PCT Applications as Prior Art

By Dennis Crouch

International Patent Applications filed under the Patent Cooperation Treaty (PCT) are ordinarily published by the World Intellectual Property Organization (WIPO) 18-months after the filing date.

In a prior comment section, some debate arose as to the effective prior-art date that would be assigned to those applications. The answer is simple – once the application is published, the application will count as prior art as of its priority filing date so long as the PCT applications designates the United States (under the current system, all contracting states are automatically designated). Here is how I get there:

  1. Under 35 U.S.C. § 102(a)(2) patent applications are counted as prior art as of their effective filing date so long as the application is published under §122(b).
  2. At first glance, the limitation of being “published under section 122(b)” seems to limit the doctrine to US published applications. However, 35 U.S.C. § 374 changes the rules by indicating that WIPO’s publication of international PCT applications “shall be deemed a publication under section 122(b).”
  3. Section 102(d) then stretches the prior art date back to the earliest priority filing date that can claim priority to the relevant disclosure.

The result is that published PCT applications that designate the US count as prior art as of their priority filing date. In this analysis, there is no restriction on application language or country of origin.

Phase-in: The phase in of this rule is fairly simple. The above calculations apply when considering prior art against an application filed on or after March 16, 2013 and that, at any point in its history, included a claim to a claimed invention that has an effective filing date of on or after March 16, 2013.

 

108 thoughts on “PCT Applications as Prior Art

  1. Ned the answer to your question is in principle easy, but difficult for me to explain accurately in just a few words. I’m a bit pushed for time and this blog is not about patent law in Europe. Will you forgive me if I skip answering? But thanks for your interest.

  2. Thank, Max. I think I understand the EPO position.

    One last twist, a European patent application claims priority to a prior UK provisional, but is not entitled to priority because of new matter. Is the entire contents of that UK provisional prior art in Europe?

  3. It is not a strange question as the fascination with my lovely red cape of “anon said” seems to set them both to the same frenetic actions.

    And no, I am not related to Eric Guttag, although I do respect his intellectual honesty.

    But thanks for asking, and for putting us in the same class. Whether you realize it or not, that was a compliment.

  4. Malcolm,

    It appears that you have fully gone off the deep end and are now actively searching for any tiny little inconsequential avenue to somehow troll me on these boards.

    I suggest a very long vacation for you.

    Get well soon.

  5. You never answered my question: Are you related to Leopold.

    What a strange question coming from the guy who trolled this blog for years with dozens of s-ckp-ppets and denied doing it until he was busted by Dennis.

    A better question is: are you related to EG? That would explain a lot.

  6. wow, talk about moving goalposts.

    No goalpost was moved, anon. Perhaps you could answer the question I asked and then explain to me why that answer is not relevant to your strange request to MD (i.e., “What was that Canadian case (bio) with 18 Quadrillion possible claimed items…?”).

    Go ahead, anon. Get your machine translator out and write something in English that isn’t an insult or some vague innuendo laden pronouncement. Go ahead.

  7. I am indebted to anon for pointing out that, in Ned’s hypo, the first applicant did (contrary to what I gathered above) include in his pat appln an enabling disclosure of the process of making A. Thus, first applicant was first to file on that subject matter. In Europe, the right to a patent goes to the first to file an enabling disclosure. If that first filer omits to claim his invention that’s his own loss.

    Unless he is not the owner of the process invention. Then it is that owner’s loss. But then, in Europe, the true owner has the right to take over ownership of the patent application that is for the time being in some other ownership.

    Europe is much more interested in who is the rightful owner of the claimed subject matter than who invented it.

    I can’t comment on how it would be in the USA. I write on Europe because (as I understood him) Ned asked me to do that.

  8. MaxDrei,

    It is an interesting read – with the mixed counter-examples (examples which purport to carry on Ned’s hypothetical but do not) to arrive at a conclusion which may be true, but is not supported by the record, all the while ignoring the initial thrust of the conversation – US law – that Ned does show a befuddlement with (and you apparently cannot pick up why.

    and disclosed but does not claim a process to make chemical A

    There is no hint in the hypothetical that the disclosure made but not claimed was NOT enabling. The hypothetical merely proffers that it is unclaimed. Do you really “Ned, I answer your question thus: I myself don’t know any reason, why the second applicant should be denied a patent.” ?

  9. Ned, I answer your question thus: I myself don’t know any reason, why the second applicant should be denied a patent.

    i have a question of my own. Where in my writings did you find me suggesting that the second applicant should be denied.

    In your hypo, the first applicant discloses and claims A, but his specification is not an enabling disclosure of how to make A. The skilled person, having read that specification, is still unable to make A.

    Thus the application of the first applicant is not an enabling disclosure of A or the process of making it.

    So (in Europe) even when the state of the art (everything made available to the public) includes the specification of that first applicant it still fails to prejudice the patentable novelty of A and of the process of making it.

    I take from your hypo that the mere fact of publishing the molecular formula of A does not render it obvious to the PHOSITA how to make A.

    So the second applicant is in a position (in Europe) to get a patent, not just on his independent invention of a viable process of making A but also for A as such!

    You thought you understood European patent law. Is that still the case?

  10. The first suspicion is that that subject matter is not the invention of the applicant, but rather was derived from someone else.

    No.

    First, it very much matters where and how the material is presented.

    Second, it doesn’t matter as the contents are very much considered prior art (of at least the file date).

    Your reference to 102(g) means nothing. Again, you are very much conflating the two very different paths. Whether or not a later filer is the first to actually ‘claim’ something is immaterial if the item – claimed or not – is deemed prior art due to its presence in an application.

    I cannot even begin to fathom that your question to MaxDrei (at 6:05 PM) is a serious one. You do recall that any unclaimed material is deemed given to the public, right? Your emphasis througout this discussion on “claim” and “invention” is simply peculiar.

  11. MD, it is hard to discuss these things without real examples.

    Let's say the first filer discloses and claims a chemical, A, and disclosed but does not claim a process to make chemical A using specific input components. The applicant makes no claim to the process because it is not his invention, but has long been used inside his company to make chemicals like A. The applicant is not the inventor of the process and makes no claim to it for that reason.

    Along come a second applicant who has independently invented this very same process. He claims the process.

    Now, why should the second filer be denied a patent on the process?

  12. Ned I’m not so much in awe of the “first to claim” as you are. I prefer the “staking a claim” notion, that if somebody else has already planted his flag on the ground which you now claim as your own, you are NOT the first to stake a claim to that ground into which the flag is stuck and your therefore claim embraces ground on which that other fellow has already planted his flag.

    The flag I am alluding to is an enabling disclosure of an embodiment inside the periphery of your claim. Whether the flag planter just happens also to have also defined a boundary fence (I mean a patent claim) all the way round his flag, and some distance or other spaced out away from it is, for me, NOT the essence of the matter.

  13. Anon, A patent application discloses subject matter that is not claimed. The first suspicion is that that subject matter is not the invention of the applicant, but rather was derived from someone else.

    Under today's law, the disclosure demonstrates invention by someone. Under 102(g), now repealed, that invention, disclosed in the patent application, becomes 102(g) prior art once the application is published.

    But, since we have repealed 102(g), why should we retain its substance by making the invention of another prior art when they are described in prior filed, but still secret, patent applications? Where is the vice in letting the second filer obtain a patent on it unless the first filer is also claiming that subject matter as his invention?

  14. MD, to the extent that you apply the whole contents of a priority application without regard to whether the claims are entitled to support, you are indeed applying a form of prior invention in Europe. You might think it easier to administer, but it does not detract from the fact that you are denying a later filer a patent on an invention disclosed in an earlier-filed application of another even though he is the first to claim the invention.

  15. But when that earlier application discloses unclaimed subject matter, what should be the rule? Why is it important to not grant a patent to a second filer that first claims that subject matter? That unclaimed subject matter is not prior art, not being publicly available prior to its being disclosed and claimed by a second filer. The first to claim it should get the patent, it seems.

    Ned,

    Reading this closely, you have a collision of timing and different paths – I have to wonder if you are conflating the two very different paths against novelty: submitted patent applications and actual public knowledge. Are you over-ascribing actual public knowledge to patent filings?

  16. Dear Ned, first, I am sceptical that you do understand the post-1973 EPC scheme for dealing with conflicting applications for patents on overlapping subject matter. Your remarks hark back to the UK “prior claiming” law which was already seen in the 1970′s as unworkable and so was displaced and replaced by the “whole contents” regime of Article 54(3) of the 1973 EPC, which is completely different to any “prior claiming” regime.

    But here we are concerned with European law only to the extent that it is a catalyst for debating US 102 novelty.

    I can live with the notion that the AIA might be perpetuating a prior claiming regime. As to whether or not it does, I guess we shall have to wait till Team Rader tells us all.

  17. Well, Max, I think I understand the European system, to a degree. Because you cannot grant two patents on the same invention, one needs to compare the claimed invention of two interfering references and then determine priority. In this, it is critical to determine whether the claimed invention of one patent was effectively filed (fully supported) in an earlier application to which priority is claimed.

    But when that earlier application discloses unclaimed subject matter, what should be the rule? Why is it important to not grant a patent to a second filer that first claims that subject matter? That unclaimed subject matter is not prior art, not being publicly available prior to its being disclosed and claimed by a second filer. The first to claim it should get the patent, it seems.

    In the US, under first to invent, 102(g) would independently make that unclaimed subject matter prior art once a patent application referencing it was published. There is a case on point. It is also clear that "prior invention" theories are behind extending effective prior art dates back in time to make effective as prior art the filing dates of unclaimed subject matter. But, Judge Rich did not extend 102(g) to 102(e), and made that clear in Wertheim. A patent has an effective filing date to earlier applications only as provided by 120 or 119. This reference back is specific — and applies only to claimed inventions. And, as I have previously discussed, the courts have never addressed whether unclaimed subject matter has any 102(e) status at all under 120 or 119. There is good argument, I think, that such unclaimed subject matter is not prior art under 102(e).

    The new statute, I think, should implement current law and should not twist it to make unclaimed subject matter prior art because the policy reason to do so, prior inventorship, has been stripped from the law.

  18. Ned no need for any apology.

    It is late here. I will think about how to reply, and get back to you tomorrow. Perhaps somebody else will chip in overnight.

  19. MD, If I misunderstood your point, I appologize. I simply reiterate that under current law, the priority date of a patent as a prior art reference is the same as priority date of the claims in that patent for priority purposes. You do seem to understand that for a priority claim to be effective for priority purposes, at least one claim has to be fully supported per 112(a) in the parent. Thus if no claim is supported in the parent, the parent's filing date is not good as a priority date for any "invention."

    This seems as simple as sliced bread. It is amazingly simple. There is congruency of effective dates for priority purpose and for prior art purposes. Section 120 and 119 do not make distinctions for priority or prior art. These statute grant effective filing dates to earlier filed applications, but only for "inventions" (which means, claimed invention), which in turn have to be supported under 112(a).

    Of course, there is the additional requirement that the subject matter forming the basis of the rejection must also be disclosed in both that parent and in the reference.

    I think the AIA can be interpreted this way, consistent with current law. Since no one ever suggessted that the AIA was intented to change the rules of effective dates, I assume there has been no change.

    But I am not sure on this point, given the inapt wording of the new law and no discussion in the legislative history.

  20. Ned, I sympathise with your frustrations. For me the AIA introduces many elements of the EPC but only after massaging them to fit existing US law.

    The EPC contains a strict distinction between novelty and obviousness which is lost in the AIA. The massage mashes up the logic.

    Under the EPC, obviousness is tested relative to the prior art universe, namely, the entirety of the technology already “made available” to the public before the date of the claim. Unpublished earlier filings are not part of that universe.

    Under the EPC novelty is the tool used to sort out how much scope each of rival filers gets, relative to each of the others. Under First to File logic, each gets all the scope, to the extent that its novelty is not prejudiced by any earlier filings of each of the other rival filers.

    That logic I do not see in the AIA.

    And because that logic is not there, we end up discussing with each other whether the AIA is First to File or still First to Invent. Sad. Frustrating.

  21. Oh dear Ned. Once again something I wrote has failed to come across to you as I intended. I do not say that priority goes back to a date earlier than the priority date. Indeed, I do not understand what you mean or where in my writings you got that thought.

    IPMan gets it. Perhaps once again he can bring out where the difference of understanding between us lies?

  22. anon, I don’t exactly know what you mean. But the AIA relies on disclosure. Patent applications are an exception that should be limited, in my view, except when the patent that issues has an effective priority date of the earlier application.

  23. MD, what justification is there to extend priority back in time to a date earlier than the effective priority date of the reference? In prior US law, the prior disclosure might be prior art as prior invention under 102(g), but no longer.

    I see absolutely no requirement to give prior inventon any remaining effect in US law, do you?

  24. IPman, please see my post below for more. But if a priority claim is not effective, there is no justification for carrying the effective date of a reference to an earlier date save one, and that has to do with prior invention, which is no longer the law.

  25. IPman, if the whole contents of an earlier application, to which priority is not effective, becomes prior art, then we are in back in the realm of prior invention to a degree. The legal justification for making such secret subject matter prior art must be that the claimed inventor of the application under review did not invent that subject matter before it was invented by another as witnessed by its disclosure in the priority document.

    But it is an object of the AIA to remove all vestiges of prior invention from the law. Thus, we should not accept the invitation to view the effective date of a reference to be a prior application where the claimed invention is not supported in that priority application.

  26. IP man, thanks for the reply.  It would be strange if we had to live the next several decades with two different interpretations of the effective date of a reference patent that essentially is a CIP.
     
    I have no idea what the drafters of the new statute intended, whether It codified the law as it currently exists, or to change it.  The topic never seems to have been discussed.
     
     it certainly has never been discussed here on  Patently O even though I have attempted to raise the issue numbers of times.

     
     
     

  27. You speak of a threshold test? How about this situation:

    Citation is a WO that declares an earlier Paris prio date. Disclosure of PCT and earlier prio filing identical. Prio filed less than one year prior to the PCT.

    So, the relevant disclosure goes back to the prio date doesn’t it?

    Well, no, not always.

    Suppose the prio is NOT the “first” application to protect that subject matter in a Paris country. Then the declaration of “priority” under the Paris Convention is invalid.

    Could it be that, absent a threshold test, new 102 swings the pendulum over, through neutral, to the other extreme, the other side from Hilmer? Hilmer gave you a shield but no sword. New 102 gives you a sword, even if you have no shield.

    Meanwhile, ROW gives you, and always did give you, offence and defence equally and symmetrically, a sword and a shield (or neither of them).

  28. I think I see where Ned is coming from, though. I think he’s saying there is a threshold test which the cited reference must meet, in order to benefit from any priority at all. Only after you’ve passed that threshold do you apply “whole contents”.

    If there is a threshold, I suppose it must come from 102(d)(2). Is the cited reference “entitled to claim a right of priority under section 119, 365(a), or 365(b)”.

    That takes you to section 119, and the Paris Convention language about it being for “the same invention” as in the priority application. Does that mean “invention as claimed”? Given that it talks about the invention of the priority application as well as that of the cited reference – and the priority application may not even have claims?

    And especially given that new s.102(d) introduces this new concept of looking at the “subject matter described”, both in the cited reference and in the priority application – which leads away from the “axiomatic” Wertheim assumption that the whole structure of the patent law is about claimed inventions?

    I’m not really convinced that there is this threshold; I certainly don’t think it was what Congress intended (to the extent they understood what they were doing!). However, I guess that someone might bring arguments like this in some future litigation.

  29. “The important part of the quote has to do with identity”

    Or, as the rest of the world calls it, “whole contents”. The whole content of the cited reference is available as prior art, if the relevant content is also present in the priority application.

  30. with respect to any subject matter described [in the cited reference] …. as of the filing date of the earliest such application that describes the subject matter.

    The important part of the quote has to do with identity.

    There is no issue here, and my post pertaining to CIP is exactly on point.

    If you can claim priority to the matching item, you get the priority (and by can claim, I mean can effectively claim). This is different than ‘patent claim,’ which really does not even enter the picture.

  31. Ned, thanks for the Wertheim cite.

    In Wertheim, the cited reference was a continuation in a chain which included CIPs. Whether it had an earlier effective date from its ultimate parent involved issues under s.120, s.112 and former s.102(e).

    The court said that those sections “speak with reference to some specific claimed subject matter by use of the terms emphasized. It is axiomatic in patent law that questions of description, disclosure, enablement, anticipation, and obviousness can only be discussed with reference to a specific claim which identifies “the invention” referred to in the statutes.”

    Thus, the court looked to whether the claim in the cited reference (the child continuation) had s.112 support in the ultimate parent. It didn’t, because the intervening CIPs had added new matter.

    However, I think you are right that the new law intends a different result. New section 102(d) doesn’t “speak with reference to some specific claimed subject matter” — i.e. subject matter claimed in the cited reference. It doesn’t ask whether the claimed invention in the cited reference has support in the priority application.

    Instead, new s.102(d) specifically says that the cited reference “shall be considered to have been effectively filed, with respect to any
    subject matter described [in the cited reference] …. as of the filing date of the earliest such application that describes the subject matter.

    So previously, at the time of Wertheim, it was “axiomatic” that you should compare the claim of the cited reference with the description of the earlier application whose date it claims.

    Now, however, s.102(d) means that is no longer axiomatic. It tells you to compare the description of the cited reference with the description of the earlier application whose date it claims.

    Having said all that, I can see a point which may arise in some future case. Section 119(a) still talks about the “same invention”, though not in quite the same terms as s.120 which was at issue in Wertheim. And new section 100(i) still defines “effective filing date” in terms of a claimed invention. So there might be a tension between that and the clear requirement in s.102(d) to look at the subject matter described in the cited reference, rather than the subject matter claimed.

  32. anon, since priority benefit tracks claims, it seems possible that a published application and a patent issuing on that application may have different prior art dates in the situation of a CIP where the priority claim to an earlier application or provisional that discloses some but not all of the subject matter of the published application and the patent issuing on it.

  33. IPMan, see my post below, but since the priority claim is not “effective” to the UK provisional, the subject matter A+B+C does not have a prior art date as of the filing date of the UK provisional.

    In re Wertheim.

    I daresay the new law is unclear on whether it was intended to codify current law or change it.

  34. IPman,

    In re Wertheim, 646 F. 2d 527 – Court of Customs and Patent Appeals 1981
    link to scholar.google.com

    Present US law requires that a priority claim be “effective” before the effective prior art date of the reference is moved back in time to the filing date of the priority application. Further, the subject matter forming the basis of the rejection must be described in both documents as well.

    Thus, if the a provisional describes A, the non provisions describes A and B, and claims A, the B subject matter is not entitled to the provisional filing date even though the non provisional is entitled to the priority to the provisional by disclosing and claiming A.

    Further, if the non provisional claims only A + B, the non provisional is not entitled to the priority date of the provisional disclosing only A. Regardless of the claim of priority, the priority is “not” effective. The prior art date of subject matter A is the filing date of the non provisional.

    The new law has language which is consistent with Wertheim. The new law requires the priority claim to be “effective.” That is what Wertheim held, in fact.

    But, since you did not read it that way, or did not understand it that way, the new law may have intended a different result.

  35. MD, under US law, the claim to priority listed on the face of a patent is simply that, a claim to priority. It doesn't mean that the issue of entitlement to priority has been adjudicated by anybody. Whether or not there is a right to priority with respect to particular claims is an issue that has to be litigated at some point. A simple claim to priority does not entitle one to priority.

    Furthermore, for prior art purposes, it works the same way. A referenced patent must be entitled to priority for the reference to have an effective prior art date as of the priority date. Once the priority is established, the case law seems to suggest that the full contents of the referenced application can be cited as prior art provided that subject matter has been carried forward and is also available in reference patent or patent application.

    For example, assume a priority application, a provisional application, discloses subject matter A, B, and C. Because the provisional application cannot be cited as prior art, the disclosure of A, B or C can be made prior art if the provisional is referenced in a published application or a published issued patent. Furthermore the claim to priority in that published application or published patent must be effective. To be an effective claim for priority, the published application or published patent must claim inventions A, B or C. Furthermore if the subject matter that forms the basis of the rejection must be carried forward from the priority document to the published application or published patent. In our example, if the relevant disclosure is subject matter subject matter A, that subject matter must be carried forward into the published patent application or published patent. The case law has never decided whether that subject matter must be claimed or whether it is sufficient for some other subject matter to be claimed in order to be prior art.

    What seems to confuse is your assumption that a claim to priority is all that is required to make the referenced patent or patent application effective as prior art as of the date of the priority patent application. That is not the law in the United States.

    But a might be the law of the AIA; and that is why I was asking the question of Dennis. The AIA has peculiar wording that could be taken as a codification of the current law or be taken otherwise. It is imprecise and inapt.

  36. MaxDrie,

    Althought Ned has commented “not like a CIP at all,” what you describe is exactly the aspect of the CIP that I was alluding to.

    We are on the same page on this issue.

  37. Ned, I think you are still suggesting that the effective prior art date of a cited patent or application depends on what its claims say. I don’t think that’s correct.

    Please see my post above. The effective date as prior art depends on the subject matter disclosed in the application or patent (“whole contents”), and on when the specific subject matter of interest was first disclosed (in a priority document, or just on the date of filing of the application itself.)

    So in the example in my post above, the subject matter A+B+C has the priority date of the UK provisional. The subject matter A+B+D only has the date of the PCT application.

  38. I’m trying to understand you Ned but can’t. Below, I will write some more. I hope you will then come back to tell me what I have misunderstood.

    Typically, a patent goes to issue with i) a filing date, ii) a declared priority date some months earlier than the filing date, and iii) a plurality of claims. What is “ridiculous” about some of those claims being entitled to the priority date while others of the claims are not? In the classic example, the inventor tests one more substance Xf in his claimed Markush Group X1 – Xn, between priority and filing, and includes the results in his filing. The results for Xf are surprisingly good, so it gets a claim all of its own. That selection invention is not entitled to the prio date but the claim to the Group as a whole is. How about that?

  39.  anon, not like a CIP at all.  I mean a patent based on a published application.  It has the same serial number but two different prior art dates.  That is ridiculous.

     
    Sent from Windows Mail
     

  40. Bingo. Thanks IP Man.

    This to both of you. Until 1978 the UK resolved priority contests (between rival filings at the PTO, under its FtF regime) using a “prior claiming” test. Then, in 1978, along came the harmonised European patent law of the EPC under which such priority contests are resolved (Article 54(3) of the EPC) using a “whole contents” approach.

    1978 is such a long time ago but I do vaguely remember the difficulties it posed under UK law, when the claims of the citation were a “work in progress” under examination at the PTO. So I can vaguely appreciate Ned’s concerns.

    But until somebody can convince me otherwise, my understanding is that the AIA has a “whole contents” and not a “prior claiming approach”.

  41. Can you imagaine the chaos if the two had different dates depending on the claims?

    You mean, like a CIP?

  42. Ned

    You caution that the priority claim of the cited PCT reference may not be good. It may be that the PCT is not be entitled to the benefit of the priority claim due to new matter over the UK provisional.

    That must be right, but I don’t think it gets to the point of difference between you and MD.

    You seem to be looking only for whether the

      claims

    of the PCT are entitled to the priority. It’s true that they are not so entitled if they have new matter.

    But I don’t think the priority of the claims is the appropriate issue to check in this situation.

    Please see new section 102(d):

    “For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any

      subject matter described

    in the patent or application-
    [....]
    (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) [....] based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.”

    I’ve emphasised

      subject matter described

    .

    Then take a look at the effect of sections 119(a) and 365(b). Taken together, and echoing the Paris Convention, they just say that the PCT must be an “application for a patent for the same invention. They don’t restrict the priority right to the claimed invention.

    So I suggest that the appropriate issue is whether the PCT and the UK provisional describe the same invention. It’s not whether the PCT’s claims are entitled to the priority.

    Take a specific example. Suppose the UK provisional describes A+B+C. Suppose the PCT describes A+B+C and A+B+D, but claims only A+B+D. The PCT claims are not entitled to the UK priority, because D is new matter. But the PCT still describes the same invention A+B+C as the UK provisional.

    Now suppose the US application under examination claims A+B+C. With respect to the subject matter A+B+C, the PCT is effectively filed under section 102(d) as of the UK provisional filing date. It is effective as prior art.

  43. Dennis, may I submit for your consideration that we need to have the issued patent and patent application have the same effective prior art dates?

    Can you imagaine the chaos if the two had different dates depending on the claims?

  44. Max, OK.

    The priority claim must be good under current US law for the PCT to have the effective filing date of the priority UK provisional. Under the hypo, it does because the specifications are the same. Any claim will authomatically be supported in the UK provisional.

    But I must caution you that I am not sure the same thing will happen if the relevant disclosure is in the US provisional but not in the PCT, or if the PCT is not entitled to the benefit of the priority claim due to new matter.

    The scope of the benefit of the priority of US applications has never judicially beed decided in any case of which I am aware. For issued patents, the prior art date today track the effective filing date of the claims in the references. If the claims in the reference are NOT entitled to the benefit of the filing date in a parent, the filing date of that parent is not the effective filing date of the reference and the prior art date is the date of the reference and not the date of the parent.

    Because the benefit tracks the effective filing date of claims, it remains very unclear to me just how a patent application whose claims are in flux can have the benefit of an earlier date.

    I think it best that the right to a benefit be determined only after the patent on that application has issued. But then, the patent will have the benefit or it will not. It would be remarkable, remarkable indeed, if the patent and the patent application would have different prior art dates. That would be beyond the pale of reason.

  45. Ned in my hypo, the PCT was filed AFTER your claim. So the only way the WO can prejudice novelty of your claim is that its disclosure gets the benefit of the priority date declared in the WO PCT publication. In that case, the disclosure content of the WO, that blows away any novelty in your claim, goes back to a date earlier than that of your claim.

    Sorry but i STILL do not see what any claim in the WO has got to do with it. Is it only claims that can prejudice the novelty of other claims. I thought the non-patent art was also good (as of its publication date) for attacking novelty. We are not here comparing claim with claim, are we? Rather, we are comparing (aren’t we) the claim under examination with the disclosure of a novelty attack document.

  46. MD, the claims of the WO document are relevant only if the priority date is the date you need. ONLY.

    If the international filing date is sufficient, the PCT published application is good as a 102/103 reference as of its international filing date regardless of claims.

  47. Ned thanks for that but it leaves the gulf of misunderstanding that lies between us even wider than before.

    The WO is a document that I am relying upon as a novelty attack. Normally, when one relies upon a document as a novelty attack, it is irrelevant whether that document includes any claims. Thus, I do not understand your obsession with the claims of the WO, and what date they are entitled to. In what way does their presence in the WO make any difference to the effectiveness of the WO as a novelty attack on the claim in the US patent application that you are examining? Is it not the disclosure content of the WO that one relies upon as the basis for novelty attacks?

    And readers, if any of you can see where Ned and I are not understanding each other, chip in please.

  48. Max, under the facts as presented, there is no question that any claim presented in the PCT (national stage) would be supported in the specification of the priority document. For this reason, the claim of priority would not simply be a "claim," but would be an effective claim of priority. Under US law, as I understand it to be, simple "claims" of priority are not sufficient. The priority claim must be effective. This requires that the claims have to be supported in the specification of the parent, which they are here because the specifications of the PCT and of the priority document are identical.

    Assume however that the claims in the PCT are not supported in the priority document. There effective filing date is the filing date of the PCT application, not the filing date of the priority document. Under US law, unless it is been changed by the AIA, the PCT application has a prior art date as of its international filing date and not of its claimed priority date. Thus, it would be legally irrelevant whether the priority document disclosed the same subject matter as your own application's claims.

    Regarding the question of whether the provisional application had claims in it or not, that is legally irrelevant to the issue of prior art. The question is whether the PCT has an effective priority date in the UK provisional. This determination does not depend, as far as I know, on whether the provisional has claims but on whether the claims in the PCT are fully supported in the UK provisional.

  49. Ned again can you clarify please.

    You are examining the patentability under the AIA of a specific claim. The claim is in an original patent application that has no way to get back in time to any date earlier than its own USPTO filing date.

    You have found some art, namely, a WO with a PCT filing date later than the filing date of your claim. But the WO declares a priority date that is earlier than the date of the claim under examination.

    You inspect the prio doc of that WO. It turns out to be a UK provisional. Its specification and drawings are identical with those of the WO. But it has no claims. Its disclosure is, in substance, the same as that in the USPTO patent application you are examining, not only in the detail but also conceptually (in the Summary of the Invention section of the UK provisional).

    Do you have in the WO a good novelty attack on the claim you are examining?

  50. What was that Canadian case (bio) with 18 Quadrillion possible claimed items…?

    Before you run onto the playground with your trophy of grass and sticks, maybe ask yourself: how many possible methods are covered by a method claim written using comprising language? After you answer that question, think about the answer and how it affects the “calibration” of your “B$ detector”.

  51. NEARLY everyone who could hurry – did so

    Nice goalpost move! Classic anon. You said “everyone hurried”. Now you say “nearly everyone who could hurry did so.” Please define “everyone who could hurry”. Who could not hurry? Are you sure you don’t mean “everyone who *wanted* to hurry?” Think carefully, anon, before you answer.

    there was a HUGE bubble of filing prior to the switch-over date.

    “Huge”? Compared to the pre-GATT filings in 1995?

    The FACT that people DID hurry has everything to do with the change in law.

    Uh … right. Now please put the goalpost back again. Your original comment suggested that that there was a disconnect between people filing before the law changed and the notion that the new law represented a “vast improvement over existing patent law”. I pointed out the fallacy in your logic, quite clearly. But maybe the real problem here is simply that you lack the ability to coherently articulate your views about … anything.

    most actual practitioners see less value in the new legal system.

    Are “actual” practitioners sort of like “true” practitioners? What’s the difference between an “actual” practitioner and a practioner? Also, please provide the data supporting your assertion. I believe you are wrong about what “most actual practitioners see” and the data will prove that I am correct.

    I believe in most respects the new system is an improvement over the old one, for all participants. Of course, when I say “inventors” I’m talking about skilled people who do more than simply sit around and dream up computer-implemented j–k that they can use to sue people.

    Only you (the Royal anti-patent you, that is)would see that as an improvement.

    Only you would double-down on an asinine falsehood.

    “unlikely to change the outcome… for the vast majority of claims” Either this is a dust cloud you are kicking up (not on point) or simply wrong (as evidenced by the FACT that there is indeed a patent filing bubble prior to the switch-over.

    The alleged “fact” of this allegedly “huge bubble” does not challenge my statement. The term “unlikely” has a meaning. Look it up. After you’ve understood the definition of that term, do a little research on “minimizing risk”.

    watch your agenda go up in flames

    You’ve been saying this for a while. All I know is that for the past five or six years the wind is pretty much always at my back. And I predict that’s going to continue (just as as I’ve been predicting). In part, my prediction is based on the behavior of people like you, anon. You know what I mean? People like you who squirm when the harsh light of reality shines on their self-serving l1es.

    You [sic] (mindless) crusade against software [sic]

    And my mindless crusade against laws that discriminate against gay people. And my mindless crusade against pointless wars based on non-existent threats. And my mindless crusade against voter disenfranchisement. And my mindless crusade against forcing ordinary people to “feel pain” when the rich people who messed up the country are doing better than ever.

    Yup. Mindless stuff. And clearly I’m just spinning my wheels on all of these things because the public is sooooo inherently oppposed to all these things and never changes its opinion.

  52. MaxDrei,

    What was that Canadian case (bio) with 18 Quadrillion possible claimed items…?

    I just want to calibrate my (proeperly characterized) “unpredeciatble arts” B$ detector.

  53. anon,

    By the way, your ongoing efforts to fight for start-ups and inventors on the patent blogs is very much appreciated. Thanks.

  54. only in America, the AIA does encourage the whole world to file prematurely, speculatively and without enabling what they disclose.

    I don’t agree, MD. The AIA does not encourage premature speculative non-enabled filing in the unpredictable arts.

    For blocking purposes, people in both the predictable and unpredictable arts have more or less the same option available to them: publish speculative stuff by the boatload. And absent a (welcome) change in the law, I believe people in the predictable arts are just as likely (or nearly so) to obtain patents on their speculative j–k as they were before.

    With respect to the unpredictable arts, it isn’t the AIA that encourages premature speculative non-enabled disclosures. The CAFC took care of that with their 2011 decision in Genetics Institute v. Novartis (but see Judge Dyk’s dissent). That was one of the worst decisions in recent years and hopefully will be corrected soon.

    link to pharmapatentsblog.com

  55. MD:” Which prompts me to wonder whether it was actually Malcolm and his people that drafted the amendments to 35 USC 102. For they strike me as likely to render it much harder to get patents in the “predictable arts” (engineering) while bringing no substantial new impediment to patentability in the non-predictable arts (chem/bio) where MM patrols the territory.

    I doubt that it will be “much harder” to get patents in the “predictable arts” unless there are further changes in the law. I do expect those further changes to come, however, at least in the computer-implemented area…

    But certainly it seems difficult enough to get patents in the (properly characterized) “unpredictable arts” already. At the very least you have to actually sit down and do some work and the granted claims are typically limited to what works. Even “broad” chem/bio claims such as those in the Myriad case are actually incredibly narrow compared to the abstraction that was the object of the research (and it’s those abstractions that are typically claimed in the computer-implemented arts, e.g., “The thing that does what I want it do.”).

  56. Under further reply, post March 16, for new applications, the PCT rules change.

    The PCT designating the US are effected as published applications. They are prior art as of their international filing date, and potentially prior art as of any priority dates.

    However, I still ask, what is the priority date of a published application because that depends not on the claim of priority, but entitlement to priority under current US law. That means claims (issued) and that those claims be fully supported under 112(a) to their parent. But what does this mean when there claims are in flux, as they are in a patent application?

  57. The difference is that the effective date as a prior art reference is now apparently the original filing date of the foreign application on which the PCT application was based, not just its publication date.

  58. 1. MD, under current US law, effective filing date means a claim must find support for all limitations in its parent.

    2. I think the new law changes that (but I might be wrong) from not whether a claim is actually supported in a parent, but whether the claim is made, regardless of whether the claim is effective.

    Regarding your hypo, under current PTO interpretation, the PCT is not prior art to anything before its international filing date. It would not be effective prior art to the claim.

    D1, if published or issued, is a reference by itself.

    Change your hypo to D1 not being published, not patented, but an abandoned application not published. Assume a provisional. Under current interpretation, D1 is not a reference under any theory. However, the PCT, once published, is a reference, but only as of its international filing date. Since under your hypo that international filing date is later than the filing date of the claim, it is not effective prior art.

    Does that help?

    My question to Dennis is more fundamental. I ask whether the new law codified the rules on effective filing date, and the effective date of prior art, or did it change them? (Other than Hilmer.)

  59. Thanks anon,

    I agree. That website will harm (not help) inventors. I was hoping that strong negative opinions about the site from many experts, will stop inventors from being harmed by that site.

    It would be helpful if experts could explain the harm to the law students; so they will stop and take that website down.

  60. Ned can you clarify by reacting to what I write below.

    There is a claim in a US patent or pat appln under the AIA. There is prior art in the form of a written document D1 that constitutes a “disclosure” of some technical teaching. D1 is the specification of a patent application (so it has a PTO filing date). That PTO filing date of D1 is earlier than the effective date of the claim in view. The priority of D1 is declared on the front page of a PCT WO publication. The PCT WO publication has a specification identical to the D1 specification and drawings, but it has claims as well. The PCT filing date is later than the date of the claim in view.

    Question is, is the WO prejudicial to the claim under i)102 or ii) 103.

    Suppose D1 is an enabling disclosure of something that falls within the scope of the claim. In that case, D1 is prejudicial to novelty. It matters not whether D1 includes one claim, a hundred claims or no claim at all. Whether D1 has any claim is irrelevant.

    I understand you see it otherwise. Care to explain?

  61. Dennis said,

    “3.Section 102(d) then stretches the prior art date back to the earliest priority filing date that can claim priority to the relevant disclosure.”

    What does this mean? I have no clue.

    Under current law, a claim of priority, to be effective, must support every limitation in a claim. This is known as “effective filing date.”

    For a reference to be prior art as of an earlier date, under current law, the reference must be entitled to priority under current law. That means every limitation in a claim must be supported in the priority reference.

    What Dennis said above does not even come close to what the current law is. That is why I asked his opinion, twice, in the prior thread, and twice with no answer, as to whether the new law changed the effective prior art date of references in any way — other than Hilmer, that is.

    Regarding PCTs, one should note that under prior PTO interpretation (which I not law), PCTs had no prior art effect to earlier applications even when they were filed in the US!!!!!!! That was absurd, and I have expressed my views on that several times. The PTO totally ignored 102(g).

    Regardless, I ask again, does the new law effect a change in the prior art date of references generally?

    MOREOVER, since prior art tracks effective filing date, just how can a patent application have an effective filing date to an earlier application when it has no fixed “claims?”

  62. What’s a joke is that in your opinion PHOSITA should be interpreted to only understand English.

    Now that’s funny.

  63. Not nearly as strange as you continuing to run commercial links to a site whose use would harm (not help) inventors.

  64. Clearly, that would depend on the actual details of the law now wouldn’t it IANAE.

    Not sure what point you think you are making… Care to explain?

  65. The myth of the thicket…

    Borrowed from link to ipwatchdog.com

    (reminder – change the “1′s” in the offending word back to “I’s”)

    The Myth of the Early Aviation Patent Hold-Up – How a U.S. Government Monopsony Commandeered Pioneer Airplane Patents. at link to bit.ly .

    Inventing-around Edison’s incandescent lamp patent: evidence of patents’ role in stimulating downstream development. at link to bit.ly .

    In each of these studies, we sought to collect, assemble and convey, a definitive and unassailable empirical evidentiary record including primary sources that cannot be characterized as “just another view” of the facts. Similarly, the economic historian George Selgin and his colleague John Turner have debunked patent blocking allegations regarding James Watt’s steam engine:

    Strong Steam, Weak Patents, or the Myth of Watt’s Innovation-Blocking Monopoly, Exploded at link to ssrn.com .

  66. Forgive my ignorance, but it was my clear understanding that a published PCT application was prior art under the old 102(e) as of its filing date if it designated the US. The only difference now is that you can’t swear behind it, right?

  67. …which prompts a further thought: the genius of using the tireless toilers of China as unpaid thicket-busters, while at the same time preserving the strength of the American patent system for the protection and promtion of valuable non-obvious progress in the useful arts, especially chem/bio.

    Chem/bio wanted a stronger patent system, while EE wanted one less strong. Does new 102 give both lobbies what they asked for? If so, I’m impressed.

  68. Ah, I see now, the wrath of Malcolm.

    Which prompts me to wonder whether it was actually Malcolm and his people that drafted the amendments to 35 USC 102. For they strike me as likely to render it much harder to get patents in the “predictable arts” (engineering) while bringing no substantial new impediment to patentability in the non-predictable arts (chem/bio) where MM patrols the territory. There are no thickets in chem/bio, right.

  69. Thanks Anon.

    Strange that a website with an apparent association with “Brooklyn Law” states:

    “Public disclosure of an invention under specific conditions may assist an inventor in later procuring patent protection pursuant to the Leahy-Smith America Invents Act (AIA), certain provisions of which go into effect on March 16, 2013.”

    “FirstToDisclose.org is a community-powered site that was created in the Spring of 2013 by members of the Brooklyn Law Incubator & Policy (“BLIP”) Clinic in anticipation of certain measures of the Leahy-Smith American Invents Act (AIA) taking effect on March 16, 2013.”

    link to firsttodisclose.org

  70. You STILL don’t understand the difference between FACT and SPIN, do you Malcolm?

    1) FACT: there was a HUGE bubble of filing prior to the switch-over date. Sure, not “everyone” hurried (like your lame example of those who could not hurry), but NEARLY everyone who could hurry – did so. Sorry, no amount of spin can change that FACT.

    2) The FACT that people DID hurry has everything to do with the change in law. (hint: THAT”S WHY THEY HURRIED) Um, “better preserved under the old law, means LESS well preserved under the new law: ergo, we are paying a lot more for a lot less now. Somehow, (I know it’s a stretch, well, for you anyways) the definition of value dictates that most actual practitioners see less value in the new legal system. Only you (the Royal anti-patent you, that is)would see that as an improvement.

    3) “unlikely to change the outcome… for the vast majority of claims” Either this is a dust cloud you are kicking up (not on point) or simply wrong (as evidenced by the FACT that there is indeed a patent filing bubble prior to the switch-over. You (mindless) crusade against software is quite besides the point (and what was the controlling law in relation to the exceptions to the printed matter doctrine, again…?) C’mon, Malcolm, talk real law – and watch your agenda go up in flames.

  71. It’s a bad joke running amuck, as I clearly labeled an opinion as just that, and the cl0wns here think I was talking actual law.

    So very ha-ha (not).

  72. The one-year grace period for filing a subsequent patent can allow time for inventors to retain counsel to draft a patent application and, especially in the case of small inventors, procure needed funding to do so

    In the old days, but the current grace period is so thin as to be non-existent. Even a “independent” and obvious invention over your disclosure bars you from obtaining a patent.

    Sorry. The defensive posture will prevent both of you from patenting, but it is precisely the little guy that gets the short end of that stick.

  73. “FirstToDisclose” (publicly) is spreading to inventors.
    link to firsttodisclose.org

    The apparent association with “Brooklyn Law” has credibility with some inventors.

    Is this ok under AIA or should it be stopped from spreading?

    From FAQ: “The purpose of FirsttoDisclose.org is simple – allow inventors to publicly and sufficiently disclose their invention so as to prevent others from “winning” the race to file at the USPTO. The one-year grace period for filing a subsequent patent can allow time for inventors to retain counsel to draft a patent application and, especially in the case of small inventors, procure needed funding to do so.”

    Thanks in advance for your help on this.
    Sorry that this is off target.

  74. Is this a joke that I’m missing? Even under the old law, a PHOSITA was presumed to have read all publications in all languages. That’s why prior art researches and litigators dig for publications in Japan, Sweden, Finland, etc.

  75. Sure I can clarify: the wrath of Malcolm, with whom you disagree on this point.

    Don’t you know that all those that disagree suffer the ‘wrath’ of speaking English as a second language and find themselves with an urgent need to see a doctor?

  76. Huh? Come again. I don’t see anything funny. No idea what “wrath” you are alluding to, anon. Care to clarify?

    No, I guess not. I dare say that you will be telling me next that I have only myself to blame and that what I really “need” to do is to read the entire content of all the current threads.

  77. Yes MM, all well and good but…..

    To deprive of novelty, an earlier teaching must enable. To render a later claim obvious though, an earlier document need not necessarily enable.

    Americans criticise ROW First to File with the argument that it encourages filing with premature speculative non-enabling disclosures. Truth is though, ROW FtF penalises those filers who jump the gun. They fail with their own apps, fail to touch the novelty of their rival filers, and fail to touch obviousness because they are not prior publishers.

    However, only in America, the AIA does encourage the whole world to file prematurely, speculatively and without enabling what they disclose. That will bring further disrepute on the patent system and so it is something I regret.

  78. Careful MaxDrei, lest you incur a “wrath” involving all of sudden accusations of English as a second language and needing to see a doctor…

  79. I’m thinking that we are not here concerned with what was obvious to the PHOSITA but, rather, what was “obvious” for Chinese innovators to include in their PTO filings, when they are laying down a defensive wall of WO publications.

    In terms of the act of conceiving of awesome new stuff that the public desperately wants (e.g., new methods of being informed when there is a sale on your favorite artists’ songs, wherein that artist has green hair and wherein the transmission of information is to a handheld device inside a robot car with optional flight capability), the skills required are more or less identical.

    The major impact, theoretically, would be in the predictable arts, the most predictable of which (at least, so we are told) is the playground of the computer-implementer types.

    I say “theoretically” because this assumes that giant exceptions aren’t made by Examiners and judges when comparing claimed inventions in that field to the prior art. Because “western civilization” depends on such awesomeness being patentable, or something.

  80. Excellent “What’s to worry about?” comment from MM on the other thread. Thanks.

    His comment does beg one particular question though: how much stuff is “obvious” to whatever he means by “the Chinese”?

    I’m thinking that we are not here concerned with what was obvious to the PHOSITA but, rather, what was “obvious” for Chinese innovators to include in their PTO filings, when they are laying down a defensive wall of WO publications.

    If the typical Chinese inventor is no more imaginative than the PHOSITA in the USA, then, agreed, nothing to worry about. But, otherwise, there might be. How many Chinese names do we see on the face of US patents (as inventors rather than attorneys or examiners)? Rather a lot, I had thought.

    LT: The Chinese file thousands of PCT applications but bring only a very very few out of the International Phase. Under the EPC, only those very very few are effective as of their priority dates. But under the AIA, they all are.

  81. As all States are automatically designated on filing for all PCT applications, does it mean that every PCT application will belong to the prior art under §102(a)(2) even if not nationalized in the US ?

  82. If the politicians were touting a similarly “vast improvement” to immigration law, would you expect prospective immigrants to want to get their applications in before the law took effect, or after?

  83. why was everyone hurrying to get apps in prior to the implementation of the AIA when the AIA is such a vast improvement for patent law

    1) Everyone did not hurry to get their apps in. Some did, some did not, depending on specific facts. For example, it would probably not have been advisable to rush the filing of a hastily conceived invention in the so-called “unpredictable” arts.

    2) Whether someone hurried or not had little or nothing to do with whether the AIA was a “vast improvement for patent law” (whatever that means) and much more to do with whether the applicant believed that his/her US patent rights would be better preserved by filing the application prior to the deadline.

    3) The increased scope of what constitutes prior art is unlikely to change the outcome (patentable or not) for the vast majority of claims, particularly in those art units where claims are examined by Examiners who believe (a) that the computer and the Internet were invented yesterday and (b) that eons of meatspace reality have no bearing on the obviousness of computer-implemented methods.

  84. Uhm, because prior to March 16, 2013 one of ordinary skill in the art only spoke English?

    LOL.
    How does one say that in Swahili, incidentally?

  85. “Now why was everyone hurrying to get apps in prior to the implementation of the AIA when the AIA is such a vast improvement for patent law as touted by the politicians?”

    Uhm, because prior to March 16, 2013 one of ordinary skill in the art only spoke English?

  86. Awesome.

    Now why was everyone hurrying to get apps in prior to the implementation of the AIA when the AIA is such a vast improvement for patent law as touted by the politicians?

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