Patented or Described in a Printed Publication

By Dennis Crouch

The newly revised 35 U.S.C. § 102 states that no patent shall issue if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…” 35 U.S.C. §102(a).

My question for the hour is whether (or not) the word “patented” in this fundamental provision is entirely superfluous. In other words, when is a claimed invention “patented” but not described in a printed publication? I should note at this point that the pre AIA Section 102 also includes the statement that an invention is not patentable if it was already “patented or described in a printed publication.”

Patented but not Published: It is largely safe to assume that patents are published and, therefore, any disclosure found in a patent should also be considered to be “described in a printed publication.” A narrow exception to this aforementioned assumption can be derived from regular SNAFUs that occur in patent offices around the world that allow for patents to issue without actually being published. Historically, some countries also granted patentee’s a period of post-grant secrecy. US courts have ruled that these foreign patents still count as patented under the statute so long as the secrecy is only temporary and the patent is eventually and meaningfully “laid open for public inspection.” See In re Kathawala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993) and In re Carlson, 983 F.2d 1032 (Fed. Cir. 1992). The statute covers patents issued in any country and because the US has no direct control over how any particular country publishes its patents, the “patented” clause has the potential of potentially becoming meaningful if countries decide to again limit publication.

Patented but not Described?: There is also some potential that, even when a patent is published, a particular element in the prior art will covered by the patent claims but not sufficiently described to qualify under the “printed publication” leg of the clause. The enablement and written description requirements of 35 U.S.C. § 112 (as well as their worldwide equivalents) largely eliminate this possibility. However, the truth is that patents regularly issue that are directed to particular inventions but that are not fully enabled by the specification. In those cases it is quite possible that an invention be “patented” without being “described in a printed publication.” (Of course, this may be unlikely because US courts have placed such a low enablement requirement on prior art).

Thoughts?

65 thoughts on “Patented or Described in a Printed Publication

  1. You may find Bain v. Morse, 2 F.Cas. 394 (D.C. Circuit Court, 1849) enlightening. There, the Commissioner of Patents Edmund Burke is quoted discussing the then current status of English Patent law which allowed a patent filing to be initiated by the submission of a working model and thereafter a specification. Hence, if the specification was lacking but a patent was nevertheless allowed, an invention could be patented and yet not fully “described in a printed publication.”

  2. Good example. I had a patent issued to a client where all the drawings were the wrong drawings. PTO would not republish the patent, but it was kind enough to issue a CofC.

  3. @Ned: It is sad that the adverb has died: He putts terrible.
    It is sad that the subjective pronoun has died: Me and Joe went to the store. Joe is older than me.
    It is also sad that the correct spelling of supersede is on life support.

    Must be hard to grade the LSAT these days.

  4. Doctrine of equivalents.. …equivalents of an element claimed are not necessarily published anywhere in print, yet they are covered by the patent grant. So patents are broader than a printed publication since they are interperted more broadly than the mere printed words of a litteraly identical publication. So when are patents broader than a printed publication? Whenever the patent is interperted
    to include equivalent elements not literally mentioned in the printed patent.

  5. Zack,

    You are being too literal with the “printed” notion.

    Electronically published is considered “printed.” That’s why provisional applications which are “printed” via hyperlink in PAIR realted to published non-provisionals (which have a priority claim to the provisional) afford those provisionals with a “printed” status.

  6. Something could be patented, yet not described in a printed publication, in a situation in which patents are never “printed”, and instead only issued electronically. Maybe a U.S. applicant who never prints out a copy of their patent and never gets a ribbon copy; maybe a foreign jurisdiction that only publishes them on the web; or (perhaps more significantly) maybe the U.S. in a few years. A bit of a stretch, but it’s a thought.

  7. Doctrine of Equivalents
    I don’t believe that something which is otherwise covered by the doctrine of equivalents is necessarily described in a printed publication or in a patent. Rather, this is an equitable finding by a court. Therefore, if there is a claim in a published patent and an applicant filed for an invention that would be equivalent to the claimed invention in the patent then the applicant’s claimed invention is invalid due to being previously patented. That is my analysis. Let me know if you disagree.

  8. I made a point not to look up in the same place when searching. I made a point to never speak of it to anyone. Not even the cookies could tell what I was searching. So who? Is my TV still wired for sound and vision.

  9. And the history illustrates why “patented” was put into the statute in 1836. The form of the specification, handwritten, for example, was deemed irrelevant.

  10. In fact Ned, as my article pointed out it wasn’t even clear that a typewritten document qualified as a “printed publication,” but only documents created by a printing press. But the Patent Board of Appeals resolved that issue in 1937 in the case of Gulliksen v. Halberg which agreed that a typewritten thesis qualified as a “printed publication” bar (there was also a vociferous dissent in Gulliksen).

    Whether microfilm qualified as a “printed publication” was as even more controversial issue with the CCPA ruling in the 1958 case of In re Tenney that it didn’t (but there were later SDNY and 3rd Circuit cases that went contrary to Tenney). But in 1981 (23 years later), the CCPA overruled Tenney, and held that microfilm could qualify as a “printed publication.”

    In short, the definition of what is a “printed publication” has had an interesting legal history.

  11. I can come up with one scenario: Printing error.

    Patent publishes with the PTO forgetting to include FIG. 2 (it does happen). Claims cover the embodiment of FIG. 2 and meet 112 via disclosure of FIG. 2 only.

    Invention is patented (and is valid under 112 as this is a pure PTO mistake) but the publication of the patent does not describe the invention until it is later corrected.

  12. See 35 U.S.C. 181 Secrecy of certain inventions and withholding of patent. “Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.

  13. EG, thanks.

    Then perhaps we are left with the situation where the patent issues before the spec is published?

    Regardless, in 1836, it was not clear that a handwritten specification was a printed publication.  

  14. A point to understand is that the issue of whether it is “patented” is a legal inquiry, whereas “described in a printed publication” is a factual inquiry. That gives a litigant two ways to skin the cat to prove invalidity from patents. Please note that the language is NOT “described in a patent or printed publication”

  15. Were the word “patented” to be left out of the statute after all these years then you can bet your bippy that some suit would argue that because Congress removed “patented” from AIA 102, Congress intended to exclude patents as PA. You think I’m kidding, but some lawyer would actually argue that.

    It’s way better than some of the “interpretations” of the AIA that have been argued here. And that’s not saying much.

  16. I do Ned. See In Ex parte Hershberger, 96
    U.S.P.Q. 54, 57 (Pat. Off. Bd. App. 1952), where the Patent Office Board of Appeals later held that a thesis in typewritten, as well as handwritten form, was a “printed publication” in part because of the permanent character of the ink. I cited Hershberger in my article on applying the “printed publication” bar to electronically posted documents: link to vjolt.net . Hope that helps answer your question.

  17. I get the point now – you’re right that patent is a printed publication afterall (barring secrecy order). That makes me wonder if “patented” was included to avoid any ambiguity between the term “publication” when exclusively referrring to patent app. pub. and distinguish it from the printing/publishing of the patent upon issuance.

    That also makes me think if the word “printed” is superfluous too. But that’s a different debate I think.

  18. Despite the original purpose…perhaps it can now serve to satisfy the fact that the patent has an effective date as of its filing date, although it had not yet been published at the time of filing…?

  19. Yeah–secrecy orders. I had an infringement case in the 70s involving patent applications sequestered in WW II then in Korean war…..They were issued in the 19060s….

  20. I have another thought for why “patented” may not be superfluous relative to “published”: for “patented” inventions, we go back to the earliest “effective filing date” of the “patented” invention for 35 USC 102(a)(1) purposes. That’s based on what will be new 35 USC 100(i)(1) which defines what “effective filing date” is for a claimed invention in a patent or patent application; new 35 USC 100(i)(1) doesn’t distinguish between what “patents” or “patent applications” are prior art under new 35 USC 102(a)(1), versus those “patents” or “patent applications” which are being evaluated for patentability against that prior art. The courts (e.g., Federal Circuit) might say otherwise, but there’s usually a strong presumption against a statutory provision being deemed “superfluous” unless it’s clearly such (i.e., no plausible circumstance that the term could apply). And reading the term “patented” to refer back to the “effective filing date” of the patent doesn’t offend new 35 USC 102(a)(1) as that “patented” invention would be before the “effective filing date” of the “claimed invention” currently being evaluated for patentability udner 35 USC 102(a)(1). Yet another “language landmine” in the AIA (the Abominable Inane Act).

  21. “Simplifying the law might actually reduce ambiguities or future ‘nitpicking arguments’ that try to misconstrue the general intent of 102 to a particular client’s benefit.”

    I was thinking the opposite: “patented or described in a printed publication” is a clear reminder that an 1860 “Vanity Fair” article is equivalent PA to a 2011 patent, thereby letting the courts quickly cut off arguments that only one or the other qualifies without listening to a lot of expensive yada yada from the lawyers.

    If including the word “patented” reduces even one $500/hr suit’s specious oral argument by 5 minutes, then it’s justified, IMHO.

    Were the word “patented” to be left out of the statute after all these years then you can bet your bippy that some suit would argue that because Congress removed “patented” from AIA 102, Congress intended to exclude patents as PA. You think I’m kidding, but some lawyer would actually argue that.

  22. “That on the filing of any such application, description, and specification . . .”

    Yeah, and while we’re on the topic of idigt redundancies in statutes, strip the redundancies out of this one and see what you have left.

    The only valid conclusion to this entire discussion is that congressional aides who draft legislation are law-school trained, hyper-verbose, muddleminds who are convinced that the more words you can spew, the smarter you look.

    Law schools do a lot more damage than good, not just in this profession, but in the world in general. It can take decades to recover from law school brain-washing.

  23. I find many terms to be superfluous when alongside “published”. Simply define “published” correctly in the definitions, and then leave the 102 statement as published, in public use, on sale or otherwise known to the public.

    I have always thought the particular references to patents as prior art was a bit odd: They are published, much like trade journals, so ‘publication’ should suffice. Likewise “application publications” are … publications. Simplifying the law might actually reduce ambiguities or future ‘nitpicking arguments’ that try to misconstrue the general intent of 102 to a particular client’s benefit.

  24. A patent publication must have enablement for its own claims. It may not be enabling for bits and bytes used by an examiner in a 102 rejection of the claims in another application.

    In that sense “patented or described in a printed publication” may mean either “claimed in a patent or application (patented)” or “described in a printed publication, including a published patent or application, with sufficient details to provide an enablement”.

    Most 102 references cited in rejecting an application claim something different from the claims of the rejected application. The claims of the rejected application are not “patented” by the 102 reference. When the bits and bytes of the 102 reference do not directly support its claims. They may not provide an enablement for the claims of the rejected application. MPEP 2131 “The elements must be arranged as required by the claim” may help in rebutting such rejections.

  25. I think you can look at a different way. Switch the patented and printed publication labeling in your Venn diagram and the statute makes complete sense.

  26. Yes, although I am not so sure he is that unreasonable. But, Bob certainly was against interferences and certainly knew European patent law backwards and forwards.

  27. I think this is right.

    The statutory language was added in 1836, apparently at a time when the specification of a patent was not necessarily published at the time the patent was granted. It wasn’t until after World War I, I recall, that the courts in the United States finally held that a laid-open patent application was a printed publication. So at the time language was added in 1836, it was not clear that laying open a patent constituted a printed publication. (I suspect actually, that most specifications were then handwritten.)

    What we can gather from this history is that the date an invention is patented is the critical date provided that the specification describing the invention is or becomes available to the public even if such availability does not constitute a printed publication.

  28. That goes the other way (i.e., something may be a printed publication without being patented). Can something be patented without it also being a printed publication? I don’t see how, given that patents are by their nature printed.

  29. When they’re classified (actually referred to as a Secrecy Order case) they do not issue. They get a notice of allowability but are not passed on to issue until the secrecy order is removed. A case that was filed in the 50s issued recently, after a secrecy order was removed.

  30. Thanks Alun, but you might want to check the spelling of the German word Muster.

    These granted-then-published petty patents are hardly “extinct” are they? For example, how many unexamined rights did the Chinese Patent Office pump out, last year? Looking to the future, will they ever get cited as prior art, in a US court or at the USPTO? If so, as of what date?

  31. Max has said all that needed to be said. I had thought all these exceptions were extinct, but the Gebrauchsmuester may still be one.

    (The extra ‘e’ in the way have spelt it replaces the missing umlaut accent that isn’t on my keyboard – Max would be aware that you can write it either way, so this note is for the benefit of the Americans)

  32. Dennis, I’ll bite. Take a disclosure, prejudicial to novelty, in a patent application pending somewhere in Europe. The date of publication of the patent specification is later than the date of patent grant. This neatly gets round the problem how the PTO printer shall incorporate in the printed publication any “last minute” changes to the app that were filed just before the projected publication date.

    Where there has already been an 18 month printed A publication, the issue is academic. But some Patent Offices (Italy) don’t A publish but, instead, just “lay open” their file at the 18 month stage.

    How about a German 10 year utility patent (Gebrauchsmuster). That is published for the first time as a granted patent, on a date a few weeks later than its date of grant. So, which date, grant or publication, “counts” for prior art purposes, under US law?

  33. Just a note. I scanned the Curtis defenses and generally found that “patented” meant that the invention was described and enabled in a prior patent’s specification. Whether the specification was actually published, i.e., distributed to the public, was not important.

  34. By Whom?

    By everyone. Must have been the day you were tending to your wife, burying your grandmother and wrestling with the dog who had eaten your homework.

  35. Of what real use is Curtis, which is written for law that has now been twice superseded?

  36. Curtis discusses the provision between Section 98 and 99, p. 84 of his text.

    “used in any foreign country ; it not appearing that the same or
    any substantial part thereof had before been patented, or described
    in any printed publication.”
    § 99. These provisions are not very skilfully framed, but when
    collated, they leave the rights of an original inventor in the fol
    lowing position: that an inventor who does not consciously bor
    row from a foreign discovery, that is, who believes himself to be
    the first inventor or discoverer of the thing patented, can only be
    deprived of the benefit of his patent, by showing that the thing
    had been before patented, or described in some printed publica
    tion. It will not be enough to show that the thing had been
    known or used in a foreign country, if it had not been patented,
    or described in a printed publication. Thus, while the statute
    still continues the presumption that the patentee has seen the prior
    description contained in a printed publication, and makes that pre
    stlmption conclusive,l it relieves an original inventor from the
    same presumption, arising out of the mere previous knowledge or
    use of the thing in a foreign country where it had not been pat
    ented or described; and if he can take the oath that he discovered
    or invented the thing, he will not be debarred of his patent, by
    a prior invention or discovery and use of the thing in a foreign
    country. The meaning and operation of the terms” patented”
    and” described in’ some printed publication” will be considered
    hereafter in connection with the subject of Defences. ”

  37. A claimed invention could be patented but not described if its a “black box” means plus function claim. Such a claim fails to provide adequate structure to support the claimed function, and thus fails the written description requirement (along with other portions of 112). The Aristocrat and Blackboard decisions are good examples. This is also a good example of when an originally filed claim could fail for lack of written description.

  38. 35 USC 374: “The publication under the treaty defined in section 351(a) of an international application designating the United States shall be deemed a publication under section 122(b), except as provided section 154(d).”

  39. The question here is what patent application that is not published could nevertheless be deemed published?

    A: provisionals.

    Recall that there was some debate on whether a provisional was “published” or merely “deemed” published by the existing hyperlink in PAIR.

  40. RK The question here is what patent application that is not published could nevertheless be deemed published?

    Perhaps the language is intended to address a lurking time zone issue where a first application was “published” on a particular date
    (with the date indicated on the publication) in a first time zone but, with respect to someone on the other side the planet, was not in fact published until after a second application was filed (or vice versa)?

  41. Another such statutory construction minefield in the AIA is in Section 102(a)(2) stating that one is entitled to a patent unless “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 question here is what patent application that is not published could nevertheless be deemed published?

  42. Fixed, in 1836, patents may not have published written description. Yet, see my post below, the language was added to prevent the inventor himself from patenting the invention anywhere in the world prior to applying for a patent the invention in the US. The clearly was intended to prevent double patenting in the US.

  43. I think, based on the later passage of 102(d), that the patenting referenced in the statute was meant to specifically include the patenting of the invention by the inventor himself anywhere before he applied for the patent, and perhaps even for a second time in the US. In other words, it was added, in part, to prevent double patenting by the inventor himself in the US. I am not so sure that at the time, 1836, that patents were printed publications.

  44. The language first appeared in the Patent Act of 1836, Section 7 (Walker on Patents, p. 571):

    SECTION 7. And be it further enacted, That on the filing of
    any such application, description, and specification, and the
    payment of the duty hereinafter provided, the Commissioner
    shall make, or cause to be made, an examination of the alleged
    new invention or discovery; and if, on any such examination,
    it shall not appear to the Commissioner that the same had been
    invented or discovered by any other person in this country prior
    to the alleged invention or discovery thereof by the applicant,
    or that it had been patented or described in any printed publi
    cation in this or any foreign country, or had been in public use
    or on sale with the applicant’s consent or allowance prior to the
    application, if the Commissioner shall deem it to be sufficiently
    useful and important, it shall be his duty to issue a patent
    therefor. But whenever, on such examination, it shall appear
    to the Commissioner that the applicant was not the original and
    first inventor, or discoverer thereof, or that any part of that
    which is claimed as new had before been invented or discov
    ered, or patented, or described in any printed publication in
    this or any foreign country, as aforesaid, or that the description
    is defective and insufficient, he shall notify the applicant thereof,
    giving him, briefly, such information and references as may be
    useful in judging of the propriety of renewing his appli
    cation, or of altering his specification, to embrace only that
    part of the invention or discovery which is new. …”

  45. “the patent itself may be the first such publication

    Even if it is the first publication, the point of the question is that a patent is a printed publication, so you just reinforced his point that (barring a secrecy order) the reference to “patented” was unnecessary because the set of patents is a subset of printed publications.

    The question was not whether something could be described in a printed publication without being patent. That is obviously true.

  46. An invention could be “patented” by having a patent issued with claims directed towards the invention.

    However, the patent itself may be the first such publication if a non-publication request was filed with the filing of the patent application.

    In an alternative scenario, the printed publication could be non-patent literature with a proper prior art date (e.g., a journal paper). In that case the invention could be “described in a printed publication,” but not “patented.”

  47. How are inventions that are allowed but subject to a secrecy order handled? Imagine uncitable prior art!

  48. This is not new patent law language, it’s the same words as in present 102(b), so would not prior case law interpretations fully apply?
    As Hal Wegner just observed, “Last month in GPX Intern. Tire Corp. v. U.S., (Fed. Cir. 2011) ..the court provides guidance on its view of statutory interpretation, particularly legislative reenactment,..”

    AIA 102(a)(1) and other AIA provisions have other such arguably now superflous words. Perhaps left in for “insurance,” perhaps to make the public feel better about tne new laws and to make them look less of a change? Or just, as Hal says, “less than artfull drafting?” But at least this one does not seem to be of significance.

  49. My question for the hour is whether (or not) the word “patented” in this fundamental provision is entirely superfluous.

    A: Except for the “patented but not published” caveat, the term is entirely superfluous.

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