154 thoughts on “Provisional Patent Application Filings”
18
“What is your take-away?”
My take away is that this graph makes lousy evidence and leads to a lot of unwarranted speculation.
People are jumping to conclusions not supported by the data chosen.
The time aspect is time of issuance, which divorces all “real-time” considerations since length of “dwell time” in the Office is unaccounted for. This lack of control for timing inserts a large degree of randomness, removing the ability to make correlations.
The other attribute (granted patents that stem from provisionals) does not speak to provisional filings except as a subset of granted patents that contain them, thus provisional filing behavior is at best a rather limited secondary effect (and one that loses meaning based on the choice of time aspect).
This would not (and should not) make it to being admissible evidence (tends to confuse more than provide any clarity.
17
One reason for the increase of provisional filings could be that the filing date of the provisional filing does not count in the calculation of the patent term. Therefore, patentees can get one extra “late” year without jeopardizing their right to priority. That reason would not apply to inventions with a short life though.
17.1
It would be interesting to see a similar graph based on all abandoned applications that had a priority to provisional filings, based on application abandonment date.
16
Does the advancement of the useful arts occur by the grant of exclusive rights to inventors, or by the publication of inventions?
16.1
Advancement comes from publication Ned.
The grant of exclusive rights is the price we choose to pay, for publication as early as possible, and fully enabling, across the full width of the claim.
16.1.1
Max, well, at least the US constitution has it the other way around. It all but declares that securing exclusive rights to inventors advances the useful Arts by promoting invention. The constitution says nothing at all about requiring the inventor to publish anything.
There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose. What patent specs actually do is define what is being patented, limiting their scope. That is essential. It also essential to defining what the public can do free of the patent when the patent expires.
But it is the promotion of inventions that advances the useful Arts. The idea that one’s new product or process can be protected by a patent is why provides the incentive to make the investment in the first place.
16.1.1.1
Ned Heller, allegedly a real person with a law degree: The constitution says nothing at all about requiring the inventor to publish anything.
It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?
it is the promotion of inventions that advances the useful Arts
That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.
There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose.
Indeed. Most people just pay for stuff and then return to their jobs so they can afford to eat, feed their kids, buy health insurance, attend klan meetings, grab some p-ssy, etc.
What patent specs actually do is define what is being patented
Is that important? The Constitution doesn’t say anything about defining what the invention is.
16.1.1.1.1
MM It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?
it is the promotion of inventions that advances the useful Arts
That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.
If the goal is to seek publication of new technology, I think the framers would not have limited the issuance of a patent to inventors. Anyone disclosing new technology to the US would be awarded a patent.
England had just such a system. They awarded patents of importation to applicants regardless that they were not inventors, but only the first to disclose in England.
Imagine if the US system did not require the naming of inventors? Would that change anything in a first to file system?
16.1.1.2
Ned, writings means writings made available to the public. So does “discoveries” (you know, like in discovery in litigation). Enabling disclosure in other words, to the public. Quid pro quo. The very definition of a patent system.
It’s the “discovery” that advances the useful arts.
16.1.1.2.1
Except it is “promotion” in the advertising sense that makes up the “quo” portion of Quid Pro Quo.
Discovery in the US jurisprudence in this area is not in the litigation sense of discovery.
16.1.1.2.2
Max – “writings” refer the output of authors. Inventions and Discoveries refers to the output of inventors.
16.1.1.2.2.1
Les, I just replied. Totally anodyne. No idea why my reply “awaits moderation”. Sorry.
16.1.1.2.2.1.1
Max – No need to apologize for being moderated for no reason. It happens to all of us.
Making me look up words like anodyne though…
…
Yes I did use the word Sorry. But I’m more upset than I am apologetic. I wanted you to read my stuff. Perhaps the good professor can release the blocked words?
I checked the meaning of anodyne. Yes, it has the meaning I intended.
16.1.2
Max, what if US patent were not published until they expired? Ned
16.2
Congress could have chosen to allow patent grants to be applied for confidentially, without publication, so only the patent owner would know about the scope of the grant. Infringement proceedings could be conducted completely under seal. Publication would occur only after the grant lapsed.
That didn’t pass the laugh test.
16.2.1
MM, see 16.1.1.
16.2.1.1
When a tree falls in a forest, does the tree make the sound or does the ground make the sound? If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?
16.2.1.1.1
[……….]
The sound of one hand golf-clapping Malcolm’s post.
😉
16.2.1.1.2
MM, If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?
Or get rid of auditory sensors?
16.2.1.1.3
Or air.
Or gravity.
Or we can make trees and dirt transparent to each other so the falling tree falls through the “map.”
16.2.2
MM, they did (and still do) allow patents to be applied for confidentially. They were printed on grant, but not widely published. That is one of the reasons why the patent marking statute was passed, to allow patentees to give notice by marking.
The whole point in the beginning was to incentivize invention with exclusive rights. Publication was necessary so that the pubic know exactly what was patented — like a deed.
16.3
I do not think advancement of the useful arts comes from the publication of applications anymore, mainly because applications do not meet the standards of technical papers, which I think are reasonable standards for insuring that publications contain useful, experience based, information. Regarding the role of the grant of exclusive rights, I have seen numerous examples where the possibility of such grant has provided an incentive to engineering management to invest in R&D. I would say this works almost as intended.
16.3.1
“anymore, mainly because applications do not meet the standards of technical papers”
When was this “golden age” of the legal document known as the specification had to meet the standard of technical papers?
16.3.1.1
Never. But I find that in the past, applicants voluntarily disclosed more useful information. My point is that publications do not advance the arts, because there is no requirement that insures they will advance the arts.
16.3.1.1.1
publications do not advance the arts, because there is no requirement that insures they will advance the arts
As a practical matter I will concede that this might be a real problem in certain art units.
As a theoretical matter, I’m left wondering what the useful, new, non-obvious, enablement and written description requirements are for if not to require that the publication will advance the arts.
Perhaps we are really debating the meaning of the term “advance” here? It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.
16.3.1.1.1.1
The utility requirement does not have teeth, except maybe in pharmaceutical, but it is not my area. It will be hard to give it some teeth without requiring an actual reduction to practice (currently not required).
Only computers are impressed with the novelty, and non obviousness. People come up with new an non obvious things all the time. It is just that most of this new stuff is worthless.
16.3.1.1.1.2
The “advance” meaning does not mean linear advance.
That is just not the nature of innovation.
I have discussed this previously with the contrasting analogies of a grid of streets versus a parking lot.
16.3.1.1.1.2.1
You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that. Our positions do not differ on that point.
You seem to believe that imagination is the bottle neck to the advance of the arts. You see value to the publication of new and non obvious ideas. I do not agree with that.
That does not mean that I think that patents do not help the advance of the art. They do so by helping recover the cost of figuring out what works. So their value comes from the property rights they confer.
If you want publications of patents to help the advance of the arts, you will need a mechanism to check that the statements made in them are well supported. I rarely see that in patent prosecution (sometimes in outrageous cases, and maybe in pharma where some factual support for therapeutical utility is required).
I think that the mechanism of peer review that is used for insuring that propositions made in technical papers have good support is great, but I am not saying that the same mechanism is suitable for patent prosecution. Maybe you just need to recognize that until proven otherwise, the inventions described in patent applications are just a bunch of false tracks.
…
PiKa,
You seem to have a fundamental misunderstanding of what the legal document of a patent is.
Your emphasis on peer review (of technical papers) would seem to place you in an academic research position (if I attempt to estimate where your bias is coming from).
I do not place you in industry, because your statement of pharma possessing the utility as required at time of filing is simply preposterous (and is not reflected of the reality of how many items fail to survive the FDA process).
I also do not place you in the actual line of work of realizing and utilizing patents, as you do not have an understanding of their basic role as a legal mechanism and the interplay of the role with the larger scope of innovation efforts.
Your view of until proven otherwise == false tracks is your own supposition and is simply not reflected of the patent system (or how the patent system has ever been). You want something else. Nothing wrong with wanting something else per se, but there is something wrong with not understanding the topic and confusing what you want with the system as designed to be.
…
Is there something else than a personal attack in your last post? An argument of some sort maybe?
…
The argument, PiKa, is that your bias is preventing you from understanding the basics of patent law.
You “want” something other than patent law in place of patent law.
The argument is that YOU are not in the proper argument here.
Further, I omitted the ad hominem in addressing your evident bias, and provided rather calm and rational views as to where I think your bias is coming from.
I note that your response lacked any substantive comment on any of the views that I provided to you. Perhaps you want to try again and dissuade me of the views that I have presented in a calm and rational manner. Merely calling them ad hominem when they are not doesn’t cut it.
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Saying that I am biased is not an argument, it is a personal attack.
Your view is that publications advance the art. You said something about the advance not being linear, and then you made a general comment about false tracks not being reflected in the system.
Let me tell you then, without any unhelpful mention of where I place you, why I think false tracks are part of “the system.”
False tracks are the result, in part, of the requirement of non-obviousness. Inventors have heard of the obviousness law, and of things like predictable results, and reasonable expectations of success weighting in favor of obviousness. Inventors have also heard that things such as dismissal of the invention by those of ordinary skills weight in favor of non-obviousness. As a result, invention disclosures rarely contain run the mill improvements. They contain risky proposals and ideas. It is difficult for someone of ordinary skill to say whether the invention will be successful.
False tracks are also the results of the absence of examination of the enablement requirement. As you know, there is no obligation to reduce the invention to practice and to set forth in the application facts that support enablement.
Finally, false tracks are the results of an utility requirement that Has no teeth to it. As you know, there is no requirement to set forth facts that support utility ( although Canadian courts will invalidate your patent for false utility promises).
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PiKa,
Identifying your bias and why you are not grasping the argument here – and why what you instead want is something different – is very much an argument.
I am not attacking your character when I identify a bias that prevents you from appreciating the legal aspects here, so your opinion that what I am engaging in as ad hominem may be what you “feel” but your feelings are not in fact correct.
To return to your earlier statement about “false tracks,” “You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that.” – you are NOT correct that I view any granted patent – even “trivial” and “dead-end” ones as false tracks. False tracks imply a linear mindset of only one “right” track, and that is just not how innovation works. What may be a “false track” today may tomorrow – when coupled with something completely different – be a surprisingly “right” track.
The rest of your musings of “false tracks” clouds several different problems together (all granted patents SHOULD BE properly examined for 112 sufficiency – and that has nothing at all to do with my views of the parking lot versus grid of streets covering of innovation).
Your wanting to whine about “utility without teeth” merely projects a view that does not understand how low of a bar in patent law utility is supposed to be. I think this is again tied to your bias about “linear advances” and how you may think of patents as next to Nobel prizes or something (this would be wrong, even if – especially if – the Supreme Court Justices also “felt” that patents needed a Flash of Genius to actually be worthy of being granted. Congress has explicitly said otherwise, thank you.
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The courts did not say the same thing about the utility requirement as you did in your argument about false tracks today becoming right tracks tomorrow.
“[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.” Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230.
The PTO is not examining the utility requirement under a standard of preponderance of evidence. That is one reason why I don’t see much value in patent publication.
When I mention technical publications, it is because their review process is based on a thorough analysis of the evidence presented in the paper and how it supports the conclusion. I think it would be a great process to use when examining utility (and enablement). I am not mentioning technical papers because I think the obviousness standard is too low.
16.3.1.1.1.3
Malcolm seems to be starting to grasp a basic concept in disruptive innovation:
“ It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.”
Would it be a wonder if he had actually starting reading some Clayton Christensen…?
🙂
16.4
Ned – perhaps both, but with different connotations for the different parts of the Quid Pro Quo deal (which serves to reinforce the notion that “more patents” (granted that meet the requirements set by Congress) are necessarily a good thing; everyone wins with the Quid Pro Quo deal.
15
There is a perception amongst some people in the USA that, within a First to File system, you can never be too early in filing your provisional. It is wrong.
One reason is the one given by MM (Paris, Art 4(C)4) at 911121 below.
But that isn’t the only reason.
It can be rather distressing, not only to lose all your own patent rights because you “jumped the gun” but also because you have i) published your crown jewels and ii) still the other fellow gets a patent enforceable against you.
Some folks were running round almost apoplectic when the AIA came into force, supposing that one would have to file the same day as the inventor phones you, or else face a malpractice suit. But in fact, FtF is self-policing. One has to be very clear-thinking, to file at the USPTO as soon as possible, but not a day too soon.
In this way, FtF achieves the public policy objective of a patent system, to get enablement of new technology out to the public as early as possible.
15.1
Provisional Patent Applications are not published unless there is a follow -on non-provisional application published that claims priority to it. So, I don’t follow the reason for your assertion that it is wrong to believe it is never too early to file a provisional.
FtF violates the public police objective of awarding to the INVENTOR exclusive rights, thereby encouraging invention and disclosure, by allowing someone who independently arrives at the previously invented subject matter to be awarded patent rights.
15.1.1
Les, benefit accrues to the public (as you rightly acknowledge) when there is disclosure. Disclosure occurs (as you rightly acknowledge) when a patent application is published by the PTO, 18 months after the filing date. First to file is first to publish, first to disclose, first to benefit the public.
If you, Les, conceive the same invention even earlier, but don’t disclose it till later, you bring to the public nothing that it didn’t already know, thanks to the publication by the earlier filer. Why should the public give you for your earlier conception any exclusive rights whatsoever?
To understand the downside of jumping the gun and filing too soon, you need some acquaintance with the provisions of the Paris Convention.
15.1.1.1
“Why should the public give you for your earlier conception any exclusive rights whatsoever?”
Because I am the inventor and, if for no other reason, the U.S.Constitution calls for granting INVENTORS those exclusive rights, not earlier filers.
15.1.1.1.1
My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. I didn’t “derive” my invention from you Les. I qualify. You are not the only “inventor” Les. Even if you are an inventor, I am too, just as much as you. And I have promoted the progress, you not!
15.1.1.1.1.1
I disagree. The act of inventing is: to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment.
If I made it yesterday, it is not possible for you to “invent” it today.
15.1.1.1.1.1.1
Whether or not your head, Les, conceived something before mine is of no relevance to the question whether my conception was inventive. Of course it’s “possible” for my head to enjoy the same inventive insight as yours already did, 24 hours earlier than me. My thoughts today were just as inventive to me as yours were, to you, yesterday. I’m just as much an “inventor” as you.
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Max – Is is possible for you to invent the light bulb today? Can you invent the airplane today?
Of course not, those things have already been invented. Words have meaning.
Inventing involves being first.
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Les,
You simply are not using the term “invented” in the proper legal context. Invention requires both conception and reduction to practice. Having legal (property) rights to invention must also meet the “rules of the race” as decided by Congress (the Constitutional link is the delegation to which branch of the government the power to set those “rules of the race.”
Invention without needing the rules as set by Congress does not produce a legal (property) right – such only produces an inchoate right.
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Invention also requires BEING FIRST (to invent, not to file). No one can invent the light bulb today. Its already been invented.
15.1.1.1.1.1.2
Do you extend that to the logical conclusion that 101’s “Whoever invents…” implies a patentability bar distinct from 102 that includes secret prior art?
…
The patent office has to prove that its old. If someone else invented it, but kept it secret, there isn’t much the patent office can do about it.
If proof of earlier inventorship later emerges, that would have a bearing on validity, sure.
…
An inventor comes to you with an invention. He tells you he told his neighbor about the invention, and his neighbor showed him proof that the neighbor invented the invention five years before him. However the neighbor never told anyone else, and never applied for a patent. What is your validity opinion? Do you really tell the inventor that his application is invalid under 101?
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I don’t understand your point about the Office. Validity doesn’t end at the office. Surely your objective is to get a valid patent rather than just a patent.
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If the guys neighbor invented the thing, then the guy is not the inventor and can’t get a valid patent, why are you calling the guy and inventor, did he invent something else?
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Les,
Your post at 9:37 am is not fully correct.
Someone with an inchoate right (invented but not legally made into property OR not otherwise made public) can very well be deemed NOT an inventor and can be legally and properly barred from using their own prior (but inchoate) “invention.”
This was a purposeful choice in patent law and is known as the “stick” portion of a “carrot and stick” mechanism to prompt people to use the patent system and to avoid Trade Secrets (which do not enrich the gen eral people as patents do).
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Unconstitutional.
…
Except not.
15.1.1.1.1.1.3
Hand me your car keys, Les.
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I would sooner hand you a dictionary.
…
As I would point you to using a dictionary properly when it comes to understanding terms in legal context.
15.1.1.1.1.2
Also Max, am I not a member of the public? I invented it before you did. Therefore, I, a member of the public, knew about it before you came upon it.
15.1.1.1.1.2.1
Yes, but so what?
…
But so what?
So contemplate your “yes” at 15.1.1.1.1.2.1 and evaluate this assertion of yours from 15.1.1.1.1:
“My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. “
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The important aspect there Les is “published.”
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I never said conception was invention.
15.1.1.1.1.2.2
Les,
You probably should reflect on the nature of inchoate versus earned rights and the long history of the notion of racing (the government wanting inventions brought forward quicker).
The notion of a race carries with it the notion that there is more then one person possible in that race.
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The race is Unconstitutional and illogical. There can only be one inventor (or group of co-inventors).
…
Quite the contrary Les, the Constitutional grant of authority to set the rules of the race (and the fact that there can be – and often are – multiple racers) is very much properly traced to the Constitutional setting of which branch has authority to write the rules of the race.
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N0. The Constitution grants authority to grant exclusive rights to INVENTORS, not to earlier filers that are not inventors.
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You are running in circles and not recognizing that conception is not invention.
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I did not say conception was invention.
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What you are saying does not comport with what the law says.
You need to use terms as they are understood in their use as terms of art.
You are not doing that and instead overly fixating on a “very first no matter what else” viewpoint.
That viewpoint just is not correct. You are repeating the errors of the inventor Stadnick (iirc) – he lost that argument.
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Words have meaning. Can someone invent the light bulb today?
Of course not. The light bulb has already been invented.
The Constitution authorizes exclusivity to inventors, not to first filers.
YOU need to stop pretending that words mean things other than what they mean.
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Les,
With all due respect, I am not the one here having difficulty with known terms of art.
“What is your take-away?”
My take away is that this graph makes lousy evidence and leads to a lot of unwarranted speculation.
People are jumping to conclusions not supported by the data chosen.
The time aspect is time of issuance, which divorces all “real-time” considerations since length of “dwell time” in the Office is unaccounted for. This lack of control for timing inserts a large degree of randomness, removing the ability to make correlations.
The other attribute (granted patents that stem from provisionals) does not speak to provisional filings except as a subset of granted patents that contain them, thus provisional filing behavior is at best a rather limited secondary effect (and one that loses meaning based on the choice of time aspect).
This would not (and should not) make it to being admissible evidence (tends to confuse more than provide any clarity.
One reason for the increase of provisional filings could be that the filing date of the provisional filing does not count in the calculation of the patent term. Therefore, patentees can get one extra “late” year without jeopardizing their right to priority. That reason would not apply to inventions with a short life though.
It would be interesting to see a similar graph based on all abandoned applications that had a priority to provisional filings, based on application abandonment date.
Does the advancement of the useful arts occur by the grant of exclusive rights to inventors, or by the publication of inventions?
Advancement comes from publication Ned.
The grant of exclusive rights is the price we choose to pay, for publication as early as possible, and fully enabling, across the full width of the claim.
Max, well, at least the US constitution has it the other way around. It all but declares that securing exclusive rights to inventors advances the useful Arts by promoting invention. The constitution says nothing at all about requiring the inventor to publish anything.
There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose. What patent specs actually do is define what is being patented, limiting their scope. That is essential. It also essential to defining what the public can do free of the patent when the patent expires.
But it is the promotion of inventions that advances the useful Arts. The idea that one’s new product or process can be protected by a patent is why provides the incentive to make the investment in the first place.
Ned Heller, allegedly a real person with a law degree: The constitution says nothing at all about requiring the inventor to publish anything.
It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?
it is the promotion of inventions that advances the useful Arts
That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.
There is little doubt, in reality, that patent specs do little to advance the useful arts. No one, or almost no one, reads them for that purpose.
Indeed. Most people just pay for stuff and then return to their jobs so they can afford to eat, feed their kids, buy health insurance, attend klan meetings, grab some p-ssy, etc.
What patent specs actually do is define what is being patented
Is that important? The Constitution doesn’t say anything about defining what the invention is.
MM It doesn’t say anything about providing anyone with any proof that you’re an inventor either. So ….?
That’s almost a perfect circle if we’re willing to wallow in the mud along with you. An “advance in a useful art” is, presumably, something that wasn’t already in the art. So somebody had to … make the advance. And if somebody made the advance, then somebody made it first.
If the goal is to seek publication of new technology, I think the framers would not have limited the issuance of a patent to inventors. Anyone disclosing new technology to the US would be awarded a patent.
England had just such a system. They awarded patents of importation to applicants regardless that they were not inventors, but only the first to disclose in England.
Imagine if the US system did not require the naming of inventors? Would that change anything in a first to file system?
Ned, writings means writings made available to the public. So does “discoveries” (you know, like in discovery in litigation). Enabling disclosure in other words, to the public. Quid pro quo. The very definition of a patent system.
It’s the “discovery” that advances the useful arts.
Except it is “promotion” in the advertising sense that makes up the “quo” portion of Quid Pro Quo.
Discovery in the US jurisprudence in this area is not in the litigation sense of discovery.
Max – “writings” refer the output of authors. Inventions and Discoveries refers to the output of inventors.
Les, I just replied. Totally anodyne. No idea why my reply “awaits moderation”. Sorry.
Max – No need to apologize for being moderated for no reason. It happens to all of us.
Making me look up words like anodyne though…
Yes I did use the word Sorry. But I’m more upset than I am apologetic. I wanted you to read my stuff. Perhaps the good professor can release the blocked words?
I checked the meaning of anodyne. Yes, it has the meaning I intended.
Max, what if US patent were not published until they expired? Ned
Congress could have chosen to allow patent grants to be applied for confidentially, without publication, so only the patent owner would know about the scope of the grant. Infringement proceedings could be conducted completely under seal. Publication would occur only after the grant lapsed.
That didn’t pass the laugh test.
MM, see 16.1.1.
When a tree falls in a forest, does the tree make the sound or does the ground make the sound? If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?
[……….]
The sound of one hand golf-clapping Malcolm’s post.
😉
MM, If we want to promote quieter forests, should we get rid of the trees, or get rid of the dirt?
Or get rid of auditory sensors?
Or air.
Or gravity.
Or we can make trees and dirt transparent to each other so the falling tree falls through the “map.”
MM, they did (and still do) allow patents to be applied for confidentially. They were printed on grant, but not widely published. That is one of the reasons why the patent marking statute was passed, to allow patentees to give notice by marking.
The whole point in the beginning was to incentivize invention with exclusive rights. Publication was necessary so that the pubic know exactly what was patented — like a deed.
I do not think advancement of the useful arts comes from the publication of applications anymore, mainly because applications do not meet the standards of technical papers, which I think are reasonable standards for insuring that publications contain useful, experience based, information. Regarding the role of the grant of exclusive rights, I have seen numerous examples where the possibility of such grant has provided an incentive to engineering management to invest in R&D. I would say this works almost as intended.
“anymore, mainly because applications do not meet the standards of technical papers”
When was this “golden age” of the legal document known as the specification had to meet the standard of technical papers?
Never. But I find that in the past, applicants voluntarily disclosed more useful information. My point is that publications do not advance the arts, because there is no requirement that insures they will advance the arts.
publications do not advance the arts, because there is no requirement that insures they will advance the arts
As a practical matter I will concede that this might be a real problem in certain art units.
As a theoretical matter, I’m left wondering what the useful, new, non-obvious, enablement and written description requirements are for if not to require that the publication will advance the arts.
Perhaps we are really debating the meaning of the term “advance” here? It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.
The utility requirement does not have teeth, except maybe in pharmaceutical, but it is not my area. It will be hard to give it some teeth without requiring an actual reduction to practice (currently not required).
Only computers are impressed with the novelty, and non obviousness. People come up with new an non obvious things all the time. It is just that most of this new stuff is worthless.
The “advance” meaning does not mean linear advance.
That is just not the nature of innovation.
I have discussed this previously with the contrasting analogies of a grid of streets versus a parking lot.
You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that. Our positions do not differ on that point.
You seem to believe that imagination is the bottle neck to the advance of the arts. You see value to the publication of new and non obvious ideas. I do not agree with that.
That does not mean that I think that patents do not help the advance of the art. They do so by helping recover the cost of figuring out what works. So their value comes from the property rights they confer.
If you want publications of patents to help the advance of the arts, you will need a mechanism to check that the statements made in them are well supported. I rarely see that in patent prosecution (sometimes in outrageous cases, and maybe in pharma where some factual support for therapeutical utility is required).
I think that the mechanism of peer review that is used for insuring that propositions made in technical papers have good support is great, but I am not saying that the same mechanism is suitable for patent prosecution. Maybe you just need to recognize that until proven otherwise, the inventions described in patent applications are just a bunch of false tracks.
PiKa,
You seem to have a fundamental misunderstanding of what the legal document of a patent is.
Your emphasis on peer review (of technical papers) would seem to place you in an academic research position (if I attempt to estimate where your bias is coming from).
I do not place you in industry, because your statement of pharma possessing the utility as required at time of filing is simply preposterous (and is not reflected of the reality of how many items fail to survive the FDA process).
I also do not place you in the actual line of work of realizing and utilizing patents, as you do not have an understanding of their basic role as a legal mechanism and the interplay of the role with the larger scope of innovation efforts.
Your view of until proven otherwise == false tracks is your own supposition and is simply not reflected of the patent system (or how the patent system has ever been). You want something else. Nothing wrong with wanting something else per se, but there is something wrong with not understanding the topic and confusing what you want with the system as designed to be.
Is there something else than a personal attack in your last post? An argument of some sort maybe?
The argument, PiKa, is that your bias is preventing you from understanding the basics of patent law.
You “want” something other than patent law in place of patent law.
The argument is that YOU are not in the proper argument here.
Further, I omitted the ad hominem in addressing your evident bias, and provided rather calm and rational views as to where I think your bias is coming from.
I note that your response lacked any substantive comment on any of the views that I provided to you. Perhaps you want to try again and dissuade me of the views that I have presented in a calm and rational manner. Merely calling them ad hominem when they are not doesn’t cut it.
Saying that I am biased is not an argument, it is a personal attack.
Your view is that publications advance the art. You said something about the advance not being linear, and then you made a general comment about false tracks not being reflected in the system.
Let me tell you then, without any unhelpful mention of where I place you, why I think false tracks are part of “the system.”
False tracks are the result, in part, of the requirement of non-obviousness. Inventors have heard of the obviousness law, and of things like predictable results, and reasonable expectations of success weighting in favor of obviousness. Inventors have also heard that things such as dismissal of the invention by those of ordinary skills weight in favor of non-obviousness. As a result, invention disclosures rarely contain run the mill improvements. They contain risky proposals and ideas. It is difficult for someone of ordinary skill to say whether the invention will be successful.
False tracks are also the results of the absence of examination of the enablement requirement. As you know, there is no obligation to reduce the invention to practice and to set forth in the application facts that support enablement.
Finally, false tracks are the results of an utility requirement that Has no teeth to it. As you know, there is no requirement to set forth facts that support utility ( although Canadian courts will invalidate your patent for false utility promises).
PiKa,
Identifying your bias and why you are not grasping the argument here – and why what you instead want is something different – is very much an argument.
I am not attacking your character when I identify a bias that prevents you from appreciating the legal aspects here, so your opinion that what I am engaging in as ad hominem may be what you “feel” but your feelings are not in fact correct.
To return to your earlier statement about “false tracks,” “You seem to agree that the advance of the arts requires rooting out false tracks. And you do not argue that the publication of patents helps doing that.” – you are NOT correct that I view any granted patent – even “trivial” and “dead-end” ones as false tracks. False tracks imply a linear mindset of only one “right” track, and that is just not how innovation works. What may be a “false track” today may tomorrow – when coupled with something completely different – be a surprisingly “right” track.
The rest of your musings of “false tracks” clouds several different problems together (all granted patents SHOULD BE properly examined for 112 sufficiency – and that has nothing at all to do with my views of the parking lot versus grid of streets covering of innovation).
Your wanting to whine about “utility without teeth” merely projects a view that does not understand how low of a bar in patent law utility is supposed to be. I think this is again tied to your bias about “linear advances” and how you may think of patents as next to Nobel prizes or something (this would be wrong, even if – especially if – the Supreme Court Justices also “felt” that patents needed a Flash of Genius to actually be worthy of being granted. Congress has explicitly said otherwise, thank you.
The courts did not say the same thing about the utility requirement as you did in your argument about false tracks today becoming right tracks tomorrow.
“[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.” Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230.
The PTO is not examining the utility requirement under a standard of preponderance of evidence. That is one reason why I don’t see much value in patent publication.
When I mention technical publications, it is because their review process is based on a thorough analysis of the evidence presented in the paper and how it supports the conclusion. I think it would be a great process to use when examining utility (and enablement). I am not mentioning technical papers because I think the obviousness standard is too low.
Malcolm seems to be starting to grasp a basic concept in disruptive innovation:
“ It does seem possible to patent something “new” and “non-obvious” that works less well than what already exists.”
Would it be a wonder if he had actually starting reading some Clayton Christensen…?
🙂
Ned – perhaps both, but with different connotations for the different parts of the Quid Pro Quo deal (which serves to reinforce the notion that “more patents” (granted that meet the requirements set by Congress) are necessarily a good thing; everyone wins with the Quid Pro Quo deal.
There is a perception amongst some people in the USA that, within a First to File system, you can never be too early in filing your provisional. It is wrong.
One reason is the one given by MM (Paris, Art 4(C)4) at 911121 below.
But that isn’t the only reason.
It can be rather distressing, not only to lose all your own patent rights because you “jumped the gun” but also because you have i) published your crown jewels and ii) still the other fellow gets a patent enforceable against you.
Some folks were running round almost apoplectic when the AIA came into force, supposing that one would have to file the same day as the inventor phones you, or else face a malpractice suit. But in fact, FtF is self-policing. One has to be very clear-thinking, to file at the USPTO as soon as possible, but not a day too soon.
In this way, FtF achieves the public policy objective of a patent system, to get enablement of new technology out to the public as early as possible.
Provisional Patent Applications are not published unless there is a follow -on non-provisional application published that claims priority to it. So, I don’t follow the reason for your assertion that it is wrong to believe it is never too early to file a provisional.
FtF violates the public police objective of awarding to the INVENTOR exclusive rights, thereby encouraging invention and disclosure, by allowing someone who independently arrives at the previously invented subject matter to be awarded patent rights.
Les, benefit accrues to the public (as you rightly acknowledge) when there is disclosure. Disclosure occurs (as you rightly acknowledge) when a patent application is published by the PTO, 18 months after the filing date. First to file is first to publish, first to disclose, first to benefit the public.
If you, Les, conceive the same invention even earlier, but don’t disclose it till later, you bring to the public nothing that it didn’t already know, thanks to the publication by the earlier filer. Why should the public give you for your earlier conception any exclusive rights whatsoever?
To understand the downside of jumping the gun and filing too soon, you need some acquaintance with the provisions of the Paris Convention.
“Why should the public give you for your earlier conception any exclusive rights whatsoever?”
Because I am the inventor and, if for no other reason, the U.S.Constitution calls for granting INVENTORS those exclusive rights, not earlier filers.
My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. I didn’t “derive” my invention from you Les. I qualify. You are not the only “inventor” Les. Even if you are an inventor, I am too, just as much as you. And I have promoted the progress, you not!
I disagree. The act of inventing is: to produce (as something useful) for the first time through the use of the imagination or of ingenious thinking and experiment.
If I made it yesterday, it is not possible for you to “invent” it today.
Whether or not your head, Les, conceived something before mine is of no relevance to the question whether my conception was inventive. Of course it’s “possible” for my head to enjoy the same inventive insight as yours already did, 24 hours earlier than me. My thoughts today were just as inventive to me as yours were, to you, yesterday. I’m just as much an “inventor” as you.
Max – Is is possible for you to invent the light bulb today? Can you invent the airplane today?
Of course not, those things have already been invented. Words have meaning.
Inventing involves being first.
Les,
You simply are not using the term “invented” in the proper legal context. Invention requires both conception and reduction to practice. Having legal (property) rights to invention must also meet the “rules of the race” as decided by Congress (the Constitutional link is the delegation to which branch of the government the power to set those “rules of the race.”
Invention without needing the rules as set by Congress does not produce a legal (property) right – such only produces an inchoate right.
Invention also requires BEING FIRST (to invent, not to file). No one can invent the light bulb today. Its already been invented.
Do you extend that to the logical conclusion that 101’s “Whoever invents…” implies a patentability bar distinct from 102 that includes secret prior art?
The patent office has to prove that its old. If someone else invented it, but kept it secret, there isn’t much the patent office can do about it.
If proof of earlier inventorship later emerges, that would have a bearing on validity, sure.
An inventor comes to you with an invention. He tells you he told his neighbor about the invention, and his neighbor showed him proof that the neighbor invented the invention five years before him. However the neighbor never told anyone else, and never applied for a patent. What is your validity opinion? Do you really tell the inventor that his application is invalid under 101?
I don’t understand your point about the Office. Validity doesn’t end at the office. Surely your objective is to get a valid patent rather than just a patent.
If the guys neighbor invented the thing, then the guy is not the inventor and can’t get a valid patent, why are you calling the guy and inventor, did he invent something else?
Les,
Your post at 9:37 am is not fully correct.
Someone with an inchoate right (invented but not legally made into property OR not otherwise made public) can very well be deemed NOT an inventor and can be legally and properly barred from using their own prior (but inchoate) “invention.”
This was a purposeful choice in patent law and is known as the “stick” portion of a “carrot and stick” mechanism to prompt people to use the patent system and to avoid Trade Secrets (which do not enrich the gen eral people as patents do).
Unconstitutional.
Except not.
Hand me your car keys, Les.
I would sooner hand you a dictionary.
As I would point you to using a dictionary properly when it comes to understanding terms in legal context.
Also Max, am I not a member of the public? I invented it before you did. Therefore, I, a member of the public, knew about it before you came upon it.
Yes, but so what?
But so what?
So contemplate your “yes” at 15.1.1.1.1.2.1 and evaluate this assertion of yours from 15.1.1.1.1:
“My published patent application, and its non-obviousness over everything ever before made known to any member of the public, evidences the fact that I am what the Constitution visualizes as an “inventor”. “
The important aspect there Les is “published.”
I never said conception was invention.
Les,
You probably should reflect on the nature of inchoate versus earned rights and the long history of the notion of racing (the government wanting inventions brought forward quicker).
The notion of a race carries with it the notion that there is more then one person possible in that race.
The race is Unconstitutional and illogical. There can only be one inventor (or group of co-inventors).
Quite the contrary Les, the Constitutional grant of authority to set the rules of the race (and the fact that there can be – and often are – multiple racers) is very much properly traced to the Constitutional setting of which branch has authority to write the rules of the race.
N0. The Constitution grants authority to grant exclusive rights to INVENTORS, not to earlier filers that are not inventors.
You are running in circles and not recognizing that conception is not invention.
I did not say conception was invention.
What you are saying does not comport with what the law says.
You need to use terms as they are understood in their use as terms of art.
You are not doing that and instead overly fixating on a “very first no matter what else” viewpoint.
That viewpoint just is not correct. You are repeating the errors of the inventor Stadnick (iirc) – he lost that argument.
Words have meaning. Can someone invent the light bulb today?
Of course not. The light bulb has already been invented.
The Constitution authorizes exclusivity to inventors, not to first filers.
YOU need to stop pretending that words mean things other than what they mean.
Les,
With all due respect, I am not the one here having difficulty with known terms of art.
Maybe the name was Madstadt….