91. I agree, especially with your last sentence [and universites got a few other special benefits]. But since the result of the fee-breaks part of the AIA is just to stick large entities with even more direct subsidizing from their own PTO fees of the PTO fees for small entities and universities than they get hit for already, it did not make my abreviated list of AIA changes of really major impact. But thanks for noting the dangerous pitfalls for micro entities.

  92. Agreed, and thus I seperately treated the two. But I have yet to see any study suggesting a favorable litigation success rate for patents obtained by using Rule 131 declarations. Over the years I have seen more than a few Rule 131 declarations uncritically accepted by examiners that are insufficient or invalid even on their face, leaving the prior art “sworn behind” [or its earlier bar equivalents] very much still alive and undistinguished. Furthermore merely ex parte swearing behind someone else’s filing date is not the same as having to provide 102(g) proof of an invention date prior to the invention date of the prior art when a patent is litigated.
    In other words, I am questioning the significance of the elimination of Rule 131 practice by questioning its real world effectiveness in obtaining enforceable patents, even though it has been all to easy to use such sworn statements to get allowable patents.
    Worse, as noted to Max above, all three of the only three Fed. Cir. decisions I found even mentioning Rule 131 declarations did so in connection with serious inequitable conduct issues as to those very sworn representations. They are Digital Control Inc. v. Charles Mach. Works, 437 F. 3d. 1309 (Fed. Cir. 2006); Greenwood v. Hattori Seiko Co. Ltd., 900 F. 2d. 238 (Fed. Cir. 1990); and Hoffman-LaRoche Inc. v. Lemmon Co., 906 F. 2d. 684 (Fed. Cir. 1990)

  93. Thanks for the summary, Paul.

    I think it would be helpful to say a word about the micro-entity “innovation” of the AIA because a lot of patent promotion hacks are already misrepresenting it. It is certainly not what it is cracked up to be. It is, in fact, Leahy’s disdain for small inventors codified.

    The micro-entity legislation could provide up to a total of about $10,000 savings over the life-times of 4 micro patents that small entities are allowed. That is calculated with respect to what small entity status would save because any micro would automatically have been eligible for small entity savings. Some online hacks are advertising much larger savings on the basis of 75% discount compared to large entity.

    However, the fine print taketh away, as the saying goes. There is the four strikes and you’re out provision. If your client has ever filed 4 US applications in their life, he/she is SOL. The statute does not start the 4-application limit with the effective date of the micro entity provisions. As it reads, any 4 applications will pull the plug on the benefit. So it is penalizing active small US inventors who have filed and paid for 4 applications/patents before the law takes effect. Why should small entities who have been active inventors in the past be penalized now? I’m struggling with this.

    But it gets even more weird . . . if your client is a grounds keeper at a university, or if your client is a $10M per year college football coach, then they are automatically micro entities. They are super-micro-entities because they can file as many micro applications as they want and not lose their micro status. Sky’s the limit, baby, because Section 123(d)(1) is a HiEd loop-hole.

    According to 123(d)(1), merely by being employed by an institution of higher education means a person is automatically defined as a micro entity. The definition is based on the person’s employment, not the subject matter of the invention. The invention does not have to be connected in any way to the employment. Better yet, no means testing. No need to be “small.” And the 4 strikes rule doesn’t apply.

    The mind boggles at the lobbying that went on to get his loop-hole inserted.

  94. Paul,

    As far as “First to File”, it isn’t just about the small number of instances in which two (or more) inventors came up the the “same” invention. The main tool which AIA took away from patent practitioners was the 131 declaration used to swear behind all prior art including secondary references. To me, this is the much greater loss.

  95. Max, since you are asking what I think, rather than fact sources, I think the real concern is to a considerable extent something else. Namely, patent attorneys concerned about getting sued for malpractice for not filing applications fast enough under the AIA to get file ahead of someone else, combined with widespread missunderstanding that the present first to invent system somehow fully protects them from that.
    I don’t think either is justified by real world interference practice case law and outcomes, or the very small number of successfull malpractice cases [if any] based solely on a not-reasonable filing delay. Given a choice in an interference of a premature rush filed application that was filed first with arguable 112 support for only one species example, as opposed to a much better written but significantly later filed application with several examples supporting generic claims, I would have taken the former given the way interferences work in the real world [but I cannot speak for others]. Rule 131 declarations cannot be used against interfering applications, and as noted above frequently create patents that can easily lead to inequitable conduct issues in litigation – including all three of the only three Fed. Cir. decisions I found mentioning Rule 131 declarations.

  96. Paul, under First to File, when you have got as far as an enabling disclosure of…..something…., is it ever still too early to file?

    I ask because of the criticisms of First to File I have received from Americans, over the years, that it encourages premature filings of unripe subject matter, to the detriment of the usefulness of the patent system. I reply that it does not, that people don’t file too soon because filing too soon and then counting on the priority benefit given by the Paris Convention, can cost you your patent position, everywhere.

    But what do you think?

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