The New Law Effective Today: 35 U.S.C. 102

By Dennis Crouch

Consider the text of new 35 U.S.C. §102.

(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

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

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) Patents and Published Applications Effective as Prior Art.— 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—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365 (a), or 365 (b), or to claim the benefit of an earlier filing date under section 120, 121, or 365 (c), 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.

35 U.S.C. §103

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

= = = = =

Notes of Import:

  1. Prior art is now keyed to the effective filing date of the application-in-question and – except for grace period and derivation purposes – dates of conception and reduction to practice are no longer relevant.
  2. The fact that someone else invented your idea first (or something similar to your idea) is irrelevant except in the limited case of a derivation proceeding. Rather, what matters in the general case is whether that other party created prior art. (Prior commercial users will have limited prior user rights.)
  3. On sale and public use activities are no longer limited to activities within the US. Rather, those elements can be proven with prior art arising from any region of the world.
  4. The USPTO has interpreted "on sale" activity of 102(a)(1) to be limited to public sales or public offers for sale. That interpretation eventually be challenged in court, though the challenge will likely take several years. That shift is a change from our prior understanding of on sale activity.
  5. Under the 102(b) grace period, the law indicates that pre-filing disclosures "of the claimed invention" by the patent applicant will not serve as prior art against the inventor own later-filed patent as long as the application is filed within one year. Despite that "claimed invention" language, the USPTO has stated that the safe-harbor will work to disqualify all inventor-disclosed subject matter, even if the disclosure only suggests portions of the invention or motivations behind the invention. Of course, care should be taken with a publish-early strategy because that publication will likely negate the possibility of non-US patent rights covering the subject matter disclosed.
  6. A prior-filed US patent application will continue to serve as prior art once it is either published or patented and will have a prior art date of its earliest priority filing date that includes the relevant disclosure. Foreign applications will only count as prior art as of their publication date unless versions of those applications are filed in the US. Thus, an ordinary published Japanese patent application will be considered prior art in the US as of its publication date. However, if a US application is filed that claims priority to that Japanese application then the US application (once it publishes) will be considered prior art as of the date that the Japanese application was filed.
  7. Large companies who file many patent applications receive additional relief from their own prior art under 102(b)(2)(C) and 102(c). Basically, a company's prior filed patent application will not count as prior art (for any reason) against the company's later-filed application so long as the prior application has not published or issued by the filing-date of the later application. Further, if the later-filed application was developed as part of a joint research agreement then the law will negate the prior art status of prior filed applications of any of the parties to the joint research agreement (so long as the prior applications were unpublished as of the filing-date of the later-application).

87 thoughts on “The New Law Effective Today: 35 U.S.C. 102

  1. it certianly sounds like the secret use sale provision was crooked as a 3 doller bill Ive never herd of it but they should be looking to eliminate all 40 methods of inventor theft so the can attract top marketable invention filings instead of all these retartive doublespeaking theft methodsof the present and past system.I was in on the previous art thing and not granting the second patent is to preserve the 20 year term on the original conception without which the second invention would not exist. It will prefent patenting around to preserve the original concievers rights the second subinvention conciever can pick up the patent after 20 years aniversary

  2. I just hope none of my clients are the test cases for all the exciting new changes, and their interpretation. In particular, the fact that secret use/sale is no longer prior art is certainly heading to the courts.

    I agree that the grace period is gone. That one may go to the courts too.

    I’m looking forward to the PTO doing a new and updated search every time any US or WIPO publications come out, since all those are now prior art. What do you want to bet that the PTO won’t comp the Examiner for the search refreshing now needed?

    Also, that there is a new benefit for corporations, in that art that is assignable to the same entity, or developed in a joint development agreement, isn’t prior art. Meanwhile, if three inventors work together on the first patent, but only two contribute to a second patent on an extension of the idea, if there is no obligation to assign, that second patent will not be granted over the first patent. I already encourage inventors to incorporate & assign to an entity, but now this becomes a much more pressing issue, as it has to be the case at the time of filing.

  3. Excellent “What’s to worry about?” comment from MM. 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.

  4. Unfortunately until I get what I need in the line of funding and a usable patent system nothing is going anywhere. Leaheys promise of 200000 jobs is just a lie. The congress pased me by on my request for 100 billion to restart the economy through invention conceptions and spent it on unneeded teachers so now theres nothing in the pipeline for future IPOs or marketable invention small business startups sorry america all retartives in government shutting everything down so far.

  5. I have no issue whatsoever with anyone posting opinions contrary to law – as long as they are so noted – exactly as I did here

    HUMPTY HAS SPOKEN! BOW DOWN!!!!

  6. Thank you.

    If you paid attention first, then you would not be so embarrassed now.

    I noticed you did not answer my question: Dope, are you related to Leopold?

    LOL

  7. Thanks for paying attention – next time do that before you post.

    As I have often said, I have no issue whatsoever with anyone posting opinions contrary to law – as long as they are so noted – exactly as I did here and that dope missed.

    Dope, are you related to Leopold?

  8. One day maybe you’ll “truly” understand that your “truly” repetitious use of a certain word “truly undercuts many of your comments.

    LOL – coming from you, that is TRULY meaningless.

  9. if you truly understand that patent law is driven by national concerns

    One day maybe you’ll “truly” understand that your “truly” repetitious use of a certain word “truly undercuts many of your comments.

    US patent law is not “driven by national concerns” any more or less than most other US laws.

    prior to AIA some designated publications legally served as prior art – not ideal in my view

    Which ones would exclude and why?

  10. dope,

    I recommend that you read the posts in their entirety before you ask for something that is needless based on the full comments.

    To wit: “Mind you, I recognize that it is the law and will act accordingly, but in my view it is a poor law, and does not add benefit to the system.

    Thanks.

  11. MD the horror of defining the state of the art (for purposes of both 102 and 103) to include all WO publications (including those in Chinese) and treating them as if they had been published on their PCT filing date (or even earlier, that is, on the earliest priority date they declare).

    As I recall, the earliest priority date applies only if the invention is disclosed in the priority document.

    think it is a disaster.

    Because a certain number of patents will not be granted or will be rendered unpatentable in view of earlier conception and description by Chinese applicants? That doesn’t sound like a “disaster”. It sounds like a minor change unless you are in the business of patenting inventions that are obvious to the Chinese.

  12. Hopefully this will all mean that they will investigate previous art to redetermine correct inventorship based on new clusters evidence to correct the frauds of the past of running the invention back in time to steal it under the previous system and thefts by intimidations. Then they can fit the other previous art and the new application into the new product although they need to realize the indegency of the conciever all the way through because of the large scale exclusion consperacy. I am not holding my breath though the corruption of the system is widespread and rancid.

  13. then the prior inventions of others in one’s own company is prior art

    Not sure you can make that jump. I believe the exclusions are not entirely gone, either, but do not have the current bandwidth to track that down for you.

  14. Anon, indeed the whole topic of the removal of §102(f) is a fascinating topic all by itself.

    If, prior knowledge of an invention of another remains prior art to the applicant, then prior invention of another remains prior art even though the a primary point of the exercise here was to remove prior invention entirely from the law.

    Furthermore, if prior invention of another is prior art to the applicant when he knows of it, then the prior inventions of others in one's own company is prior art. This will resurrect all the problems we had overcome with prior statutory framework where we had removed prior invention of another with in one's own company as prior art for obviousness purposes. Those exclusions are now gone from the law.

    And yet even within these pages, I think I remember Dennis argue that prior invention of another remains prior art under section 101 to the extent one knows of it.

    Wow?

  15. Remember anything going through the internet can and will be hacked so anything except immediate novelty check allows corrupt insertions in marketable valuable new conceptions so without it forget filing its stolen immediatly

  16. Anon, I am very surprised Dennis did not even attempt to tackle this question. The new law after all contains a definition of effective filing date. Is this intended to codify, or to enact a new law regarding effective filing date, particular yes it pertains to prior art.

  17. Dennis, I am surprised you did not answer my question about the effective filing date of a prior art reference. After all, the new statute contains a definition of effective filing date. Was is definition intended to codify the law or to change the law?

    Do you have any views?

  18. Up until past Saturday, someone else merely inventing something elsewhere in the world had no effect on patent rights granted by this country and effective ONLY within this country.

    (yes I am aware that prior to AIA some designated publications legally served as prior art – not ideal in my view if you truly understand that patent law is driven by national concerns)

  19. Why dident the fbi investigate there motives their paid off by corperations and likley under the table or for there own investment intrests and sworn to represent the intrests of the people what part of conflict ot intrests dont they understand

  20. Preaching to the choir MaxDrei.

    I personally contacted each of my representatives during the AIA process.

    To no avail, as the beneficiaries of this capture spoke with more gu$to.

  21. IF THIS IS SUCH A GREAT LAW:

    Why as there such a mad rush to file application by last Friday?

    Why didn’t everyone who filed an application Friday, as well as everyone who filed an application in someones behalf on Friday, oppose this nonsense while it was still just bad legislation?

  22. I am hopeful that this is progressive inventorship determination not further mutilation of the existing 4 mehtods to the point of musical chairs

  23. I definately dont see anything here about previous art patent reawarding where the indegent inventor was frauded I do see a link to previous art that may indicate that patenting around the parent conception may be eliminated?Theres nothing i see here that will cause the investors and R+D persons to form up behind the original conciever that whats needed to create a progressive patent system

  24. Why would you forget to post the rebuttal?

    Easy: the first four words: “Techdirt’s Mike Masnick responds

    Considering the source, it is safe to ignore.

  25. Reading this thread so far, I’m left with the impression that readers have not yet grasped the full horror, that is, the horror of defining the state of the art (for purposes of both 102 and 103) to include all WO publications (including those in Chinese) and treating them as if they had been published on their PCT filing date (or even earlier, that is, on the earliest priority date they declare).

    In China there are enormous numbers of WO publications, published for their prior art effect. Only a very very small percentage of them are taken further, into the national phase. In Europe, it is only that very small number that can rely on their filing or priority date for novelty attacks on co-pending applications of others under the EPC.

    For me, it is as if the Chinese wrote new 35 USC 102, to suit their purposes. Jim Boff thinks it “fun”. I think it is a disaster.

  26. think you have a bit of the “anon said” Leopold addiction going on. You do not address the language provided (which actually is not my argument, but rather is Paul Morgan’s argument as supplied at 10:11 pm on the 16th) and you then proceed to throw in something about the Hilmer Doctrine (what point you are trying to make with that comment is not clear at all).

  27. “Persons having ordinary skill in the art simply are not omni-lingual”

    Do you imply that ignoring that somewhere else in the world somebody has already published the invention in question should allow you to patent it provided you invented it independently ?

  28. This plus the CPC classification system are going to create a real mess. Dennis, can we get a blog entry for the CPC classification system as well?

  29. Jim asked for an “argument to the contrary” and you, anon, purported to provide one. But then all you did was to repeat what had been already written above, that Jim had already replied to. That was why I put “argument” in quotes.

    As for all the rest, I do not follow you. I leave it to others to help us here.

  30. For example, Paris Convention, Article 4 sections (A)(2) and (A)(3) for starters.

    Also, the Hilmer Doctrine was not repealed as much as it was obviated. Please note that the doctrine itself is very much still alive (it’s prior efect has just been wiped out) – even (or directly because of) the deference to domestic legislation of each country (witness the words in that same Paris Convention Article 4).

  31. Now, MaxDrei, if you were to introduce Article 8 and hint at possible effects of that article, then Paul’s position may leave you feeling ‘unconvinced.’

  32. The “argument” to the contrary, from anon, leaves me unconvinced

    Not sure I get what you are trying to say, MaxDrie.

    I think you have a bit of the “anon said” Leopold addiction going on. You do not address the language provided (which actually is not my argument, but rather is Paul Morgan’s argument as supplied at 10:11 pm on the 16th) and you then proceed to throw in something about the Hilmer Doctrine (what point you are trying to make with that comment is not clear at all).

    You stating you are not convinced (of anything) is just not compelling, as convincing you (no slight intended) is just not important at all.

    Where exactly under S 363 do you see even a glimmer of a different position? Tell. Please do.

  33. Freezing inventorship in the present along with having a 90 day notice of filing that expires on the filing date eliminates the potential of accidental devulgement claims in cases where the true conciever is certain that secresy of patent preperation has been maintained. This is where the initial disclosure document program that Kapos eliminated is suposed to be used. Also this program allows the indegent to establish a claim where conception is complete enough that it can be completed by others who become business partners to keep the cival rights of all citizens involved in the patent system

  34. getting rid of the one year disclosure allowance is part of changing to a genuine first to file system. Filing first along with immediate novelty check and lockering is the only creditable way to determine inventorship

  35. The “argument” to the contrary, from anon, leaves me unconvinced. A PCT filing should not have any legal effect at all, from any date earlier than its filing date as defined by Art 11 PCT. Who decides what is the Art 11 PCT filing date? Applicant? Inventor? Receiving Office? Art 11 tells us the answer to that question.

    But, once the RO has given the PCT filing an Art 11 PCT filing date, that PCT filing starts to have legal effects, as of that date (and not as of a date volunteered by the owner of the PCT application).

    And so it continues. After the PCT is WO-published, there are more legal effects. After the WO enters the EPO, there are yet more legal effects. For example, in the EPO, that were not there prior to the national phase entry.

    Be that as it may, is there any difference bewtween a PCT filed without any Paris Convention priority declaration and a PCT filed with a declaration of a patent filing 365 days earlier, of the exact same disclosure and claims set as in the filing on the RO-determined PCT filing date. I think there is, even under S 363. How could it be otherwise, under the law of any State that is a signed up member of the Paris Convention. I thought that the AIA abolished the Hilmer Doctrine, no?

  36. I think the argument to the contrary rests in article 11 of the treaty, which does not provide a filing date back beyond the international application

    Section 363:
    shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office

    Article 11:
    (1) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that Office has found that, at the time of receipt:

  37. It appears the ‘sane’ recourse will be to put into the public by publishing at the kopong community library in Botswana in Swahili the same day you file anywhere.

  38. My mistake Paul – 35 U.S.C. §102(d)(1) pertains to the date of the US filing rather than my errant read of the non-US filing.

    The driver appears to be the earliest right of priority filing date from (d)(2) – if you can trace and defend the priority to a particular filing date, then that date rules.

  39. If simplicity were the driving force, we would have tax law that would fit into a single sentence.

    Here, as in tax, the complications are driven by moneyed interests.

    You would have as much luck achieving that simplicity (sans interests) as you would have in communism actually working in this reality.

  40. But otherwise is there a change?

    Ned, you also forgot to prod for the removal of section (f) and the Pirate implications…

  41. Paul,

    If we do insist on filing, then it is still in 102 itself.

    35 U.S.C. §102(d)(1):

      if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent;
  42. Paul

    In my view Section 363 will not so limit to the PCT filing date.

    Section 363 says a PCT is equivalent to a national patent application as of the date of filing.

    Section 100(i)(1)(B) says (among other things) that the effective filing date of a claimed invention includes the filing date of the earliest application for which the patent or application (which by 363 includes a PCT application) is entitled to a right of priority under Section 365(b); and that section includes a prior foreign application.

    So in my view the foreign application clearly establishes an effective filing date once the subsequent priority-claiming PCT application is filed.

    What is the argument to the contrary?

  43. The point was to publish rather than file at all Paul.

    You publish in an obscure language, in an obscure country, and you have both place the item ‘in the public’ and quite effectively hidden it in plain sight.

  44. Yes, but Section 363 will still limit the prior art effect date of a PTC application designating the U.S., but not filed in the U.S., to the “international filing date under article 11 of the treaty.” That is not as good as getting the earlier filing date of the foreign application on which the PCT application was based, which one can now get under the AIA by filing in the U.S. and claiming its priority, right?

  45. Obviously I was not referring to the effect of a publication date, as that is not anything new. Rather, whether he is suggesting it is prior art as of its filing date even if not filed in the U.S.?

  46. LOL – sure, plenty of other shave no troubles – just check out other translations you had difficulty with – the government and AMA briefs in the Myriad case.

    Thanks Malcolm, for once again being the poster child of low quality blogging.

  47. Dennis, in your opinion, has the law regarding the effective filing date of a prior art patent been changed or preserved?

    Clearly, Hilmer is gone. But otherwise is there a change?

  48. Jim,

    Thanks for the additions – nice discussion on the evisceration of old 102(e).

    But purely for amusement sake, what if you did not want the examiner to find the reference? You know, let your opponent spend the time and effort to obtain a patent, scare off the other competitors and only as a defense, years down the road, if that particular opponent approaches you, then reveal the wonderful Botswanian library. As this type of discussion could happen behind closed doors, the world might not ever be the wiser, and your ability to progress in secret is far more powerful than the mere 18 months through the PCT.

    Far cheaper as well.

    If the opponent challenges you, well, there are plenty of post grant mechanisms at your disposal and at that time you can let the Office examine the reference.

    AIA is far more fun than anyone (well, almost anyone) could ever scheme to have.

  49. Paul, and anon,

    See also 35 USC 363 which now reads:-

    An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office

    having lost the language:-

    except as otherwise provided in section 102(e) of this title

    which was the bit I thought that required a translation for non-English PCTs:-

    except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language;

    and which further applied only if there was a US patent or application.

    Anon – the Swahili publication point is good, but has the drawback for the discloser that you get prior art effect only on public disclosure. If you want your cake and eat it, the PCT route is useful.

    The PCT filing gets prior art effect as from the effective filing date which could be 18 months or more before public disclosure, giving time to work in secrecy on the invention.

    Additionally, the PCT application will be more likely to be found (if not understood, given the language issue) by an examiner, and so more likely to prevent later patents being granted.

    AIA is such fun!!

  50. Paul,

    You are mistaken. It is in 102 itself.

    35 U.S.C. §102(a)(1) the claimed invention was… described in a printed publication,… or otherwise available to the public…

    There is no limit to “described” in this section, and “in the United States” has been removed.

    Even more to Jim’s amusement is that you do not even have to file a PCT application to achieve this effect. Simply publish it. Period. Publish it in Swahili, in an indexed magazine in Botswana. Good to go.

  51. Could you please provide us with the section number of the AIA amended statute by which “any PCT application, whatever the language of publication, becomes prior art in the USA regardless of whether it enters the national phase in the USA” since it is not in 102 itself?
    Thanks

  52. On point 5 -

    English is a language in which word order is important. “Sacrifices made before the founding of the Temple of Goats” does not mean the same as “Sacrifices of goats made before the founding of the Temple”.

    Analogously “Disclosures made 1 year or less before the effective filing date of the claimed invention” is not synonymous with “Disclosures of the claimed invention made 1 year or less before the effective filing date”.

    I don’t know if this clarifies matters, but it amuses me.

    On point 6 –

    There is no need for a US application for a foreign application to become prior art.

    Under AIA any PCT application, whatever the language of publication, becomes prior art in the USA regardless of whether it enters the national phase in the USA and regardless of whether (if not in English) a translation is filed.

    I hope the USPTO is investing in language training. The PCT publication languages are (in order of use based on WIPO 2011 statistics), English, Japanese, German, Chinese, Korean, French, Spanish, Russian, Portuguese, Arabic with English amounting to ~53% that year. Good luck with machine translation.

    For non-American applicants this gives another good reason for filing PCT applications; you can get prior art effect in the USA without ever filing a US application.

  53. They forgot one other thing more thats all significant parent previous art must be considered stolen and therefor a new patent should issue on that subject matter to compensate the cheated primary conciever.

  54. They forgot one entitlement to a patent issue here that is if the primary conciever was cheated of the patent originally then a new patent shall issue as compensation for the fraudulent awarding. Is there an attorney in the house. We need to get these new legislative bills away from cheating the inventor and his patrolling legal representive and into progressive and justice enforcing legislation

  55. Here’s a start. Explain why the simplifed language below [excess words removed in brackets, added words in caps] is not exactly how the PTO and most commentators have read this verbose AIA language:

    “(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—

    (1) the claimed invention was [patented, described in a printed publication, or in public use, on sale, or otherwise] available to the public before the effective filing date of the claimed invention; or

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

  56. So many typos in the Notes section. You’d think with this change coming for over a year now, that you’d have time to proofread.

  57. Dennis, I was suggesting another technical corrections bill [Congressional], not a judicial re-write, although there may well be a bit of that over the ambiguities.

  58. Good idea Paul. I was thinking what they should do with laws is lay them open to the public like source code for people to comment on it and offer alternative language.

    Probably improve the laws immeasurably.

  59. Thanks Dennis for this AIA 102 review.

    One thing on which there is widespread agreement is how confusingly written and unnecessarily verbose AIA 102 is, over and above the above-noted ambiguities. Could there be a prize contest for an “English 101″ or “plain English” version of AIA 102? A version that could get adopted as a “technical correction” bill?

  60. Machine translation may or may not be adequate – it is unpalatable to rely on such in determining my client’s US rights.

  61. They haven’t told us yet whether we’ll be required to check for support the foreign priority documents of 102(a)(2) refs when we rely on the foreign priority date, but it stands to reason that we’ll at least have to check a machine translation.

    I might not understand what you’re getting at, though, so I apologize if I’m not answering your question.

  62. I would also stress that patents are territorial.

    Aspects of the law that stretch beyond our borders in determining rights within our borders are indicative of the transnational corp influence.

    These are pernicious and lack a truly national view basis.

  63. Thanks Apotu, but those are steps that are not ‘real’ to inventors, but rather, are only real to you in the vetting process after the invention has been filed.

    That you don’t see the difference is part of the problem. It is an application of a standard, blind to common sense: Persons having ordinary skill in the art simply are

      not

    omni-lingual, and yet will lose the patent right based on this application of law.

    Mind you, I recognize that it is the law and will act accordingly, but in my view it is a poor law, and does not add benefit to the system.

    Also, note that we will still require you to provide us with a translation of your foreign language priority document if we find a reference with an intervening date

    It is not certain what point you are trying to make with this statement. It seems you are confusing and conflating two different scenarios. The foreign language prior art now available has (quite possibly) no nexus with my application (submitted in English). Will you have any authority to request someone who has only filed in Japan to provide an English translation if you choose to use that third party’s Japanese application as prior art to my application? Note that nowhere did I indicate that I am using a foreign language document as the basis for any priority in my filing.

  64. Big picture: Microsoft created their research division because of patents.

    China adopting patents not because of outside pressure but because they want to be like Korea. That is reality my friends.

    Not Benson so over reaching that they would dare to claim the use of nail for not only joining two pieces of wood to make a wall, but also two pieces of wood for a child’s toy horse. A number is a natural law.
    A shift register is abstract. Benson is obscenity. R@pe. Benson is asking the educated to believe what is outrageous. Benson is r@pe. R. Stern should watch 5 Minutes of Heaven. R. Stern committed murder of the patent system and should give it up and come back to the living. We will forgive you.

  65. link to wired.com

    Off topic…but this is a good article that gives us the big picture of reality. The anti’s consistently torture reality with their attempts to focus the argument on some tiny portion of the world.

    Big picture: information age. Big picture: machines processing information better than humans like machines in the physical world.

  66. 6) puts foreign applications on the same footing as US provisionals. Also, note that we will still require you to provide us with a translation of your foreign language priority document if we find a reference with an intervening date, so that we can be sure your claimed subject matter has written description support in the priority document.

  67. Comments on the notes of import:

    Date of conception and reduction to practice may have some relevance in Prior Art Rights (note 1 leading into note 2).

    The merits of 3) are quizzical, given that patents are still territorial, but I am not too hung up about it.

    4) It’s not only the USPTO that has promulgated this view. Further, it is far from the only portion of the AIA which will see (need) court interpretation.

    5) Absent here is the warning that publication without a concurrent filing runs the risk of someone else publishing an obvious variant which will preclude patenting of the first published invention. The grace period is but a paper thin protection now.

    6) is also quizzical, given the absence of any translation requirement, and the notion that PHOSITA now understands all languages of the world (no matter which art field is involved) One should recognize that this and 2) above both primarily benefit the transnational corporations.

    7) does not strike me as too terribly impactful, other than as a possible driver for more secrecy and less sharing (outside of tailored ‘joint research agreements’).

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