USPTO Reopens the First-Inventor-to-File Comment Period

From Janet Gongola, Patent Reform Coordinator:

On July 26, 2012, the USPTO published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA. The notices set a comment deadline date of October 5, 2012. The USPTO has received several requests for additional time to submit comments. Therefore, the USPTO is reopening the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.

The new deadline for receipt of written comments in response to both the notice of proposed rulemaking and the notice of proposed examination guidelines to implement the first-inventor-to-file provisions of the AIA is November 5, 2012.

The proposed rules along with already-submitted commentary can be found here: http://www.uspto.gov/patents/law/comments/fitf_guidance.jsp. Discussion of whether the AIA eliminates Secret Prior Art is here.

18 thoughts on “USPTO Reopens the First-Inventor-to-File Comment Period

  1. Ned,

    Your logic (?) is so muddled and your pedigree so tarnished that I care not at all to figure out your views.

  2. Brad, take a look at both 116 and 256.  The latter allows omitted inventors an action to correct inventorship.  The case law, even before the repeal of the "deceptive intent" language, allowed for a complete substitution of inventorship.  Note the statute specifically states the patent is valid nevertheless, meaning even if the inventorship was completely wrong to begin with, it remains valid after correction.  Now, you tell me how this is possible if naming the wrong inventor results in the patent being invalid.  Does an invalid patent suddenly become valid?  I have never heard of such a thing.  

    Derivation proceedings also permit such correction.  But as you say, derivation proceedings require a later-filed pending application to the same invention.  I see, however, no such requirement in 256.  Even so, I think it is implied that the omitted inventor in fact invented or co-invented the subject matter of the patent, and was not an independent inventor.

    Now, if there is some real difference between a patentee who "derived" from another inventor, and omitted to state who the real inventor was even while patenting his invention, having learned about it from him, I fail to see the distinction.  Derivation and naming the wrong inventor seem to be substantially the same thing.

    If all the above is true, and I think it is, the true inventor has a remedy to fix inventorship and obtain ownership of the patent.  Both 116 and 256 state that problems with inventorship will not affect validity.  

    As I said before, raising 101 as a substantive prior art defense based on wholly private work of another that is communicated to the applicant will go a long way to unraveling the AIA.  Where does it stop?  Inter-corporate communications would once again imperil patents.  Further there is a strong risk that prior invention even if not communicated to the applicant will be prior art under 101.  Strong risk.  All one has to do is read the original patent statute, Section 5.

  3. Ned:

    That may work as long as the other “inventors” have a co-pending application on file. The key concern that I hear from others on this issue (which I see as maybe only a little more prevelant than current interference practice – i.e., < 100 interferences declared per year), is what happens if the “true” inventors didn’t file a patent application, and they also aren’t working the invention so they can’t take advantage of the prior use exceptions.

    Brad

  4. Sure – I have tried sending you a couple of emails, but not sure I have a current address. Feel free to ping me and we can discuss.

  5. Brad, I suggest that it should not be replaced.

    The new law provides ample procedures and opportunities for inventorship to be corrected voluntarily or involuntarily through derivation, through 116, or through 256.  This would include a complete substituion of inventors in appropriate cases, especially since "deceptive intent" has been removed.  In every case, the statutes expressly state the patent is not invalid.  Moreover, derivation is THE preferred vehicle when their are rival applicants, one having derived from another.  But there is a one year statute of limitatons.

    The true inventors are protected.   What the removal of 102(f) does is remove the ability of third party challenges to patent validity based on incorrect inventorship.  This is right!!!!!  Prior invention is not prior art and should not be prior art.  Only subject matter in the public domain should be prior art.  Armitage is entirely correct in this.

    If we bring prior invention back in through 101, all hades could break lose.  The work of excluding 102(f) and (g) for intercompany inventions could be undone.  First-to-invent may come back.

    We need to oppose the backdooring of 102(f) via 101 and leaving inventorship problems to the inventors.

    My views.

  6. Ned:

    This is a thread that I have picked up from others in the interference practice in terms of how to handle the elimination of 102(f). Bottom line, there are no great answers for a replacement but 101 seems to be the best.

    If you have other suggestions, let me know.

  7. Brad, one more point to consider:

    If 101 admits of a defense of prior invention by another communicated to the applicant; it also admits of a defense of prior invention of another not communicated but where the prior inventor himself is seeking a patent an who has not abandoned or concealed the invention.

    Cf. Patent Act of 1790, Section 5.

  8. this issue isent a maybe baby but quite constitutionaly required so all can use the system not just the rich and powerful oh ya the powerful part needs adjustment also. coupling all these items with The European system means worldwide patent conciever justice but the Europeans and american fat cats dont like it to much fraud exposure of the past and no thefts allowed in the future

  9. Maybe the USPTO needs to bring back the old, pre-provisional application, Disclosure filing program….

  10. Brad, regarding alleged admissions in specifications, prior personal knowledge of any invention made by another is no longer prior art. 102(f) has been repealed. We should make it clear that any admission or statement of prior knowledge of anything should not be an admission that something is prior art unless the admission is that the information is the work of another and is otherwise publicly available. Simply being the work of another is not sufficient.

    For example, the knowledge of another’s work that is confidential, such as is the case with a co-worker inside a company, even if discussed in a specification, should not form the basis of a prior art rejection.

  11. The big problem is with Kaposes new application technical perfection requirement for filing instead of initial disclosure document program virtually all non corperate citizens are denied there cival rights of filing. Also with the sinator Smiths aia requirement of application technical perfection rampant theft of intellectual property rights are allowed When used in conjunction with inter office files corrupt alterations and incertions that have been used since 1960.They need to go with my plan for immediate novelty check and lockering to perfect inventorship determination or the system is all fraud and unusable

  12. Public disclosure before filing should be non allowable. Only public disclosure at the time of filing should be required as credible evidencing of first to file with public notification and it will serve as a better legal claim.The only reason for public notice before filing is to win the race to the patent office in devulgement cases so its an inaccurate method of inventorship determination. Adding proximus location to master inventors to the equation will help determine the correct inventors in race to patent office situations

  13. Brad, you are obviously heavily into this “AIA grace period by prior public disclosure.” Could you please indicate what you think would be the best, most logical and workable, PTO rule alternative to its proposed rule for requisite content of the public disclosure? Why not just require 112 support in the public disclosure for what is subsequently claimed in the belated “grace” application?

    P.S. No PTO rule for the very limited AIA 102 grace period is ever going to fully satisfy those university professors who think they should be able to immediately publish whatever they want to even if it destroys valuable patent rights of their employers. [As evidenced by the misuse of provisional applications based solely on publications.]

  14. Obviously, the PTO’s flippant remark that 101 is equivalent to 102(f) should give everyone pause as well. 102(f) makes prior art the prior invention of others known to applicants. Beginning with cases like In re Bass and In re Clemens, the CPPA and the Federal Circuit extended prior art to include any invention communicated to another. For 102(g) prior art, it also had to be disclosed in a patent. For 102(f), however, it did not. Cf. OddzOn Products.

    Most of these original cases came out of intra-company cooperative research. In response, Congress excluded 102(3e),(f) and (g) from 103 prior art. Double Patenting continued to apply to identical subject matter double patenting by a common onwer.

    However, in the new structure the exceptions to prior art have been moved from 103 to 102. Double patenting presumably will continue to solve the problem of two common owner inventions being patented. But the problem of 103 is reintroduced if 101 simply, according to the PTO, replaces 102(f) as prior invention prior art.

    As well, if 101 can be used to for 3rd party validity challenges based on inventorship at any time — in opposition, in interpartes review, in court, the statutory framework for confining such challenges to derivations proceeding or inventorship challenges by the inventors themselves will not only be frustrated, but overthrown.

  15. The USPTO has extended the time for filing comments on its proposed guidelines for the first-inventor-to-file provisions of the America Invents Act (AIA). There is a debate on whether the new grace period under the AIA should be interpreted narrowly or broadly. Unlike current law, the new grace period is triggered only if an inventor publicly discloses before a patent application is filed.

    The proposed guidelines use a narrow interpretation of the grace period. If ultimately adopted, this would make the grace period all but non-existent for any intervening publication or patent filings by others that fall between the public disclosure by the inventor and a subsequent patent filing.

    This is an important issue for both the academic and independent inventor communities as the guidelines as proposed could affect their ability to patent technologies. Please see this article for further information on this issue and how you can submit comments. Act soon, as any comments to the USPTO are due by November 5, 2012.

    link to ptslaw.com

    For more information and an in-depth statutory and policy analysis on the broad vs. narrow construciton issue, see:

    link to papers.ssrn.com

    For comments on other issues on the proposed guidelines and rules, see:

    link to uspto.gov

    link to uspto.gov

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