Question: Intentionally Obscure Prior Art

A recent newsgroup posting included the following request for information:

I’m [looking for] ways to file a disclosure so that it is beyond argument technically “publicly available” but is very difficult to find.

The questioner was hoping to find an obscure way to create prior art without really giving away trade secret information.  Of course, this approach is directly contrary to the purpose of the public disclosure requirement of 35 U.S.C. 102, and overt gaming of the system would likely raise the ire of a U.S. jury. 

However, if the prior art is intentionally indexed only in a remote off-line Ghanaian library, will it still serve as prior art?

In other news, the PTO is killing its document disclosure program.

24 thoughts on “Question: Intentionally Obscure Prior Art

  1. 24

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  2. 23

    Here’s the original question:

    Working the problem backwords, the trouble would start if you were involved in a law suit that involved the disclosed information. The only way I see this working is if after the desired disclosure of the information, your identity and the identity of all who were aware of what you were doing were were unknow to the opposition and the opposition would be unaware that such conduct existed.

    They killed all the slaves who knew where the king’s chamber was in a pyramid and still just about all the king’s chambers were looted within five to twenty years of closure. In answer to your question, hath you not learned nothing, sir?

  3. 22

    Dennis wrote, “The questioner was hoping to find an obscure way to create prior art without really giving away trade secret information.”

    Perhaps the person merely wanted to create prior art without giving away *confidential* information.

    In other words, perhaps the person was not concerned about preserving a future trade-secret remedy (for example, when someone directly stole the person’s idea). The person may have merely wanted to create some sort of protection in case someone independently patented the idea.

    It’s an interesting case if, however, the person wanted to create prior art against others, but yet maintain trade secret rights. I would hope that Chris is correct when Chris said, “I would posit that trying to create some kind of obscure defensive prior art would technically end your trade secret protection.”

  4. 21

    In re Hall (Fed. Cir. 1986) holds that a single copy indexed in the basement of a library in Germany is prior art, so this will clearly work. The courts speak in terms of “reasonable accessibility,” but they mean that in a very formal sense — there are no legal restrictions on your getting access to the information, even if as a practical matter you’ll never find it.

    This strategy emphasizes the difference between the patent and trade secret rules for novelty and secrecy, though it is possible that some courts would hold intentional publication of the information to be a disclosure inconsistent with trade secret status, even if the publication was obscure.

  5. 20

    I also wanted to add a quick note stressing that in the case I cited above (Bruckelmyer v. Ground), the drawings in question were cancelled in a foreign patent (specifically, Canadian Patent) and the CAFC still ruled that the foreign file wrapper with the cancelled figues was still publicly accessible.

  6. 19

    I don’t, of course, mean that the author of a publication has some “duty” in the abstract to disclose everything or to disclose it publically. Surely a non-patentee has no duty to even publish anything. But if the author wants his publication to qualify under section 102 as prior art, there is a requirement to publish and make it public; and that requirement reflects sound public policy.

    The first problem is that while the public disclosure requirement is technically there, the threshold has been set pretty low. The obscure thesis in a library somewhere does no one any good because the chances of someone actually putting the invention to use based on that is virtually zero.

    Normally, this problem is mitigated because if it is hard for the public to find, it is equally hard for an accused infringer to find. Our questioner who is intentially hiding his trade secret (and therefore not publically using it) does not face this problem.

    I have now thought of one situation where a single entity would be estopped from asserting prior art — the losing party in an inter parties examination. So perhaps our questioner might face a similar type of bad faith estoppel from raising his intentionally concealed prior art. Yes it is public, but his bad faith in attempting to frustrate the policy of section 102, as well as the unfair advantage he would gain from having it both ways, estops from relying on it.

  7. 18

    “However, if the prior art is intentionally indexed only in a remote off-line Ghanaian library, will it still serve as prior art?”

    Yes. In addition to the case previously cited, also see Bruckelmyer v. Ground Heaters (CAFC 05-1412). In this case, the CAFC ruled that drawings that were cancelled during prosecution were still considered prior art as they were publicly accessible (as the file wrapper was publicly accessible).

  8. 17

    It seems to me the person asking the question is seeking to make a defensive publication and this has little to do with him/her seeking patent protection. Hasn’t the issue of how fine the razor’s edge is re: “publicly available” prior art been more or less settled by reams of case histories where the obscure trumps the “innovator”? – Both in the US and in other countries? (The various suggestions here for creating a useful yet obscure publication remind me of a UK case where the invalidating art came from a 1959 issue of the Dutch Dairy Journal – and the subject invention had nothing to do with dairy.) Doesn’t this question get to the heart of a dirty little secret, i.e., that the _majority_ of the time there is undiscovered but uncited, enabling prior art out there, finding it is a matter of money and persistence, and the “system” is inherently imperfect? Here’s to the moles and scouts who root this stuff out… God forbid if anyone set up a business around this concept… “Disclosure Underground”?

  9. 16

    To Mr. Jaglowski,

    You are right that a non-patent applicant has no need to comply with 102. However, if you wish to create prior art, you do have to do so under the guidance of 102 as 102 is what defines what will be prior art to somebody else who is a patent holder.

    To all, if the obscure indexed thesis or foreign language publication is enough to be prior art under 102, then wouldn’t that same disclosure cause problems for your tradesecret protection? Trade secrets are only effective while you take reasonable steps to maintain its secrecy. I would posit that trying to create some kind of obscure defensive prior art would technically end your trade secret protection.

  10. 15

    I am surprised the discussion starts now, whereas the strategy of obscure disclosures is one that has been used for a long time. In fact, often additional information is added to a patent file, after the patent (application) published. In principle, that information is available and may be used to rely on as prior art. However, such information is not easily found if you do not know where to look.

  11. 14

    I have two questions:

    First, is the questioner concerned that another party will patent his trade secret in the future? If so, it seems the prior use of the questioner (as someone mentioned above) could serve as prior art in any future litigation (although it would be less costly to prove by just showing the publication). Correct?

    Second, if I remember correctly, the person seeking to protect a trade secret must in some way try to keep it a secret. Wouldn’t publicly disclosing the trade secret in a foreign library factor against ruling the information a trade secret? I understand that patent law’s liberal interpretation of “publication” is not equivalent to the factors considered in determining something as a trade secret. But – as Dennis mentioned above – I would think a judge or jury would give that factor great weight.

  12. 13

    I would consider an infringer intentionally obscuring of a prior art reference equivalent to a patentee intentionally failing to disclose a prior art reference to the patent office. If the penalty for the patentee is invalidating the patent, the penalty for the infringer should/could be exclusion of that prior art reference as a basis for a finding of invalidity (though it could be used by others). The obscurer might also be civilly liable for the expenses of the patentee which would not have been incurred had the obscure prior art reference been disclosed to the patentee by the obscurer.

  13. 12

    “The questioner is subject to section 102 (he is not subject to section 112 because he’s not filing for a patent). Prior art is supposed to be public, and here it wouldn’t really be, though technically is under Hall.”

    I strongly disagree with this statement. 35 U.S.C. 102 commences with “A person shall be entitled to a patent unless…” Entities that are not patent applicants have no duty whatsoever to satisfy any condition of section 102 when they disclose information. The section merely limits the ability of a patent applicant to obtain and maintain a patent based on the state of the world.

    I don’t disagree that this practice would constitute a gaming of the system, and I am not saying that there is no possibility of an equitable remedy or a jury nullification in a suit between the patentee and the questioner, but I am saying that if the disclosure is anticipatory, then as a matter of law such a disclosure is prior art and the patent is invalid.

    That was the original question, and that is the proper answer. Under the current scheme, disclosures are either secret or public. In my opinion, practitioners will rue the day that the law breaks from this scheme, and they face the prospect of drafting an opinion or maintaining a suit involving categories of “obscure” and non-invalidating prior art.

  14. 11

    Re: Generating a secret but effective statutory bar:
    Two ways suggested to me years ago, besides the obscure but cataloged thesis, are: 1. A publication in Serbian in a Serbian farm journal. 2. Depositing, making sure it is indexed,a copy of the disclosure in a library in a small town in Germany. There is an actual CAFC decision on the latter. But if you want to file a patent application on the idea yorself latter it has to be within one year, you will have to disclose it, and it will kill your foreign patent rights. And neither tactic will easily win you claims by invention date priority in an interference if you are the junior party. But it might kill the other party’s application or patent claims.

  15. 10

    But so long as a single provable instance of prior USE of an invention is sufficient as prior art, surely you have to accept that a single publication, accessible to the public in whatever way, must be so also?

  16. 9

    I don’t see anything unethical because the party is not seeking a United States patent and thus has no duty to submit its own prior art to the USPTO.

    To create hard-to-find (but nevertheless “public”) prior art, the person could try filing a foreign patent application that includes the relevant disclosure in a figure and then cancel that figure before the patent application publishes. See, e.g., Bruckelmyer v. Ground Heaters (Fed. Cir. 2006). Keep in mind, however, that Bruckelmyer was a 2-1 panel decision (Michel & Lourie were the majority and Linn dissented).

  17. 7

    A few thoughts,

    The questioner is subject to section 102 (he is not subject to section 112 because he’s not filing for a patent). Prior art is supposed to be public, and here it wouldn’t really be, though technically is under Hall.

    The questioner’s motivation surely wouldn’t matter if the patentee sued someone else for patent infringement and that other person found the prior art. Does it change when it was the accused infringer who placed the prior art deliberately obscurely? It would have to be some kind of estoppel argument; but then the equities would be dubious since there is a very strong public interest in voiding invalid patents. It would be strange for a patent to be valid against a single infringer but not anybody else — I can’t think of any situation where this happens.

    In sum, there is something extremely unpleasent about this situation. The problem comes because (1) the “public” threshold in 102 is not particularly high; and (2) the motiviation of the questioner is to take advantage of (1). (1) is water under the bridge after Hall, and there doesn’t seem to be much we can do about (2) since the questioner isn’t part of the patent system except as a potential infringer. My guess there’s really nothing that can be done about it.

  18. 5

    Yes, examiners have the capability to search foreign newspapers. Whether or not this would be done a specific case most likely depends on who gets that case and the diligence of the examiner, as well as how well the translation service for the database works. Of course applicants and their attorneys would have a duty to disclose such a publication under 37 CFR 1.56 No one would forget to include their own publications in an IDS, right?

  19. 4

    “Of course, this approach is directly contrary to the purpose of the public disclosure requirement of 35 U.S.C. 102, and overt gaming of the system would likely raise the ire of a U.S. jury.”

    The questioner is not subject to 35 U.S.C. 102 because the questioner is not seeking a patent. I will not speculate on the effect that this practice would have on a jury, but I will note that the questioner is seeking to create prior art in the vein of that beloved patent bar classic, the obscure thesis. In re Hall, 781 F.2d 897, 900 (Fed. Cir. 1986) (rejecting the argument “that a single catalogued thesis in [a] University library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence”).

    Frankly, I question whether the patent owner would be able to raise the questioner’s motive for making an obscure disclosure in front of the jury. Competent counsel would likely bury that argument in pre-trial motions since motive is irrelevant to validity.

  20. 3

    This question raises two interesting issues.

    (1) Would it be ethical for a registered patent agent or attorney to advise a client in this context?

    “A practitioner shall not: … (4) Engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. (5) Engage in conduct that is prejudicial to the administration of justice. (6) Engage in any other conduct that adversely reflects on the practitioner’s fitness to practice before the Office.” 37 CFR 10.23 (b).

    And there is always the amorphous statement: “A practitioner should assist in maintaining the integrity and competence of the legal profession.” 37 CFR 10.21 (Canon 1).

    (2) Would such a concealed reference be considered prior art under the proposed standard in the Patent Reform Act?

    “`(B) REASONABLE AND EFFECTIVE ACCESSIBILITY- For purposes of subparagraph (A)–

    `(i) subject matter is reasonably accessible if persons of ordinary skill in the art to which the subject matter pertains are able to gain access to the subject matter by without resort to undue efforts; and

    `(ii) subject matter is effectively accessible if persons of ordinary skill in the art to which the subject matter pertains are able to comprehend the content of the subject matter without resort to undue efforts.” H.R.2795 Sec. 3(b)(1).

  21. 2

    “However, if the prior art is intentionally indexed only in a remote off-line Ghanaian library, will it still serve as prior art?”

    Yes, see In re Wyer, 655 F.2d 221 (CCPA 1981) (Australian patent application kept only on microfilm at the Australian Patent Office was sufficiently accessible to the public and to persons skilled in the pertinent art to qualify as a ‘printed publication).

  22. 1

    Maybe he can just publish a translation in Dutch as an ad in one of our national newspapers?

    A national newspaper in a major European country would certainly count as prior art I’d say. But does the USPTO search in the Dutch language?

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