The Federal Circuit has granted a petition for en banc rehearing in The Medicines Co. v. Hospira and requested briefing on the following questions:
(a) Do the circumstances presented here constitute a commercial sale under the on-sale bar of 35 U.S.C. § 102(b)? (i) Was there a sale for the purposes of § 102(b) despite the absence of a transfer of title? (ii) Was the sale commercial in nature for the purposes of § 102(b) or an experimental use?
(b) Should this court overrule or revise the principle in Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001), that there is no “supplier exception” to the on-sale bar of 35 U.S.C. § 102(b)?
In the original opinion, penned by Judge Hughes and joined by Judges Dyk and Wallach, the Federal Circuit reversed a district validity determination — holding on appeal that the “district court clearly erred in finding that the bivalirudin batches prepared by Ben Venue Laboratories before the critical date were not sold to The Medicines Company and were prepared primarily for an experimental purpose.” This is one of a series of cases where the patent has been invalidated based upon a private supplier arrangement that counts as a “sale” or being “on sale” even though there is no public notice of the sales activities.
Although the “on sale” language in Section 102 is identical post-AIA, many believe that the structure of the first-to-file provisions of the AIA should be interpreted to narrow the definition of the term to only include sales and offers to sale that are themselves available to the public. In that situation, the sale that seemingly occurred here would likely not be seen a prior art.
—
There are a number of ways that large companies benefit from the patent system (apart from having more money). In a addition, the laws negate a substantial amount of what would otherwise be prior art if it was created within the company. Larger companies have more activity going on within their company and thus benefit from this network effect. In this case, the patentee went outside its company to order supplies for further testing and ran afoul — there would have been no problem if it had first purchased the supplier and then obtained the supplies. The court is considering a supplier-exception that would eliminate this as prior art — that probably works post-AIA, but not pre-AIA.
The good Prof has “edited” the thread – but has not YET removed the personal IP address block…..
Removing my comment – as polite and as truthful as it is – changes NOT the perception that you are just still having a tantrum that your desired narrative is not “left alone” here.
Yup – still personal IP address block
Still there…
The point of this personal block is… what exactly?
Other than to prove my point that “rules” are not being uniformly and objectively applied, that is…?
Judge Hughes has incorrectly applied D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147 (Fed. Cir. 1983) in the original panel decision. Judge Markey made it crystal clear that he was not applying 102(b), but a parallel judicial doctrine. He used this doctrine to invalidate process claims, not product-by-process claims. D.L. Auld did not have any product claims at issue. Furthermore, unlike The Medicines Company, D.L. Auld obtained a commercial benefit from the sales activity at issue. The Medicines Company got no commercial benefit from receiving an order from its supplier. It only received a benefit when it later sold the same materials.
If the “on sale bar” comes into play from paying someone for making the patented goods, why isn’t there an “on sale bar” when an inventor pays his employees to make patented product? Why doesn’t it apply when an inventor has his technician, whom he pays, make a second batch after a successful first batch has been made.
Rather than create a “supplier exception” doesn’t it make more sense to say the inventor can’t create a barring sale by purchasing the patented good. As W.L. Gore makes absolutely clear a 3rd party sale is not a prior art event unless the sale is public. In W.L. Gore the operation of the machine sold by the 3rd party was subject to confidentiality obligations. The only non-public sale which effects patentability is a sale by the inventor and that is by a judicial doctrine brought into Federal Circuit precedent by D.L. Auld.
Auld at 147-8:
link to scholar.google.com.,+714+F.2d+1144,+1147+&hl=en&as_sdt=2006
Lawrence, the source of the Federal Circuit error is Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001) which purported to follow Pfaff, but in fact, ignored Pfaff.
In context, citing Pennock v. Dialogue, Pfaff was stating that the commercial use or sale had to be to the public, which was the holding of Pennock. Pfaff did not purport to overrule Pennock in any way. But Special Devices certainly did.
Ned, you are indeed correct with regard to Special Devices; it is badly decided.
The quote I favor from D.L. Auld is “The “forfeiture” theory expressed in Metallizing parallels the statutory scheme of 35 U.S.C. § 102(b), the intent of which is to preclude attempts by the inventor or his assignee to profit from commercial use of an invention for more than a year before an application for patent is filed.” In my mind the key is “parallels”.
The case law has, in my view, unnecessarily tied itself up in knots over non-public sales by the inventor. Judge Markey nicely created a solution to commercial exploitation by an inventor with a forfeiture doctrine. Judge Markey attributes it to Metallizing, but unfortunately Judge Hand was not as clear as Judge Markey and his opinion in Metallizing can be read as an interpretation of statutory law (But not 102(b) as the decision in 1946 predates the 1952 recodification of patent law). Sadly Pennock v. Dialogue is also less than clear on this point. While the Pennock product was sold to the general public the opinion suggests that it was not readily back engineered. Thus it is unclear if the case was based on the availability of the product to the public or on the judicial desire to avoid excessive commercial exploitation by an inventor before he files his patent application.
The language which suggests that a third party sale need not inform the public to create an “on sale bar” fails to take account of W.L. Gore v Garlock, 721 F2d 1540, which sqaurely held that such a private non-informing sale was not a prior art event.
There is some unfortunate case law and academic writing trying to create a special class of “sales” when the inventor is involved in the sale. It seems to me the forfeiture doctrine of D.L. Auld addresses the policy concern without torturing the logic of “on sale”. Regardless of whether Metallizing is clear about the matter, I see no reason Judge Markey couldn’t create Federal Circuit law on the point in 1983, shortly after the court was created.
In my view, the forfeiture doctrine annunciated in D.L. Auld is no more remarkable than other judicial doctrines like inequitable conduct or obvious double patenting.
Pennock was based on “forfeiture” of a right to a patent. That is where the doctrine originates.
“It is admitted that the subject is not wholly free from difficulties; but upon most deliberate consideration we are all of opinion, that the true construction of the act is, that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use, or to be 24*24 publicly sold for use, before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right; or rather creates a disability to comply with the terms and conditions on which alone the secretary of state is authorized to grant him a patent.”
Pennock v. Dialogue, 27 U.S. 1, 7 L. Ed. 327 (1829). link to scholar.google.com
“Still, it has held, that, without any enactment or statute declaration to this effect, if the first inventor should put his invention into public use or sell it for public use before applying for a patent, he would create another bar to his claim for a patent, distinct from the question of priority of invention; because his voluntary acquiescence in the public use of his invention would create a disability to comply with the conditions on which alone the proper department of the government was authorized to grant the patent.
This ambiguity led to the incorporation into the act of 1836 of the further condition, that the discovery or invention was “not, at the time of his application for a patent, in public use or on sale, with his consent or allowance as the inventor or discoverer.” The intent of this provision was to cause a public use or sale of the invention in anyone instance, if consented to or allowed by the inventor, before his application for a patent, to be a bar to his obtaining a valid patent, and also to recognize such a bar where there had been a general abandonment or dedication to the public.
Under this statute, therefore, an invention might be allowed to be in public use by the inventor in two modes. He might allow of its use in public by an individual or individuals, or he might allow the whole public to use it, by having abandoned or dedicated his invention to the public before his application. In either case his patent would be void. But by the act of 1839, § 7, this inconvenience was so far remedied as to confine the forfeiture of the right, in cases of individual use with the permission of the inventor, to such use prior to the two years preceding the application for the patent.”
Curtis, George Ticknor. “A treatise on the law of patents for useful inventions: as enacted and administered in the United States of America.” Little, Brown, 1867, at p. 86-86 link to books.google.com
The best give the patent bar could give itself would be to give each member of the Federal Circuit, including all their clerks, a copy of Curtis(67).
Except not Ned – for several areas of the modern world that Curtis is simply and woefully inadequate.
Maybe you want to try to at least get into the 20th century and digest the Act of 1952.
Metallizing is…
is…
is…
(wait for it)….
…gone.
See The Soliloquy.
Liking a conversation that two senators put into the Congressional Record does not make the conversation positive law. Laws, to my understanding of the US Constitution, are texts that are voted upon by both Houses and signed by the President. The famous “Soliloquy” was not even part of a Committee Report that was voted upon by the reporting Committee. And the famous “Soliloquy” refers to Metallizing not D.L. Auld. The governing precedent at the time the AIA was passed was D.L. Auld. Metallizing was a 2nd circuit case from 1946 that the Federal Circuit was free to follow or not as part of its charter to create a body of nationally consistent case law in the field of patent law.
Neither the 1952 Act or the AIA explicitly dealt with certain judicial doctrines which are nonetheless part of the patent law. Among these are inequitable conduct, obviousness double patenting & forfeiture for secret commercial use.
“Liking“…?
This is no matter of “liking,” my friend; leastwise, on my part.
There is no “liking” to be had for The Soliloquy, and your attempt to portray this as a mere choice as such is simply off the mark as to what the congressional record means in this case.
As well, you over emphasize the Committee Report.
The record to which BOTH sides of Congress has before it – critically – when each side voted for the final version of the AIA – is what matters.
Lastly, you throw a red herring out there with your attempt to drag in other judicial doctrines which are not on point, not a part of the discussion, and have nothing to do with the explicitness of what Congress affirmed that it what doing (the radical revamp of 102/103) and the guiding principle (The Soliloquy).
The “like” part of this conversation is solely on your end, just in the negative dislike of what Congress actually did.
You do not get to ig nore that.
Perhaps it is important to precisely define the relevant portion of “The Soliloquy”. Anon, is your reference to “Mr. LEAHY. I agree. One of the implications of the point we are making is that subsection 102(a) was drafted in part to do away with precedent under current law that private offers for sale or private uses or secret processes practiced in the United States that result in a product or service that is then made public may be deemed patent-defeating prior art. That will no longer be the case. In effect, the new paragraph 102(a)(1) imposes an overarching requirement for availability to the public, that is a public disclosure, which will limit paragraph 102(a)(1) prior art to subject matter meeting the public accessibility standard that is well-settled in current law, especially case law of the Federal Circuit.” which appears at 157 Cong. Rec. S1496. If so, it is referenced in footnote 20 in the Committee Report (HR Rept. 112-98) for entirely different point. But in any case it speaks to “prior art” not forfeiture. Judge Markey made it quite clear in D.L. Auld that he was adopting a judicial doctrine not defining prior art. W.L. Grace made it abundantly clear that secret commercial activities by a third party do not serve to create “prior art” against an unrelated inventor. So not only is “The Soliloquy” not positive law, it also fails to speak to an inventor’s forfeiture of his ability to obtain a patent for secret commercial us.
Lawrence, one of the considerations the Federal Circuit must consider in deciding this case en banc that we really do no want two different interpretations of On Sale operating in the US, one pre-AIA and another post. Clearly someone drafting the “otherwise available to the public” part of the new statute was targeting and attempting to overrule confidential supplier-type on sale bars.
“But in any case it speaks to “prior art” not forfeiture. ”
You quite miss the point that the forfeiture was captured in the statute at the prior art section.
That personal forfeiture was expressly removed.
It is NOT a “f a i l u r e” to speak at all.
You really must accept that which IS.
Clearly Judge Markey did not feel that pre AIA 102(b) captured inventor forfeiture. Thus he spoke of a doctrine parallel to the statute. If the AIA just changed the statutory definition of prior art, it did not extend to judicial doctrines. Occasionally Congress will overrule a court decision as it did with 35 USC 271(f) and Deepsouth, but in such cases there is no doubt that the statutory text directly addresses the issue.
“If the AIA just changed the statutory definition of prior art, it did not extend to judicial doctrines.”
There is ZERO credibility in this statement.
The source of your dust-kicking is the logical fallacy of grouping all judicial doctrines together.
Clearly – if Congress acts to radically revamp a portion of law that has a “mirrored doctrine” attached, that doctrine is indeed affected by what Congress does.
As I stated – you just do not get to ig nore what Congress did.
Clearly, you are attempting to elevate dicta over the plain words of Congress.
Clearly, the words of Congress are reflected in the message that I have presented.
– radical revamp of 102/103
– elimination of the so-called “personal bars” that were reflected in the purposeful changes (both substantively AND in the label of the section:
From:
Pre-AIA 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
To:
35 U.S. Code § 102 – Conditions for patentability; novelty
I “get” that you don’t like that message.
But it does no one any good for you to be kicking up mounds of dust in an attempt to cloud what that clear message is.
I don’t believe that Judge Markey’s clear statement of why he held D.L. Auld’s patent invalid qualifies as dicta. It was the direct holding of the case.
Anon, have I properly identified “The Soliloquy”?
Is there anything beyond “The Soliloquy” and the shortening of the title of 35 USC 102 which supports “the elimination of the so-called ‘personal bars’ by the AIA? And just what other “personal bars” were addressed beyond the commercial use of a trade secret? Post AIA there are still some “personal bars” such as inequitable conduct and deceptive misnaming of an inventor.
It is absolutely dicta.
And the other doctrines you mention – as I have already indicated – are nothing but non sequitors.
Please stop trying so very hard to kick up so much dust.
I suspect people who argue that Congress intended to completely overhaul 102 are going to get a rude awakening when someone asks the Supreme Court to construe the phrase “available to the public.”
Something that is “open to all” or “notorious” is public. The Federal Circuit is acting as if AIA 102 says “The invention is…public” because it commands that it be publicized in a notorious manner. But the phrase in the statute is not “public” but “available to the public.” Something becomes available to the public the moment it is not subject to a secrecy command. In other words – the natural reading of AIA 102 is that secret knowledge of the invention by a single person not under the control of the inventor constitutes prior art under 102a1.
There is substantial caselaw on this with respect to the first amendment and dissemination of information by the press. Its not uncommon to have information which is, in fact, publicly available, but has never been published.
You are trying (too hard – ‘natch) to substitute pre AIA caselaw for what was explicit in the AIA (and NOT in the other areas that you want to insert in the AIA, but were not there).
Rude awakening…?
Yep (for you).
You are trying (too hard – ‘natch) to substitute pre AIA caselaw for what was explicit in the AIA (and NOT in the other areas that you want to insert in the AIA, but were not there).
Just the opposite. The ’52 act continued the prior phrase “by others” which the comments in the ’52 act construed as being “by the public.” If one were to “substitute pre AIA caselaw” into the AIA it would support the contention that only published data could be prior art.
It’s only people who argue that the AIA intended to rewrite and modify 102 who would agree with the plain-language interpretation that secret data could be prior art.
I should point out that the original interpretation of “by others” allowed for secret prior art. In short – we’ve come full circle: There was secret prior art, then there wasn’t, then the ’52 act incorporated “no secret prior art”, now the AIA has arguably gone back to secret prior art.
The question of whether Congress can constitutionally ignore secret prior art has never been raised as near as I can tell.
Test.
Random, Ned, Paul, and J,
You may have noticed that my posts on this thread may seem to be playing to two disparate thought patterns concerning 102(/103).
That would be an accurate, or at least a semi-accurate observation. I am indeed playing the Devil’s Advocate here.
The simple reason for this has to do with the very publicly avowed (multiple) purpose(s) of the AIA: a radical revamp of the law of 102/103.
J (in particular, but not exclusively), it does not matter how many “smart” people want to hold onto the past views (and Random, to past caselaw). The bottom line here is that Congress was explicit that they were overhauling this section of law.
As such, they simply do not need to list out every single prior case in the judicial “interpretations” of the pre-AIA law and
ann0unce – by name – whether or not those “1nterpretat1ons” are still “g00d law.”
Is this reckless?
Perhaps.
But it is what Congress did.
The AIA on the whole is a horrible piece of legislation, and I for one am quite glad that Congress gambled on a “Chaebol-like “too big to F A I L” gambit when they expressly considered AND REJECTED the separability amendment.
Like it or not (those who adore the judicial branch and would place that branch above the law and above the separation of powers doctrine), this law is not susceptible to ANY “interpretation” that would put in effect that which Congress explicitly rejected. You simply cannot “piecemeal” portions to remain in effect, while giving Congress time to change any offending portions. You don’t have the “delay” option. If (ANY) portion is deemed unconstitutional, the WHOLE must fall.
(by the by, something in the filter did not like the words in the 8.1.1.2.1.1.1 post)
Random, agree entirely.
I was making the point also that prior is that which cannot be withdrawn from the public domain. Secret information cannot be withdrawn since it is not in the public domain. Therefor, secret information cannot be prior art.
Which is why prior invention, information received confidentially and work on inventions under confidentiality agreements cannot be prior art. They all were never public until some time after the date of invention or filing of the patent application of concern.
Which is also why I categorically oppose the notion that secret patent applications should be treated as prior art for obviousness purposes. What we have done in the AIA is inconsistent with the rest of the world that only treats truly public information as prior art.
Which is also why I categorically oppose the notion that secret patent applications should be treated as prior art for obviousness purposes.
The major distinction between “secret” patent applications, on one hand, and “confidential communications” on the other would seem to be that there is no “intent” to keep the patent application out of the public’s hands. On the contrary, the applicant’s intent is for the information in the application to be disclosed along with the date of filing. At the very least it seems reasonable to allow such a disclosure to be used as evidence of what a skilled artisan would have been motivated to do as of the filing date (because it actually happened and because the applicant intended both disclosure and the date of its disclosure to be publically available).
MM, slippery slope there bringing in the intent of the applicant.
Many patent applicants would like to know what claims they are going to get before they allow their patents or applications to be published.
Malcolm simply does NOT recognize the historical aspect that patent applicants has always had: the option to continue in Trade Secret status for items purportedly “shared” if the examination process was not going in the direction desired.
Up to the forced publication realm, the “brokered deal” worked well and the applicant was in control.
Forced publication strikes again with another “unforeseen” consequence – one not in the applicant’s favor.
Forced publication strikes again with another “unforeseen” consequence – one not in the applicant’s favor.
It was totally foreseen.
It’s not all about you and cohorts. It’s weird that you haven’t figured that out yet.
Malcolm,
The inly thing that I can make from your “emotive” post (cohorts…? really?) is that you just want to be contrarian.
What does it even mean to say that “not all about you“…?
Ned: Many patent applicants would like to know what claims they are going to get before they allow their patents or applications to be published.
Then learn about the prior art, come up with data regarding unexpected results at the time of filing, and draft a great patent application.
People do it all the time. It’s really not that big of a deal.
Of course all bets are off if you’re playing a different game entirely.
^^^ and there you go again, pretending that your own optional chosen path this the ONLY path possible.
You are simply quite wrong to try to make this an issue of law (e.g. learn about the prior art….).
Mind you, I am not talking about Best Practices here. Also – and a further point you should be aware of, since Prof. Crouch pointed this out a little while ago – the art chosen by examiners to use in their rejections is very often different than even the most arduously researched and well-supplied prior art sets provided by applicants.
As we see (once again), your “emotive” reply just simply misses the mark. All we see is your enmity towards those seeking patents.
You really need to get into a line or work for which you can believe in the end product.
your “emotive” reply
LOL. You really are a piece of work.
Let’s put it another way: nobody cares if your high concept “method of sending an email alert to a mobile device when your cat p00ps” is kept a trade secret or not. Nobody except for you and your cohorts that is.
Now go ahead and cry another river for everyone.
No one is “crying another river” let alone crying a first river.
Not “cohorts.” Not I. No one.
Maybe you want to try again to make an actual point…
Also, MM, one might provide for immediate publication (laid open) as a option to those who wanted to immediate prior art effect.
The price of prior art status is disclosure to the public.
Well lets set our terms:
“Public domain” is synonymous with “publicly available” or here “available to the public.” It is information which can be disseminated without the disseminator being bound or liable to anyone for doing so. When B works for A and signs a confidentiality agreement, B’s knowledge of any of A’s inventions (that fall within the agreement) is not information within the public domain. It is “secret.”
If C develops the same machine by himself, or if A tells C about his machine without any confidentiality requirement, the machine has fallen into the public domain, because C is free to disseminate. Whether C DOES disseminate is irrelevant, because whether the information is “secret” or not does not turn upon C’s actions, but upon the manner in which C acquired the information.
With this in mind, this:
I was making the point also that prior is that which cannot be withdrawn from the public domain. Secret information cannot be withdrawn since it is not in the public domain. Therefor, secret information cannot be prior art.
is true, but I suspect we disagree on definitions.
Which is why prior invention, information received confidentially and work on inventions under confidentiality agreements cannot be prior art. They all were never public until some time after the date of invention or filing of the patent application of concern.
Prior invention by another is prior art under the proper construction of the term. In the hypo where C independently invents, C’s knowledge is knowledge “available to the public” (under the AIA) vis-a-vis A. B, who works for A and is subject to a secrecy agreement, has knowledge but it is secret knowledge which is not within the public domain with respect to A. It is within the public domain with respect to C, because A is not subject to an obligation to C to not disclose, and therefore it is public domain information. The fact that neither A nor C wish to publish information is a legally moot point. If A, B and C are all contractors for the government and file reports which detail their inventions, that information is within the public domain if it is subject to release by a request from the public. The public need not actually request the information nor need the information be published to a non-government-employee before it becomes public domain information.
Two basic examples – when Edward Snowden leaks information, that leak is punishable because he is causing secret information to enter the public domain. When the newspaper decides to print the information its reporter has, all it is doing is disseminating public information. That’s why a leaker can be punished, but a newspaper generally cannot.
FOIA requires making certain information publicly available. That is not a requirement to publish all of its information. It is a requirement that the information must be turned over if requested. One does not need to request information for it to enter the public domain. It was in the public domain once it fit the standards for release under FOIA. The actual dissemination of the information to an individual does nothing for the status of the information. If that individual works for a newspaper and the newspaper further disseminates widely, that also does nothing for the status of the information.
Which is also why I categorically oppose the notion that secret patent applications should be treated as prior art for obviousness purposes. What we have done in the AIA is inconsistent with the rest of the world that only treats truly public information as prior art.
Coca-Cola is made by a secret process. Are you suggesting that under the AIA, Coca-Cola can reveal the process to a third party (perhaps in exchange for an exclusive license) and the third party could patent the process? After all, he would be the first filer, and according to you the only people who used the process before kept it “secret.” Why bother having a patent system at all if you’re going to allow someone to engage in both trade secret and patent protection.
There are different reasons for barring a patent:
1. Prior art — the stuff of the public domain.
2. The named inventor did not invent.
2.1. Pirate.
2.2 Prior inventor (who himself seeks a patent) or puts the invention into public use.
3. On sale — legal public use by the inventor
4. Abandoning the invention — leaving it on the shelf
The problems of classification began to occur with the introduction of 103 that referenced 102 as describing prior art when such was not consistent with the usage of that term by the Supreme Court. There are strong policy reasons for not withdrawing from the public domain technology already in the public domain. That explains why we need a robust 103 in connection with real prior art. But the same does not apply to prior invention, or any other secret prior art.
Let us be clear that prior invention is not prior art as originally understood in 1790 because it is not in the public domain. In 1790, prior invention by another barred one from obtaining a patent because of the requirement that the patent go to the first and true inventor.
Ned,
Once again – Sale and Use are different concepts.
See 1.1.1.1.1
I understand there are different historical reasons for various bars to patentability. That’s great. You’re ignoring that clearly under the AIA all of the various acts are treated synonimously. You’re also ignoring that prior invention may raise constitutional questions which as far as I know have never been litigated.
Do you have a case saying that Congress can assert that there are multiple distinct inventive entities of the same invention and that a statutory scheme can constitutionally award multiple or later-inventing ones?
Random, “bars?”
But I am saying is that if there’s anything in the statute beyond use or knowledge in terms of prior art, it is a codification of Supreme Court case law. One needs to look at those cases to find out what the terms mean. Congress had no intention to change the meaning of these terms when they enacted them.
Congress had no intention to change the meaning of these terms when they enacted them.
Well that’s assuming my argument Ned. This post (at 8) was premised on the idea that some people believe Congress intended to overhaul 102 when they rewrote it in the AIA. In that event the previous holdings don’t have the push they would otherwise.
I know what the pre-AIA law is. The question is how do you resolve the AIA if you assume that the pre-AIA law doesn’t apply and you’re taking just the words of the AIA.
Random, the architects of the of AIA wanted to make sure that all interpretations of any of the other criteria did not include secret information not available to the public. Pennock did have a sale of the product (hose) covered by the patent. Now, if we consider the product of a patented process to be covered by a method claim that produces a product (102(g)), then sale of the product would be a bar to a patent to the underlying, but otherwise, secret process. But that is about as far as it goes.
While going out of their way to exclude secret prior art from the law, they shot themselves in the foot with 102(a)(2), forcing all the nonsense about common owners, etc. More than bizarre given the whole purpose for going to first-t0-file in the first place was to harmonize with Europe.
Regarding first to invent, clearly the framers thought that patents go to inventors as opposed to pirates or importers. I think that might be a constitutional requirement. But as recognizing Pennock v. Dialogue and other Supreme Court cases, there can be multiple inventors. In fact, the same invention could be made time after time after time over the course of civilization. The fact that someone can invent the battery again is acknowledged. Archaeologists discovered that someone in the Roman Empire had previously invented the battery. Ditto, the steam engine.
When there are multiple inventors, the issue is to whom to give the patent. The founders settled on the first inventor, but I’m not sure that there is a constitutional requirement that Congress cannot impose a race to the patent office so that the first to file gets the patent.
Also, I don’t know why Congress could not give each inventor his own patent except that would be a constitutional violation would not because they could exclusive rights to the same invention to two different people.
Under common law, where patents were issued shortly after a registration process, the rule was that the patent first issuing on an invention was valid while the second was invalid. I don’t see why that rule is not acceptable even under today’s environment where prosecution take some years. The first to have the patent granted wins.
I believe that the common law rule that the first to obtain a patent prevailed over a second patentee was based upon the common law rule that the first to disclose the invention to the public obtained the patent.
First to disclose to the public Ned. Like, the one first to WO- or A-publication? Like, 18 months after the earliest priority date? That’s updated First to File, isn’t it, Ned? Common law rules OK after all? Or what?
And anyway, having regard to “the bargain” , namely, enabling disclosure in return for a limited term of exclusive rights, it is right, that the first to A publication should get the patent.
It is decidedly NOT a first to publish regime….
“If there be several rivals or simultaneous inventors, the
first who comes and takes a patent, the invention not being
generally known to the public, has a. right to clothe himself
with the authority of a patent. (t) In case of concurrent
applications for a patent for the same object, Lord Eldon
said, that that which obtained the great seal first would have the sole right at law. He could see no other means of deciding than by awarding the patent to him who went quickest through the process.”
Norman, John Paxton. A Treatise on the Law and Practice relating to Letters Patent for Inventions. No. 39008-39011. Butterworths, 1853. at VII.6, page 47.
I remember an analogy: the race.
Races are between a multitude of runners.
Ergo…
But as recognizing Pennock v. Dialogue and other Supreme Court cases, there can be multiple inventors. In fact, the same invention could be made time after time after time over the course of civilization. The fact that someone can invent the battery again is acknowledged. Archaeologists discovered that someone in the Roman Empire had previously invented the battery. Ditto, the steam engine.
So let’s drill down on when someone is not even an inventor (such that they fail 101 or even the statutory scheme as a whole) versus when an invention is novel/obvious.
If you make a widget, you’re an inventor of the widget. If I independently come up with the idea of a widget, I’m also an inventor of the widget, but I fail novelty. If you tell me of your widget, I’m not even an inventor according to you. But if I take your knowledge of the widget and make the smallest of changes, such that what is claimed is 99.99% your widget and 0.01% my change, and perhaps my change is totally obvious, I become an inventor of widget’, which is an obvious form of your widget, is that right?
So in my Coca-Cola hypo, if I were to take my secret formula and give it to someone else, and that person made a clearly obvious change (perhaps they changed .3333 grams to .3332 grams) you would call them an inventor, and further they would get a patent because there is no prior art to cite against them, true?
Random, Stealing anther’s ideas is certainly against the law. I would suggest to you that there may be unclean hands involved such that any patent will be unenforceable.
But consider two inventors coming up with virtually the same thing, X, at the same time. They file on the same day. One claims X. The other claims X’. The X patent covers X’, but not the other way ’round.
We have the following possibilities:
1. Deny a patent to both.
2. Grant a patent to both.
3. Deny a patent to the second-to issue.
4. Issue a patent “jointly” to each requiring common ownership, licensing and enforcement.
What do you think is the right answer?
Now if X’ is filed first, we know a claim to X is anticipated. Patent to X’ issues.
But, if X is filed first? Both get a patent? X’ cannot practice without a license to X. X cannot practice without a license to X’. Seems fair, so why not grant both.
We are back to considerations involving simultaneous filing. What is the policy here?
Random, FYI, I have threatened to sue suppliers who threatened to file patent applications on improvements to our designs naming themselves as inventors, and potentially demanding from us, royalties. The basis for my threatened lawsuit would be the intentional disclosure of proprietary and trade secret information and misappropriation of proprietary and trade secret information to their own benefit.
These kind of negotiations can get ugly.
Random, Stealing anther’s ideas is certainly against the law. I would suggest to you that there may be unclean hands involved such that any patent will be unenforceable.
My hypo does not have theft. I know of no test that draws a distinction between a claim to something that is 90% the work of someone else (someone elses’ processor, and gateway, and 9/10ths of the code modules) and something that is 99.99999% the work of something else. I’m frankly not even sure there’s a doctrine if its 100% someone else (provided they told you willingly rather than you stealing it) but I can at least see a qualitative difference there.
You haven’t answered the underlying question – Certainly Coca-Cola can give their formula away. Certainly they can give it away to a single person. Certainly that person can get a patent if he applies minor changes (and possibly if he applies no changes at all). Does the law tolerate that prior to filing the public could enjoy coca-cola and that post-filing the public may not because a process that was previously being performed is an obvious or equivalent variation to a the subject of an exclusionary rule? Its one thing when you’re the true inventor, because the public hasn’t lost anythingit previously had. It’s quite another when you’re the “second inventor” and the public loses something it once possessed. I know of no case saying that is within the patent power.
The basis for my threatened lawsuit would be the intentional disclosure of proprietary and trade secret information and misappropriation of proprietary and trade secret information to their own benefit.
Well I hope you have a contract evidencing the trade secret information.
Random, regarding the Coke formula, Coke is certainly barred from obtaining a patent under the law because they had been selling Coke for a long time made by the secret process. I don’t believe they can tell somebody else the formula and have that person obtain a patent on the so-called obvious variation because equity will prevent that. Whatever legal or equitable problems hope Coke has, they cannot pass on better title than they have themselves unless, under law the sales to a BFP.
Random, that last bit should read, “unless the sale is to a BFP.”
Random, of course suppliers have agreements, such as NDA’s and perhaps even fleshed-out contracts. Information supplied is marked, “Confidential” or the like.
SOP.
Let’s try again…
“Coca-Cola is made by a secret process. Are you suggesting that under the AIA, Coca-Cola can reveal the process to a third party (perhaps in exchange for an exclusive license) and the third party could patent the process? After all, he would be the first filer, and according to you the only people who used the process before kept it “secret.” Why bother having a patent system at all if you’re going to allow someone to engage in both trade secret and patent protection.”
There are more than just a few things wrong with your hypo, Random (pre-AIA, post-AIA and through both).
If someone is not in fact an inventor (“reveal the process to a third party”), that someone can NEVER have a patent.
First filer or otherwise. The person to whom the secret is revealed just did not invent that which was revealed to him.
On the other hand, for a product that is on the market and no longer secret (you do indicate a process patent), EVEN IF the product is not secret, and the process is not inherent (and enabled) from the end product, ANYONE can reinvent that process, BE an inventor and patent the process.
Here is the kicker: a second (true) inventor can turn around and STOP the secret holder from engaging in the process that is now (later) patented.
Not only is this considered legal – this is the legal path that is actually a purposefully created feature of the patent system.** Very much opposite of any attempted putd0wn from Malcolm, the patent system DOES care about capturing what may otherwise be kept (quite legitimately, mind you) as a trade secret. So much so in fact, that the logic has finally been set straight with the realization that if something is still new TO YOU, it is still new enough for the patent system.
As to “allow someone to engage in both trade secret and patent protection,” I have discussed this previously in great detail, and the AIA explicitly eliminated the (wrongly reasoned) prior bar on this.
In a nutshell, you are conflating TWO very different timeframes of protection afforded by TWO very different legal paths. No matter what else happens, the patent path cannot yield an unlimited times protection.
Currently (still), Trade Secret protection lasts (theoretically) forever.
Once, now and forever, the moment ANYONE joins into the patent system, the timeframe of protection OF the patent system IS of limited time. Further, this move caps the trade secret time of protection for the item garnering patent protection (no more unlimited time of the separate trade secret protection for the item under consideration of time of patent protection).
You have a trade secret and never join into the patent system? No problem with UNlimited times.
You have a trade secret and DO join into the patent system? No problem, as it is now impossible** to enjoy UNlimited times. You lose any sense of “unlimited” for the very real limits of the patent. Since SPAN of time is not something enunciated in the law for the COMBINATION of protected time under BOTH the limited time (still and always) of patent protection and the (now curtailed, thus NOT unlimited) time of (former) trade secret protection, there really is (and never was) ANY affront to the specified time limit of patent protection.
As to why have a patent system with this now-clarified-and-rectified reasoning, well, in addition to my past detailed explanations, you can always turn to the Congressional Record and read The Soliloquy.
**Until the b@stard1zat1on of the PUR from the AIA, that is, which not so ironically, traces to a first b@stard1zat1on that Ned Heller has admitted having a part in creating.
If someone is not in fact an inventor (“reveal the process to a third party”), that someone can NEVER have a patent.
First filer or otherwise. The person to whom the secret is revealed just did not invent that which was revealed to him.
Well now you’re sounding like me. I mean *I* believe that someone who was not the original creator of something can’t get a patent purely for that reason, but certainly the CAFC doesn’t feel that way, since prior use by the defendant is not a defense.
Here is the kicker: a second (true) inventor can turn around and STOP the secret holder from engaging in the process that is now (later) patented.
Can they? Because it certainly seems like both Jefferson and the Court has continuously said that Congress cannot remove pre-existing knowledge from the public domain. I mean I agree that is what the scheme does. I just question whether the scheme can do it.
There’s a policy argument about eventually teaching a trade secret, sure. But there’s also an ex post facto argument that Congress was never given the power to prevent the use of things that the public was doing. If you teach people how to do something new, great, exclusivity. On the other hand, if people were doing it prior to your teaching, that just means that someone else invented it and chose to dedicate it to the public. See the word “invent” requires the creation of something that wasn’t existing before. If someone else was doing it, you must not be the inventor.
Even in your hypothetical you suggest that a given invention can have multiple distinct inventors. I submit that can never be the case. The Americans invented the nuclear bomb. The Soviets eventually also created a bomb, independently, but they were not the inventors. The Americans created something that didn’t exist before. The Soviets created nothing new, they simply taught themselves how to make the same thing that was already existing. You can’t reinvent the wheel.
I am not sounding like you at all.
If you think so, you are not thinking critically enough.
May I suggest you look to why Stadnyk failed.
Then look at the Golan v Holder Supreme Court case.
Lastly, consider the analogy of hte race, and the fact that an actual true first inventor can, for a variety of reasons, lose out to a second inventor.
Then read again – carefully – what I have actually written.
…let me add that understanding the difference between an inchoate item and a perfected right might help you.
I think that you are only looking at the inchoate state and thinking that the perfected right is present (or you are simply not recognizing that a difference exists, and then you are jumping ahead to some thing being in the public, without remembering the nuance that a thing in the public may well not place a process in the public).
Note how I distinguish the item (which may in fact prevent subsequent inventors from perfecting the subsequent inchoate independent invention – but critically, also may not) and your hypo of a secret process, which inherently for y0ur hypo is NOT in the public domain.
This is a subtle and nuanced area of law, so I will not be too harsh on you for not understanding this.
But, I mean, in a first-to-invent world, secret information is prior art because it’s evidence that the one filing is not the first inventor.
j, resolving a contest between rival inventors is quite a bit different from barring an obvious variation of X, which I applied for on day 1, based on a much later public use disclosing X, as of the date of the invention of X by another which may be any time prior to my filing date.
What policy is possibly advanced here, assuming the reason that we do not allow the patenting of obvious variations is for the protection of the public?