Guest Post by Dr. Jeffrey Lefstin on USPTO’s Proposed First-to-File Rules

This morning the patent office published its proposed rules relating to the transition to a "first-to-file" system (available here).  Below, Dr. Jeffrey Lefstin of the Hastings College of the Law offers his initial thoughts on this important set of proposed rules. - Jason

Guest Post by Dr. Jeffrey Lefstin

On July 26, 2012, the USPTO published proposed Rules and Examination Guidelines for implementing the first-inventor-to-file provisions of the America Invents Act.   While the content of the proposed Rules is largely technical, the Office stakes out some substantive positions on the prior art provisions of the AIA in the proposed Examination Guidelines that are sure to raise controversy.

Secret Commercialization a Bar?  At least since Judge Learned Hand’s famous  Metallizing Engineering opinion in 1946, secret commercialization of an invention by the inventor -- but not third parties -- has triggered the statutory bar.  The rationale of this doctrine has been to discourage inventors from enjoying a pre-patent period of commercial exclusivity in addition to the exclusivity of the patent term.  While the AIA did not directly address the Metallizing rule, the AIA’s new 102(a) added a category of events triggering the statutory bar.  In addition to the traditional triggers of the statutory bar – patented, described in a printed publication, in public use, or on sale – new 102(a) adds a catch-all “or otherwise available to the public before the effective filing date of the invention.”  According to the USPTO, by adding “or otherwise available to the public,” Congress intended that only “public” sales of the invention – not secret or private commercial activity – should trigger the statutory bar. Nonetheless, the Office is seeking comment from the public on the role of “public availability” before issuing its own interpretation of “on sale” under new 102(a).

Leading commentator Hal Wegner points out that earlier versions of the AIA – such as the Patent Reform Act of 2005 – would have explicitly overruled Metallizing, by restricting prior art to sales from which one of ordinary skill in the art could readily “gain access to”  and “comprehend” the invention. That such provisions were removed from the final legislation suggests that Congress did not intend to negate the Metallizing rule, but in the end the Federal Circuit will almost certainly have to resolve this question.

Use and Sale Protected By Grace Period.   Section 102(b) of the AIA provides a limited grace period and preclusive effect for pre-filing disclosure by the inventor.  Specifically, under 102(b)(1)(A) a “disclosure” made one year or less before the effective filing date of an application is not prior art if the disclosure was made by the inventor (or a joint inventor, or one who obtained the subject matter disclosed directly or indirectly from the inventor). Under 102(b)(1)(B), a third-party disclosure of the same subject matter less than one year before filing is not prior art if the inventor has previously disclosed the same subject matter.  The AIA did not define “disclosure,” leading to questions about whether public use or sale would be excluded from prior art if by the inventor, whether use or sale by the inventor would preclude later disclosure by third parties, or whether third party use or sale would be precluded by prior inventor disclosure.  Under the USPTO’s interpretation, “disclosure” under 102(b) encompasses all the prior art  categories of 102(a):  patented, described in a printed publication, in public use, on sale, otherwise available to the public, or described in a U.S. patent, published U.S. patent application, or WIPO published application.  Accordingly, public use or sale by the inventor can trigger the preclusive effect of 102(b), and third-party use or sale can be precluded by prior inventor disclosure.

Preclusive Effect Nearly Eviscerated?  Perhaps the most radical stance taken by the Office in the Guidelines is its treatment of the preclusive scope of a prior inventor disclosure under 102(b)(1)(B) and 102(b)(2)(B).  Under these provisions, third party disclosures and patent applications are not prior art if the “subject matter disclosed” had previously been disclosed by the inventor.  Prior inventor disclosure therefore precludes later disclosures of the same subject matter from being prior art.  But this provision leads to a critical question:  when do an earlier and later disclosure disclose the same subject matter?  What if the later disclosure is not identical, but an obvious variation of the inventor’s earlier disclosure?  What if the earlier disclosure is broader than the later, or vice versa?  Is the use or sale of a physical thing (or intangible process) the same subject matter as a verbal description – which by necessity covers a multitude of physical entities?  The AIA leaves these questions unanswered.  In a Patently-O post last year, I outlined two possible approaches the courts and the Office could take for determining the scope of preclusive effect, and the identity of earlier and later disclosures.

In the proposed Guidelines, the Office takes a third route:  only exactly identical third-party disclosures are precluded by prior inventor disclosure. According to the proposed Guidelines:

Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

The exception under 102(b)(2)(B) is similarly limited. Thus, according to the Office’s interpretation, if the inventor discloses her invention on January 1, and a third party independently discloses a trivial and obvious variation on January 2, the third party’s disclosure is not excluded from prior art (and, of course, renders the invention unpatentable as obvious under § 103. Although the Guidelines do not address the case of specific versus generic disclosure, or physical use versus verbal description, the Office’s denial of preclusive effect for a trivial variation suggests that it would deny preclusive effect in these cases as well.

If the position in the Guidelines is sustained, the AIA’s grace period with respect to later independent third-party disclosures would seem to be nearly eviscerated.  Moreover, even where the later third-party disclosure was actually derived from the inventor, the inventor will face the difficult and complex task of proving derivation, rather than simply relying on the preclusive effect of his own earlier disclosure.

Of course, the Office’s proposed Guidelines are at the moment just that – proposals.  And even if adopted, they would ultimately be subject to the decision of the Federal Circuit – which, though it grants considerable persuasive weight to Office positions, does not accord them Chevron deference on substantive questions of patent law.

The proposed Rules and Guidelines are open for public comment until October 5, 2012, and are available here.  The Office will also be discussing its proposals at “roadshows” to be held in Alexandria, Atlanta, Denver, Detroit; Houston, Los Angeles, Minneapolis, and New York in September.

71 thoughts on “Guest Post by Dr. Jeffrey Lefstin on USPTO’s Proposed First-to-File Rules

  1. Are you surprised?

    Who else is wrong as often, yet accuses everyone else of “tilting at windmills?”

    Reply
  2. So the DPAI nice touch after getting caught. Where would I be had I not made that notation? Military State? wow this is some serious S@#t! And we will give you the rights you have been fighting for as long as we get these from her and you make no waves. So that is why the Gay Lawyers were all I got!

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  3. And the FTF is really another way to do it because it now has been exposed. They figure there is more than one way to steal from the small inventor? No wonder they let him have his Whammo. That would at the very best be an America only sale.

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  4. So when Wenzel lied to me and told me to tear up the Foreign insurance form, but had ther signature for something else to defraud me from, that is where they came up with the brilliant idea to steal from the people to support the Military. And this is why you tried to do it to me again. And what would that make me with a design Patent? Weak at best? and then making the cost of the Trademark crazy high?

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  5. “Well, they have to come up with some kind of interpretation.”

    They don’t have to make a rule.

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  6. Max,

    “it would make the statute not really First Inventor to file.”

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  7. Ned,

    I have watched how your b_sterdized views of Golan have evolved and quite frankly do not have the bandwidth to correct those errant views.

    The expression of “Golan does not suggest that Congress has the power to withdraw from the public domain knowledge that has long been part of the public domaincould not be more wrong. The public was very much “firmly vested” (an odd choice of words).

    Again, your view of what Pennock means is skewed at best and I do not have bandwidth to disabuse you of your errors. Your latching onto this “equitable doctrine” is meaningless as we both know that it is Congress that writes the law (not the Supreme Court), and Congress can full well overwrite Pennock (and further, as I have already noted, you are conflating state law on trade secrets with the notion of time limits for patents).

    There are just too many loose ends that you need to address for us to engage in a meaningful discussion one snippet at a time. I only foresee me chasing you endlessly to acknowledge points that I already know to be true (whether you choose to acknowledge or not).

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  8. They do not have to say they explicitly over-ruled Pwnnock.

    1) Pennock does not say what you think it says. Let’s avoid the rehash of our many discussions on that topic.

    2) Thoughout the legislative process (and on page one of the bill), it is clear that the overhaul was extensive and included much much more than just First Inventor To File. If you think Congress intended to leave 102 alone, I am afraid that there is nothing I could say to restore sanity to you.

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  9. Anon, I think Congress intended to go to a first to file system.  I don't think Congress intended to overrule Pennock.  Where in the congressional history do they actually say that?

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  10. I have to remember to turn off the auto-correct feature…

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  11. Actually anon, the Golan decision reinforced Graham.  Golan does not suggest that Congress has the power to withdraw from the public domain knowledge that has long been part of the public domain.  It does allow, however, Congress to withdraw from public domain knowledge placed there by the very authors or discoverers themselves, at a time before the public is firmly vested with the knowledge.

    All of that has nothing to do with the topic at hand.  Here the topic at hand is whether one can secretly exploit an invention for an indefinite period and still come within the protection authorized by the Constitution.  That issue was before the Supreme Court in Pennock, and they announced the equitable doctrine we now know to be the on sale bar,
     
     

     

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  12. Ned,

    It is hard to take you seriously when you make statements like “I don’t know why” as their have been much said about this point and the fact that Congress was explicit that this was a radical rewrite of patent law.

    I “get” that you don’t “want” the old case law to not apply, but to that you don’t understand why that may be so is not believable.

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  13. Dennis thanks for that note. I had your point in mind when I chose the word “administering”. I was thinking that the USPTO is an ISA and and IPEA and so its examining cadre has the day to day task of generating opinions of patentability in the International Phase of patent applications filed under the PCT. I was also thinking of the current urgings of the USPTO on the international community to share work, in programmes like PPH. This, to me, will increase the pressure on USPTO Examiners to generate PCT opinions that are worth something, outside the USA. Having a single consistent meaning for “same” would ease that pressure.

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  14. … the USPTO itself is not charged with following the law of the Paris Convention.

    Nor are the federal courts.

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  15. Regarding, “otherwise made available to the public,” this could be construed to be placing the concept of “public knowledge” from the former 102(a) into the new statute. In the former statute, 102(b) did not have public knowledge is a bar. And yet public knowledge has always been perhaps the most critical of all prior art from the very beginning of patent law, not only in the United States, but in England. It would be inconceivable to have a definition of prior art that did not include public knowledge in some fashion.

    Now I have known from discussions among the cognoscenti that there was a fundamental problem with public knowledge in that it was not easily proved: they held the belief that knowledge of others should not invalidate a patent unless the knowledge truly was public. Perhaps this is why “knowledge” is not placed into the new statute in that form, but in the form of “otherwise… available to the public.”

    The new statute otherwise repeats 102(b). I don’t know why the interpretation of the new statute needs to vary from current law. The current interpretation, that on sale is only a personal bar and not prior art, is highly consistent with the objective that only publicly available art be prior art. At the same time, it does not erase the equitable estoppel bar concepts embraced in current on sale jurisprudence.

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  16. Ned,

    We’ve been through the Pennock decision many times. I suggest you refresh yourself on what I have said concerning that decision before commenting. Keep in mind that my views were in fact recently reinforced by the Supreme Court (See Golan v. Holder).

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  17. Max – I think your point is important and relevant. However, just to be clear, although the US is a signatory to the Paris Convention, the USPTO itself is not charged with following the law of the Paris Convention.

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  18. Paul, without even reading the article, it appears that you are emphasizing the word “equitable, as in, estoppel.” By this, I assume you mean that the principles of Pennock lie in equitable estoppel and equitable abandonment of a right to a patent even if one remains entirely within the legal scope of the law and would otherwise be entitled to patent.

    I think you are right.

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  19. I would bask too, but I have already stated these views and it would be a little awkward to bask in what is essentially my own light.

    Instead I will concur with your stellar reasoning.

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  20. Thanks Jason, I would find any such views backed with authority to be helpful.

    I am aware that many think this fuzzy, and that there are a spectrum of views, but such views are like opinions, with many fully groundless.

    Further, whether or not “someone takes a different position” is likewise neither surprising nor concerning. Notwithstanding that understanding the fact that each congress is considered its own “animal” is a baseline, ther eis no shortage of “positions” that ignore baselines. Such positions are relatively easily dispatched.

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  21. The reason it really passed was because of AIPLA (and IPO and ABA-IP) support. The IPO is fairly run by their board which is broadly representative of industry. However, the AIPLA is run by the AIPLA leadership and really is not a democratic organization.

    I would have been nice for the AIPLA to have put the issue of the AIA to a vote of the membership after it had been drafted and before the vote in Congress. That would have been interesting.

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  22. Uncertainty, what I mean is the positition that will result in getting a particular issue to the courts ASAP.

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  23. Or am I deluding myself?

    You are deluding yourself.

    I recognize that you are a visitor to our law, so I will gently ask you to read again the posts herein.

    Any post-publication and pre-filing publication by a third party can have the eviscerating effect of knocking out the First To Publish patent hopes.

    The “shield” is really paper thin (and wet paper at that).

    Good luck proving derivation with the new system! And that’s what you will need to protect yourself from anyone (scrupulous independent inventors or unscrupulous “in”dependent (read knock-off) inventors that merely want to destroy your ability to patent) beating your file date with a quick and dirty “me-too-but-with-obvious-changes” publication (“mtbwoc pub”).

    That wet paper shield will not protect you and your later actual filed application from an earlier mtbwoc pub. Not even if you are an academic. And certainly not if you have something with greater distance from the existing art. There is no way that the Big Corp people are going to let that happen (Big Corp already knows that Academics have an out with Prior User Rights).

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  24. Belatedly, the thought occurs, that publishing before filing might be less destructive if the subject matter is something “blue skies”, with correspondingly little chance of simultaneous independent conception, and far greater distance from the closest prior art than in the case of an incremental improvement in, say, gearboxes or stents.

    Think design patents and Goddesses. When the advance is a tiny increment, “same” implementation equals “identical”. But when there is nothing reemotely like the invention within the state of the art, a lot more that is more or less the same concept will fall within the scope of “same”.

    in other words First Inventor to Publish will work for academic scientists better than for inventors in house within global titan corporations.

    Or am I deluding myself?

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  25. Don’t feel bad about the mistake either. There are very few people smart enough to recognize this subtle (but very real) point of law.

    Don’t mind me – I’m just here to bask in your radiance for a little while.

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  26. One other problem Tacurrier: you (like many) are co-mingling time frames.

    the risk is very real that the monopoly can be made virtually perpetual.

    You must be clear as to “the monopoly” you refer to. This comment is absolutely true for Trade Secrets (even today!). The comment is absolutely false for Patents. Do not get caught in the trap of mixing up these two time periods as they are goverened under different laws.

    There is one set of time governed by patents and implicated in any constitutional discussion.

    There is quite a different set of time that is not governed by patents and NOT implicated in any constitutional discussion.

    Keep firmly in mind: Trade Secret Law is generally a state law concern. Thus any protection afforded by Trade Secret is distinct from (both actually and legally) the protection afforded by Patent Law.

    Don’t feel bad about the mistake either. There are very few people smart enough to recognize this subtle (but very real) point of law.

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  27. Maybe they have ESP and sensed I was going to talk about the Foreign Document I didn’t make a decision on. And they are all now hiding in the Forest.

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  28. I wondered why he made that statement. Why bother filing for a Patent if you are going to Publish it. Why not just get a Trademark and or a Trade Secret and make it!

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  29. PatentLawNewbie,

    I will spare you the admonishment to read more carefully (there is a “not” in the First Inventor To publlish statement) because you already understand that it is foolish to publish before you file (which is the main point to grasp).

    But not everyone else understands that! In fact, quite a few actively took the position that publishing was the new Sine Qua Non (did you take the pop quiz I posted below?).

    It was to these non-believers that the post was directed to (you all know who you are).

    There are killers of the push for early disclosure. Ignore at your own peril.

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  30. (Arrggh. “Cache” not “cash”. Need. Mo. Coffee.)

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  31. Jason, appreciate your quick comment. But I had already tried cash clearing and reopening, and still do not find FTF rules available from the implementation page (or any other AIA page).
    Wondering did they put them up then yank them (like earlier this week)?

    Thanks.

    Reply
  32. Why in the world did you not investigate the patent status before signing the exclusivity agreement?

    Back to your current problem, though, do you have proof that they dangled “patented” as an inducement to you? Does it say anything about it in the contract itself? Or did you just rely on some oral statement?

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  33. The links are to the AIA’s implementation page, so you may have an earlier version stuck in your cache. Over the weekend I will change add direct download links as well.

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  34. I’ll look into it further and perhaps write a post on the subject. What I’ve found is that the concept of “legislative intent” is generally pretty fuzzy, and there are many views on what it can and can’t include (and even whether it’s appropriate to rely on it at all). Given the difference in views, even if there’s authority supporting the view that acts from a prior Congress can be used as evidence of Congressional “intent,” it would hardly foreclose someone from taking a different position.

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  35. I don’t find the F-T-F rules at the link provided. Just the rules relating to pre-issuance submissions. Anyone else find them?

    Thanks.

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  36. And I ill pay the foreign filing for my Application . That is why I circled and made a note showing I will decide then. I know it is something that MUST be done. That’s one of the reasons I got screwed before!

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  37. I’m not sure how you could argue Congress intended the act to be First Inventor to Publish. I’m pretty sure it says “First Inventor to File” throughout it.

    I definitely agree with your advice — file before publishing. However, I’m not sure if the Federal Circuit will interpret the exception as broadly as the USPTO is. But obviously, play it safe, and assume the worst — file before publishing. Really, this doesn’t change anything. You should already file before publishing even under the old system because of foreign rights.

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  38. Jay gave the old man the short Lobsters. Jay was mooring his Boat at the Hull Coast Guard Station. That is an easy thing to prove. I already proved it. Now who was that little whipper snapper at the Pier. I am sure she was put there to give me s@it. As I looked to area where they had a walkway when she was running her mouth I saw Wenzels Boat “SO SUE ME”.

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  39. One problem Tacurrier: Prior User Rights.

    Having such not only removes that risk, but creates a free-rider syndrome (ability of the non-discloser to benefit off of the discloser’s patent).

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  40. And if you were nice and did the right thing you A@@’s I would have now had a huge Company, but, instead there is only a pile of Sand. Imagine Guerwood and Marcella gave my SSI to them as a way to keep it from me! WOW! What a bunch of SCUM! And on top of that she took every single dime I had so she could hold me down! Judy and Louise lived there for free!

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  41. For detailed reasons as to why the Metallizing Engineering [equitable] doctrine was NOT necessarily overuled by the AIA, see “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act, 2011 Patently-O Patent Law Review 29.”

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  42. THE HORSE IS NOW DRINKING.
    The reason there were two addresses is because there are two of the same social security #’s that are the same. And the reason they wanted me to not get it, is because of IDENTITY THEFT! And the reason MANN ran away after he asked me if I wanted to see my sister, is He was hired by my Sister and Ray, Ramona and Gloria and maybe the mannings too to get me to share. So now I know that She is claiming to be me on my IP too. shame shame. And if you think now i can’t report this you are sadly mistaken.
    Guerwood had give away remorse. He was sorry he took me and not her because I have a big mouth. And Mike and Dick wanted so bad to control my assets. TOOOOOO BADDDDDDDDDDDDDDD!
    the horse has now recovered!

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  43. As to Metallizing Engineering, from a “Bargain Theory” (See Canadian Patent Law, Butterworths 2012, by Stephen Perry and Andrew Currier) perspective it can be rationalized that a secrete commercialization should not be a statutory bar under a first to file regime. The “Bargain Theory” approach considers the patent system to be an incentive to disclose an invention in exchange for a time limited monopoly. A secret commercializer under a first to file regime always runs the risk that another inventor will get to the patent office first, therefore the secret commercializer must face the risk of not being able to have a unfairly extend the time limited monopoly. However, under a first to invent regime, the risk is very real that the monopoly can be made virtually perpetual.

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  44. it would make the statute not really First Inventor to Publish.

    Corrected.

    There was always an unreasonable presence of those making the mistake of saying that the legislation was aimed at establishing a First-To-Publish regime.

    A few tried to set those straight. It is and always intended to be a First To File regime.

    Not filing before publishing will MOST likely doom your filing.

    Independent Invention: the killer of the push for early disclosure. Ignore at your own peril.

    And for the jaded: Unproven (good look proving derivation) Stolen and Obviously Modified Invention: the killer of the push for early disclosure. Ignore at your own peril.

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  45. LOLZ

    Best quote from the earlier linked thread:

    Say horse, why don’t you give up your quixotic quest. You really are tilting at windmills. The way the statute reads and the way most everybody else is interpreting it, is quite favorable to patentees and inventors. The way you interpreted the publication exception to prior art is virtually meaningless and not useful at all.

    It turns out this is DEAD WRONG.

    Any guesses as to the dead wrong poster? (no looking)

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  46. Well, they have to come up with some kind of interpretation. The PTO has to do something before cases start to get to the Fed. Cir., and we learn what the law really is.

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  47. Don’t worry too much 6, it looks like the PTO is attempting to completely write that portion out of the statute:

    “Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.”

    MaxDrei — I have no feelings one way or another on whether this grace period should exist, but if interpreted broadly, it would make the statute not really First Inventor to File.

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  48. Said Parcel comprises Lots 11,12,13,14,15, and part of 16. the land with buildings there on. Although i am not a lawyer where is Lot 10 and part of 16?

    But the Sale says by Lot 10 by part of Lot 16. So I think they did shave it because Lot 10 is not mentioned in said parcel. And a true lot in Mass. is 90 feet! And part of 16? A true lot, I am sure was measured way bigger when land was plentiful.

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  49. Jason, I would be interested to see if authority exists to support the supposition that “legislative intent” can be inferred between two different congresses.

    A congress is a unique entity, given that its membership, and hence its ‘voice of the people,’ changes from term to term. To attribute to a new congress any meaning from a different congress, even by comparison, seems to be an unsubstantiated, unsupportable (and unprovable) attribution of intent.

    Rather than proving a negative, can you look into supporting the positive?

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  50. I too called my Senators and Congressmen who thanked me for my concerns (and voted for the AIA anyway).

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  51. Really why even bother to Patent sell your Ideas through Trade Secret Attys. That’s what i plan on doing FROM NOW ON!

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  52. You did tell us, David, and it is a disaster for startups. Small consolation knowing I contacted my congressman and senators – and got others to do the same – but to no avail. Guess I should have offered them $$$.

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  53. I told you so.

    And you couldn’t make 10 minutes to pick up the phone and call your congressmen and senators.

    This is a disaster for startups (and for the vast majority of the patent bar).

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  54. So what do we do for the next ten to fifteen years (and that’s being extremely generous) that it will take the lawsuit-path to writing law to work itself out? AIA = Big victory for Deep pockets.

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  55. The Office needs to take the most conservative interpretation as possible so that dissatisfied applicants will soon appeal

    Don’t you mean least conservative?

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  56. Don’t have a cite, but it is common sense that the legislative history from one congress does not pass to the next congress.

    If a bill dies, it dies completely.

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  57. Not at all “ridiculous” to me. The statement is consistent with what “grace period” means. What exactly is it, 6, that strikes you as “ridiculous”?

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  58. Under the Paris Convention, Article 4, the test whether Applicant gets an earlier effective filing date is “same invention”. Now I appreciate that “same” in the AIA can mean something completely different from “same” in Paris but in its day-to-day work the USPTO has to administer both Paris and the AIA so I can understand its pre-emptive strike, to establish that “same” means the same thing, whether in Paris or the AIA.

    I never could see how First to File could be reconciled with a system that insists on retaining three even more fundamental conceptual bases, namely 1) adversarial dispute resolution 2) world-wide novelty and 3) a grace period. Then I thought the AIA’s novel “First Inventor to Publish” conception (FITP) was a brilliant idea to eliminate the main criticism of First to File namely that it is incompatible with the tendency of academic inventors of truly ground-breaking hugely valuable subject matter to publish too early.

    Naturally there will be huge uncertainty to begin with. But if SCOTUS and the CAFC can lay down some first class caselaw, this AIA with FITP might be a model on which the rest of the world can build.

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  59. The Office needs to take the most conservative interpretation as possible so that dissatisfied applicants will soon appeal so that the courts can decide what the law is. They should also make it clear that this is exactly what they are trying to do.

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  60. Also, where are all the people that always have a sht fit about the office making substantive rules? Did congress give them one time authority in the AIA to implement rules to implement the AIA substantively?

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  61. Wow, sounds like you got straight up scammed bro.

    “Is there any course of action either civil or criminal that I can take to recoup the investment that I made in purchasing a limited stock of the material and the money and resources spent on sales and marketing?”

    There are false marketing statutes in VA, you can get actual damages or stat damages of 500$, your choice. Talk to your attorney about whether they apply for you.

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  62. “Under these provisions, third party disclosures and patent applications are not prior art if the “subject matter disclosed” had previously been disclosed by the inventor. Prior inventor disclosure therefore precludes later disclosures of the same subject matter from being prior art.”

    Lol wut? That sounds ridiculous.

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  63. Last year my company signed an agreement for the exclusive rights for a product that we were informed was pateneted. After signing and subsequent investigation we were made aware that the patent on the contract does not exist and the previous patent had expired by nearly 10 years.
    Is there any course of action either civil or criminal that I can take to recoup the investment that I made in purchasing a limited stock of the material and the money and resources spent on sales and marketing?

    Many thanks

    chris

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  64. I spent some time searching for any formal limits on what counts for purposes of ‘Legislative Intent’ and could find anything. If you have a specific cite to an authority, I’d be very interested in it.

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  65. Correct me if I am wrong, but “Comgressional Intent” is NOT something that carries over (even by comparison) from one congress to the next. This is the second time I have seen this misconception (if it is a misconception) advanced by guest writers on this blog.

    Can we clear this up?

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  66. “That such provisions were removed from the final legislation suggests that Congress did not intend to negate the Metallizing rule…”

    There are a lot of people in Congress, each with his/her own motivations. The only single intent Congress ever has is to make as much money off lobbyists as possible. That, and to get re-elected.

    Reply

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