by Dennis Crouch
The general rule in our new first-to-file patent system is that your effective application filing date* is of utmost importance. In general that date is the trigger-date for prior art. Prior Publications count as prior art (102(a)(1) prior art) as do Patents and Patent Applications filed prior to the trigger-date (102(a)(2) prior art). To be clear, publications are generally thought of as prior art as of their date of publication, but we have a special rule for U.S. patent filings — once published or patented they become prior art as of their effective filing date. [Note, the statute stretches the date back to the “earliest [priority] application that describes the subject matter”].
I have identified these 102(a)(2) prior art patent documents as “submarine prior art” because they are kept secret (usually for 18-months) and then suddenly emerge as back-dated prior art. Pre-AIA law included the submarine prior art under what was then known as 102(e) (2010). However (and in my view) the new law expands the scope of submarine prior art in a few ways. First, under the new law applicants can no longer swear-behind prior art based upon their prior invention date. Second, under the new law the submarine prior art will stretch back further in many cases to encompass (for instance) the original foreign-priority filing date. [As with the old rule, a prior application by the identical inventor does not create submarine prior art].
A Company’s Own Prior Patent Filings: One exception to the submarine-prior-art issue is 35 U.S.C. §102(b)(2)(C). That sub-section indicates that neither prior-filed patent application publications nor their resulting patents will be deemed prior art if:
(C) the subject matter disclosed [in the prior document] and the claimed invention . . . were owned by the same person or subject to an obligation of assignment to the same person [as of the claimed invention’s effective filing date].
The basic idea here is that a company’s own secret-filed applications will not serve as prior art against the company itself.**
The Pre-AIA statute included a similar exception codified in 35 U.S.C. 103(c). However, the new exception is more powerful in several ways. Most notably from the face of the statute is that the old law only excused prior art for obviousness purposes but not for novelty purposes while the new law negates the references for seemingly any prior art purpose. Second, the expansion of submarine prior art (noted above) makes the exception relatively more important. As more applications continue to be filed in crowded technology spaces, I expect that the exception will continue to rise in importance.
Questions that I would like to pursue is how important this expanded submarine prior art is to the system and likewise the relative importance of the intra-company-exception.*** Theoretically, the exception favors (a) larger entities who file many incremental patent applications with a variety of inventorship team combinations as well (b) as applicants who file applications under non-publication requests. For examiners, do you consider whether an applicant can claim the exception before issuing a rejection or do you wait for the applicant to claim the exception.
This question will be part of one project that I’m planning to pursue this summer that will provide some initial studies on how the AIA has impacted patent prosecution.
On-point comments are very welcome.
*****
* The effective filing date is defined on a claim-by-claim basis as “the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).” 35 U.S.C. 100(i).
** Patents associated with inventions developed via a Joint Research Agreement (JRA) can also be avoided by parties to the Agreement. 35 U.S.C. 102(c).
*** I should note here that all countries have some form of submarine prior art, but many follow the European approach that the submarine art is not considered for obviousness (inventive step) purposes because of the reality that the secret prior art would not have been within the grasp of a person of skill in the art (since it was secret at the time).
Not to be a critic to anything said here, but aren’t we now evolving to a defensive publication strategy, as in the old IBM Abstracts?
And, is there a business plan about to publish previously unpublished abandoned applications?
RP,
I have not heard anything re: the change to possibly publishing abandoned apps – can you tell me more?
If this is a thought unilaterally by the Office, I don’t think this will get very far.
This is not a policy consideration by the USPTO. However, right now, patent applicant’s cannot expect to receive a patent. The strategy for publishing has changed, particularly since the fee has been dropped.
However, all those who filed before and abandoned their applications without publication may now reconsider. Publication would be by a private internet site. As I suggested, maybe this would be a potential business plan for generating revenue. Perhaps pat2pdf.org could take on this task.
RP,
I am still uncertain as to whether or not the government is planning on this “publication” effort.
Perhaps because anyone who themeselves have abandoned an application is (and always has been) free to publish them whenever.
Of course, the publication date of these previous submitted, abandoned and never seen before items will have a current publication date and not be back-dated to their filing date, so the impact of such as prior art would only be forward looking…
“Free to publish them whenever,” is true, what is needed is a private website publisher, as there is no plan to my knowledge of the government doing such. You are correct as to the effective date, but there are situations where even that can be an advantage.
I think this has to do with professors who like to publish and only later consult patent attorneys.
Is this an example of a submarine patent?
Patent: 8,126,822
Filed: 5/21/99
Issued: 2/28/12
Its emergence, 5+ years after mine has been hugely problematic. Sigh…
johnboy
On a more mechanical discussion of weaving the web of prior art, when you do your analysis I would suggest you may want to also explore the impact of extensive self-citations and its reach-back impact especially in light of M&A activity, real party in interest and attributable ownership issues; USPTO’s new embrace of patent families; and the use of combination sets of classifications as part of the search for prior art.
Arleen, you made me think.
Dennis the Tegernsee Group (the Big 5 Patent Offices) recently looked at the prior art effect of earlier unpublished filings, and how different jurisdictions handle them. The Group published a big report, which is available at least on the EPO Website.
The non-EPC PTO Group Members were asked why their jurisdiction exempts earlier filings of the Applicant herself from having a prior art effect. The answer from Japan is revealing. For BigCorp, when drafting, it is just too difficult (in Japan) to take into account all the content of all the company’s many earlier filings.
I didn’t see in the Report the reason the USPTO gave, but I guess it was “Because that’s the way we’ve always done it. And we are not going to change just because we are moving from FtI to FItF.
But, as Arleen notes, there’s trouble brewing, for all those lacking a heavyweight legal team with a budget to match. That is, for all but BigCorp.
A minor point, but which countries are in the Tegernsee group? You only talk of five? But which five?
The UK, France, Germany, Japan, and the US seem to fit the bill. Are those the ones you refer to?
USPTO, Japan, China, Korea, EPO
EPO is a country…?
Soon, anon. Soon.
…fourth kingdom?
Submarines and the quid pro quo. A scandal.
I learn in this thread that PTO Examiners search unpublished applications and can suspend examination of later filings till the unpublished hotties are published.
But they can’t tell the applicant what they have found in their search, till after the unpublished hottie is published.
Doesn’t anybody have a problem with this? You can’t get a patent. the Examiner knows why but you don’t. and the Examiner can’t tell you why. A scandal.
As to the Quid pro Quo, a lot of nonsense is writen about it. When you file, you have about 15 months to change your mind, pull the application, stop it being A published, and stay with trade secret protection. Offices like the UK, and to some extent the EPO, give you the search report early enough for you to pull your application before publication, once you see that the search reports knocks you out.
Some say the A publication offers no clue what claims will go to issue. I dispute this. The appln as filed has a writen description that enables the claimed subject matter over its full scope. you are supposed to include your Best Mode. If that isn’t enough to reveal what might go to issue well then the courts are not enforcing the words of the statute. But on things like “written description” they are tightening up now, aren’t they.
I know, I know, the issued claim will lie somewhere between the original claimed envelope and the detailed description. Not knowing precisely where, in between, is not the same as not knowing what subject matter is going to get to issue.
Scandal?
Solution: Deny all prior art effect to unpublished applications.
The theory of Milburn was that the applicant did all he could to get his patent published when he filed. But, if one chooses not to publish, that is no longer true.
We need to revisit non publication.
Wrong Ned – publication alone is not the key – you too seek to take from the patentee (hmmm, just like Big Corp)
That earlier filings block later filings is fundamental to FtF. So Ned, are you urging a return to FtI?
Max, the prior art effect of a patent as of the time of its filing date is a benefit. Why not deny the applicant of any rights of priority if they choose not to publish? They would have every incentive to expedite prosecution to get their patent issued. But if they chose to keep it secret, no harm, no foul, as we say. If it issues, the patent would then be good as prior art from the date of publication of the patent.
In this way, submarine patents cannot emerge to sink earlier-issued patents.
More quacks like Big Corp (and an absence of the appreciation of Quid Pro Quo, and the Congress crafted balance in PTA guarantees)…
submarine patents cannot emerge to sink earlier-issued patents
Can you tell the 99.99% of people who will never own a patent why they should care if some newly published patent “sinks” an earlier issued one?
This tiny expansion of prior art is not a real problem for most people, including most patentees who’ve actually invented something.
translation:
because people who don’t care about patent law, don’t care about patent law…
Or something
/off sardonic bemusement
MM’s comment set me thinking. What does Ned mean by “priority”?
Does he mean that the 102(e) effect of his non-published application is lost? just that and no more.
Or does he mean if the Applicant requests non-publication, his application does not have “priority” over later filed patent applications, in the queue for patent rights?
If the latter, that is a serious sanction Ned.
If the former (as I had up to now supposed) I’m with MM, that the sanction is not serious enough to bother anybody. The non-publishers will still want their applications held back from publication as long as possible, till the infringers are fully committed to the technology.
Max, priority and prior art are two different things. Overcoming prior art based on one’s filing date would still be available.
This leaves the possibility of to patents issuing covering the exact same invention unless the PTO actually searches unpublished applications for the same invention. If they did find one, they could inform the second filer that there is an unpublished application claiming the same invention but still issue the patent and let the second filer deal with the problem of his own patent’s validity if and when the first file patent emerges.
If the first filed patent issues while the second is pending, simply issue a double-patenting rejection against the second-filed.
Attractive idea Ned. I would not be surprised if there were unforeseen consequences but I cannot immediately shoot down your cunning plan. I like it.
Soooo many things missing from the conversations here…
The guarantees of PTA as a mechanism so that publication did not rob the Quid Pro Quo deal.
The fact (apparently oblivious to our foreign friend MaxDrei – which might be excused – but also from examiners -inexcusable – that pre-published art very much counts as prior art, is searchable, and should be used (the “on hold” time-out mechanism is real, and I have seen it on a portfolio that we inherited.
The aspect of obviousness is one NOT geared to any one real life person (like the inventor), but is judged as to the non-real PHOSITA, so there is no “real” fault with actual people unable to see unpublished patents. If that were a real concern, then PHOSITA would NOT have the omnipotent and omniscient ability of knowing EVERY piece of pre-existing art (and yes, in the post-AIA world, they included art published in Swahili on the island of Grand Terre (of the famous Kerguelen Islands, of course) in the public library there – one of the fifteen books catalogued and openly available.
But hey, who cares right? After all, the Quid Pro Quo was just for “grifters” anyway, right?
The problem with the expansion of 103 is not due to Rich, but to the Supreme Court in super-empowering the PHOSITA now to be an inventive entity, as that is what enlarges the “world of prior art” available under 103 to be the same (or nearly the same) as the “world of prior art” available under 102. It is the Supreme Court that didn’t like its “nose of wax addiction” messes with that sought to broaden 103.
anon, it ’tis a crying shame that the worst aspects of prior art were shoved down out collective throats by the AIPLA, an organization that we had long thought was there undo the damage caused by the ’52 Act/Rich with respect to secret prior art.
In your haste at chasing the anti-Rich windmill, you are aiming at the wrong entity (again).
The “world of prior art” – under Rich was always different for 102 and 103, because PHOSITA was never meant to be the augmented version that the Supreme Court has created in its anti-patent addictions.
The person of ordinary skill would not necessarily know of the whole of the prior art.
It is just what he would find obvious when considering the differences between the prior art and the claimed invention.
Now, expand that prior art to secret prior art, stuff not in the public domain, we are cutting down on the scope of the patents of later filers in favor of earlier filers. This is FTF on steroids.
And, recall, 102(f) is repealed. Patents are not invalid for not naming the correct inventors. So, FITF is a fraud on the public, a blatant, out and out lie told to Congress.
You’ve got this all crabbed Ned.
You really need to ask which “world” of prior art is pertinent.
“Known” is universal for both – and PHOSITA is omniscient (so talk about “secret” is a bit of a misnomer).
The difference under Rich (and Congress) was that 103 was purposefully and merely a subset of 102 to which the (lesser powered) PHOSITA was concerned with, primarily turning on the “In The Art” aspect. It was NOT that any art became “unknown,” it was that typical paths of invention (like cross fertilization of one art across another) were not supposed to be patent defeating.
Blame your beloved Supreme Court for messing that up.
Stuff “not in the public domain” was patent defeating even prior to the AIA – think about one patentee NOT getting a patent because a later filing patentee was able to swear behind the first to file but second to invent.
Not swear behind.
Invented before.
Grounds for revocation and for an interference.
Invented before…?
No.
Conceived before (and not lapsed in effort to reduce)…. Yes.
Further, you not-so-deftly miss the point that such eliminates a “regular filer” with art that he personally could not know about.
Do you recognize the point that I put on the table?
Is this (another) case where Ned’s version of being “shouted down” is accompanied by me asking him to speak up…?
That seems to happen a lot.
Anon,
I’d appreciate your input here. In terms of 103, I don’t see the problem, from a policy perspective, of including unpublished patents in the prior art.
While not published, the application does demonstrate, to some degree at least, the state of knowledge at the time the application is filed.
Of course, the applicant isn’t aware of the application, but it still demonstrates the state of knowledge in the art at the time of filing, right?
Good point Arthur. Yes, of course, what inventors wrote in their patent applications prior to the date of the claim under consideration can indeed reveal something of the state of knowledge in the technical field of the invention prior to the date of the claim and so sometimes can be probative.
The knowledge of any one individual though, is not decisive. We need an objective standard. That comes with the notion of the PHOSITA who has a defined store of knowledge. How shall we define that store? The way the EPC does it is to postulate some person who knows all that can be known by a person skilled in the art (so think Google and Google translate, and a perfect search algorithm) but does not know what cannot be known by such a person, such as unpublished applications at the USPTO. Inventors, engineers, judges, juries, business people VC folks, investors, journalists: they can all see the sense in the EPC definition of the PHOSITA and the EPC definition of the state of the art. Simples.
Some lawyers don’t like that. They prefer to keep their legal world mysterious, something only they can interpret, like bibles in Latin in the Middle Ages. Obfuscation. A nice little earner, if you are the only one that understands. A nice little conspiracy, by the big and powerful, against the little people
Max, there has to be a difference between skill and the state of the relevant art.
The state of the relevant art – by the omniscient PHOSITA (not a real person, and certainly not the real person of an inventor)
You are both up bright and early this morning I see.
Ned, I don’t understand. Perhaps we have a different understanding of what “the state of the art” means. For me it is what Art 54 EPC says it is. Perhaps you think of it as “the common general knowledge of the PHOSITA”? Of course I agree readily that “skill” and “CGK” are different notions. Who doesn’t?
Can we get this clarified.
It is amazing how difficult it is for you to recognize (or admit) that our sovereign has a different law, MaxDrei.
I have led you to this waters of wisdom many times, yet you refuse to drink.
Skills vary. The art is what is publicly available in the field of the invention.
Obviousness is judged by considering the art, the differences from the art claimed, to one of ordinary skill, not to one of exceptional skill, or to below average skill.
Well yes Ned, I see that. What I still don’t see is why you admonish me with your words:
“Max, there has to be a difference between skill and the state of the relevant art.”
Whatever was it that I wrote, that prompted those words of yours?
Ned,
Why do you insist on posting something when I have presented you with a point that you refuse to see?
Your “publicly available” version is just a little off.
You do however make a valid point that level of skill for the non-real person is important, but as I also told you, this is a Congress/Rich thing that has been messed with by the Supreme Court in their attempts to augment PHOSITA.
MaxDrei’s lament to Ned sounds familiar…
Sort of like:
“ non sequitur about “not covering improvements” has no bearing on anything that I have posted. How did you end up there?“
Max, I still think you Euros may be confusing things.
A person of ordinary skill in any art cannot know all of the relevant art. He necessarily is a person of limited knowledge.
The art is defined by statute. Publicly known is the ultimate standard.
The claimed invention is compared to the art publicly known to identify differences. It is only then that we bring the person of ordinary skill in to make a judgment as to whether the differences, in the context of the claim as a whole, was within his skill.
Here, our determination of the person of ordinary skill is made by looking at the average engineer. What describes this person. We get a feel for his capabilities. But we do not expect him to actually know all the art in the field. That would make him a fricken expert or better.
“A person of ordinary skill in any art cannot know all of the relevant art.”
Except that is the opposite of how person of ordinary skill in the art is defined.
Well yes Ned, when it comes to obviousness, we are taliking about “differences”, a “gap” if you like, between what was known and what is claimed. Is the step over the gap inventive (PHOSITA doesn’t bridge it) or is it an obvious step to take. The one who does or does not make the step? The one of ordinary skill in the art. Not only in the USA but also in Europe.
Here I doubt anybody is confused. Not even anon, it seems.
Go,
The timing aspect is identical as to 103 as it is to 102.
The different application appears fully grounded in misapplying the inventor as PHOSITA – hey, if foreign sovereign’s want to do this, that’s their right and I won’t knock it. But let’s not pretend that their law is our law.
This seems to me like one of the best points made on this thread so far. Obviousness is evaluated in terms of the PHOSITA, and the PHOSITA is not a real person. Who cares that no real person can know of these various sources of secret prior art at the time of filing? The PHOSITA does know of them, because the PHOSITA (unlike any real person) knows everything in the state of the art. As a matter of public policy, why is that a bad approach to take? It seems reasonable to me.
If the point is that this approach makes it hard to get a patent–well yeah. That is a feature, not a bug. Our common law has a presumption against monopolies.
In case it is not clear, the “this” in “this seems to me…” refers to anon’s original post #10. I just realized that my response occurs so far away from the original that the antecedent of “this” might not be clear. Sorry for that.
Well yes Greg, given. The PHOSITA is not a real person so you can ascribe to the PHOSITA any attributes you like. Of course. True. Go ahead. But is it wise?
Why ascribe to the PHOSITA nonsense unreal attributes, like being able to read written stuff that is private and confidential, stuff deliberately shielded from the public, like applications just filed at the USPTO which the filer can pull before publication, stuff which the filer has filed as a precaution, while reserving the right to pull it before the USPTO publishes it. What’s the point?
Would you ascribe to the PHOSITA the ability to read stuff in sealed envelopes which the sender privately mails to herself as proof of conception. For goodness’ sake, why? This is perverse nonsense, which destroys trust in the patent system, and renders it absurd.
Your turn now.
Obviousness must be evaluated in view of the state of the art. The reason why you might ascribe to the PHOSITA an awareness of secret to which real investigators do not have access is because these secrets are part of the state of the art. Given our common-law presumption against monopolies, it is not crazy to require that the bar for patentability be “you have to be non-obvious over even that stuff that other people working in your field would know, but which no one has yet told you.”
“…stuff that other people working in your field would know..”
Yes. Of course. But how about other inventors? When you write “other people” you mean “other people of ordinary skill in the art” right?
The content of envelopes sealed by inventive people is irrelevant and misleading, to the question what the notional uninventive person of ordinary skill in the art knows.
Or do you still dispute that proposition?
Sound like you are OVER emphasizing this notion of “uninventive” and misapplying the “content sealed” portions there MaxDrei.
Are you really sure you want to say that inventions (you know, by inventive people) are outside of the bounds of what the non-real person knows?
Is that your proposition?
I guess it is not clear to me why the content of these sealed envelopes ought not to be imputed to the PHOSITA. The PHOSITA has no creativity, but s/he knows a lot, well more than any real person knows. Why do you think that the contents of the sealed envelopes ought not to be imputed to the PHOSITA?
That is the point I really want to understand, and no one has yet explained to me. Instead I get things like “this is not how the rest of the world does it,” or “it is really hard for the Examiner’s to search this art,” and a million and one other reasons that do not strike me as very good reasons for why the US law should be one way or another.
Well I can’t speak for the USA but under the EPC the obviousness issue is explored by mapping the person of ordinary skill onto the “state of the art” (everything Google can find, if you like) and asking a TSM question: Does the skilled find in the art a hint or suggestion to put together the combination of technical features in the claim.
As I keep saying, this is a “real life” test question. One which every stakeholder in the patent system can relate to. When applications are refused as obvious, the judgement is manifestly fair, acceptable even to the disappointed inventor. That’s important, for nurturing confidence in the patent sytem, for widespread public acceptance that patents are actually, a GOOD THING.
Your turn.
A couple of thoughts in response:
(1) It is not my experience that inventors regard it as fair that their application is denied for obviousness, even when secret prior art is not involved. If the argument here is supposed to be based on what happens in “real life,” then I am finding the factual premises on which the conclusion is based somewhat implausible.
(2) I suppose that if a really large percentage of applications were denied on the basis of secret prior art, then I could see the sense of your point about this eroding confidence in the patent system. If the large corporations that fund so much of our more commercial R&D said to themselves
that would be a bad thing.
On the other hand, if denials based on secret prior art are relatively rare (and as an empirical matter, they are), then this is not such a huge deal. The net effect is that the public domain is slightly larger than it would be otherwise. The risk of being denied (or later invalidated) on the basis of secret prior art is small enough that it is still worth a corporation’s while to invest in R&D, even though it will turn out that some of those investments will be spoiled by secret prior art.
This seems to me like a socially better outcome than the one in which there is no secret prior art.
On a tangent but I wonder if tax laws are “nurtured” for acceptance by the gen er al public
(And I do note the assumption that MaxDrei’s view must be better in some undescribed “real life” test). Where can I obtain a copy of the results of that test?
Greg thanks. I agree with you. It is my experience too, that inventors subject to the obviousness objections of the USPTO think it not fair.
But at the EPO, it is different. Whether an obviousness attack lies is a TSM test, and the outcome depends on whether the drafter of your patent application set forth not only the technical features of your invention but also the technical effects they bring. When an application fails for obviousness, the inventor’s ire is then more likely to be directed at the drafter than the PTO Examiner.
Scarey, eh?
But see in these columns, how much desire there is, in the USA, for a return to a TSM obviousness test.
Dear Max,
On that point we can definitely agree. A more objective standard for assessing obviousness under U.S. law would be greatly desirable. Unfortunately, our current Supreme Court dislikes objective standards, which they disparage as “rigid.” They prefer “flexible” (translation = unpredictable) standards. More’s the pity.
Greg I don’t accept your premise, that “objective” necessarily means “inflexible”. I think the EPO’s “Problem and Solution Approach” applied under its “Principle of the Free Evaluation of Evidence” is at least as “flexible” as any other way of adjudicating what’s obvious, and 100% objective.
SCOTUS will reject any test that is so inflexible that it is not fair. MoT for eligibility, for example.
But it is not the job of SCOTUS to come up with an obviousness test that works. That burden falls on the Federal Circuit, and so far (in the opinion of the Supreme Court) it has failed to discharge its burden.
USPTO may “suspend” examination of later filed application Z, until earlier application X becomes public and can be cited in Office Action for Z?
Case A: Application X direct 102 for one or more claim(s) in later filed application Z.
Case B: Application X needed for “solid” 103 for one or more claim(s) in later filed application Z.
Case C: Application X needed for “arguable/weaker” 103 for one or more claim(s) in later filed application Z.
Note: Application Z may have “other” allowable claims even when Application X is considered.
Does anyone have a case where you can see an Examiner actually suspended a case until the prior art became public? Do Examiners actually even search non-published cases? I have never seen any indication that they do.
I don’t understand the question. Only when a patent application is A-published can it join the database which is accessed to do the PTO patentability search.
At the EPO, they wait until 18 months has elapsed, in order then to do a “top-up” search, just to make sure they are not on the point of issuing something that has no novelty over some other bod’s application with an earlier filing date.
But if you are going to allow applicants to suspend A publication indefinitely well then, given your precious “presumption of validity” for “duly issued” claims, you shouldn’t ever isssue any patent ever. Should you?
Yes, Examiners can search unpublished applications. They show up in EAST with clear markings all over them saying that they are not published and not for citing.
Close – but no cigar.
While it is true that a limitation exists prior to publishing (as part of the original Quid Pro Quo), there are proper mechanisms for the examiner to not blindly allow something that has even “submarine” prior art.
Do examiners really not know this?
How does one reconcile the comment at 9.1.2 with the one at 5.1.2? Are unpublished utility patent applications searchable by USPTO Examiners today, or are they not?
They are as far as I know – I was hoping for more on this idea that the Office has unilaterally stopped looking at this (US) source of prior art.