Does a Reference’s Priority Claim to a Provisional Application Alter its 102(e) Prior Art Date?

In re Giacomini (Fed. Cir. 2009) (discussion of the briefs)

Giacomini is appealing the BPAI’s 102(e) rejection — arguing that the patent asserted as prior art does not actually qualify as prior art. Giacomini’s application claims priority back to November 2000. The asserted prior art patent issued in 2006, but was filed in December 2000. The prior art patent also claims priority to a provisional application filed in September 2000. The PTO claims that the 102(e) date of the patent is the filing date of the provisional — thus making it prior art over Giacomini.

When a patent is asserted under 102(e)(2), the patent’s filing date is considered the priority date. In the language of the statute, the PTO must consider whether the putative prior art patent was “granted on an application for patent … filed in the United States before the invention by the applicant for patent.” The provision makes clear that a patent claiming priority to an international application will be given the international application filing date if that application “designated the United states and was published . .. in the English Language.” Under US case law, when being considered as prior art, divisional and continuation patents are also given the filing dates of their parents as their 102(e) date. See In re Klesper (CCPA 1968)(“provided the disclosure was contained in substance in the earliest application”). However, patents claiming priority to a foreign filing under Section 119 are not given the foreign priority date.

The novel question here on appeal is how to interpreted the statute’s silence regarding provisional applications.

253 thoughts on “Does a Reference’s Priority Claim to a Provisional Application Alter its 102(e) Prior Art Date?

  1. 253

    23:50 – “provisional is published” – Radar.

    Interesting (not that it is right or not) that the Government dances around this by stressing “publicly available” and NOT stepping to Radar’s challenge of actually saying that provisionals are published – even though several judges plainly state that such is indeed the case.

    final Killer: 27:40 – “I will concede that”.

    Ned,

    I would be interested in hearing if your position changes at all upon listening to the oral arguments. While the emphasis was not on exactly the points we discussed in quite the same way we discussed them, clearly the judiciary said Milburn was effectively overruled and the judiciary would not agree with your positions posted here.

  2. 252

    dang, I have a whole family of cases getting rejected by a provisional date right now. i was hoping this one might go better.

    Fly: the 102(g) thing is still a problem. If you couldn’t swear behind 102(e), then you certainly couldn’t get behind 102(g). 102(g) inquiry just allows evidence of concealment or abandonment to defeat their priority. Those aren’t an issue once the (enabled, anticipatory) provisional is filed. I’m no 102(g) expert, but I thought the claims had to maybe be similar too?

  3. 251

    Wow, the oral argument did not go well for Giacomini.

    link to oralarguments.cafc.uscourts.gov

    The 102(g) hypo could have been handled by saying that you still could have invented before the provisional (i.e., 102(g) can be sworn behind).

    The “same effect as” language should have been argued more strenuously as referring only to priority. From the argument, it looked like Radar was willing to extend 102(e) dates to foreign priority! Yikes man.

    Also, the USPTO did a rather poor job identifying when a provisional becomes 102(a)/(b) art after it publishes.

  4. 250

    Ingenue,

    I don’t fully understand your point.

    >Doesn’t the fact that at least the Fed Cir has >already decided that 102(e) prior art, which >was unpublished at the time of filing of >another at issue application, can be used in an >obviousness rejection of that application, >despite the fact that a 103 analysis requires >that an invention be “obvious at the time of >filing” give us enough information about how >this will be decided?

    Could you rephrase it please?

    >Illogically, among other unfortunate reasons >better articulated by Ned and others, filing >dates of provisional applications will remain >102(e) prior art dates.

    No federal court has ever addressed either issue:

    (1) What is the effective reference date of a provisional application, or

    (2) What is the effective reference date of a patent that claims the benefit of a provisional application.

    The Patent Office in the MPEP and in In re Yamaguchi have addressed both issues, but the reasoning is terminally flawed and will probably be overturned. The Patent Office “wants” the law to be a certain way, but the CAFC is unlikely to decide the issues in their favor.

  5. 249

    Doesn’t the fact that at least the Fed Cir has already decided that 102(e) prior art, which was unpublished at the time of filing of another at issue application, can be used in an obviousness rejection of that application, despite the fact that a 103 analysis requires that an invention be “obvious at the time of filing” give us enough information about how this will be decided? Illogically, among other unfortunate reasons better articulated by Ned and others, filing dates of provisional applications will remain 102(e) prior art dates.

  6. 248

    Everyone,

    We have finished the appellants’ reply brief. If you’d like a copy, I’d be happy to e-mail it to you. Just send me your e-mail.

    Jason Paul DeMont
    Attorney for Appellants Giacomini et al.

  7. 246

    NAL, its been good talking with you on this. I must admit you never give up. My hat’s off to you.

    Let’s see how this comes out. It will be interesting. Regretfully, we have no really old timers on the Fed. Cir. to help the new guys on fundamental issues. It would have been nice to have Judge Rich opine on this issue.

  8. 245

    Ned,

    I think that you are making a distinction without a difference – a fee is not material to content, and payment of the fee still lets your logic based on Milburn to apply to the “class” of provisional (or at least a certain subset of that class) in the substantial portion of wht is involved. Granted, an action is required, but that action has no effect on the dating of the application – we both know this. The reason I place stress on conversion, as for the argument to be won, I only need to show an instance – for your argument to hold,, you must show that it is entirely not possible. Your last sentence is but another red herring.

  9. 244

    NAL, you place a lot of stress on conversion. But conversion is like entering the national stage — your have to file the oath, pay the fee, etc., and otherwise comply with the full requirements of US law in order for a patent to issue.

    A provisional is inchoate. If it is converted, one has to do more than just pay a fee or request examination. You have to file an oath. That is required by statute. It is not a rule.

    Once full compliance with all the requirements of the requirements of a US patent application, one has a filing that can issue. Until then, one does not.

  10. 243

    Ned,

    Your explanations are not satisfactory.

    McKellin is distinguished as to a foreign filing. We are specifically NOT talking about foreign filing. Zletz is distinguished by content (“The district court, in the polypropylene interference, held that Zletz had not actually reduced to practice the subject matter of the lost count based on the early work.” and “The court held that even if plaintiff’s Rule 131 affidavits were sufficient to “swear back” of the references with respect to his early work, that did not go to the question of the sufficiency of plaintiff’s early work to show that he made a generic invention of the scope he attributed to claims 13 and 14.”) – Thus, Zletz fails to support your proposition.

    “Ditto Provisionals” does not work PRECISELY because provisionals CAN issue as patents as filed. There is (or should be) no dispute on this. This is NOT to say that ALL provisionals can – that is a red herring and does not in any manner take away the FACT that provisionals can issue as patents as filed. The conversion process does NOT alter the original filing material – it cannot by law, else it violates the no new matter added doctrine.

    As to the supposed rebuttal to my argument on 122(b), you have not rebutted the specific point that the exceptions of (b) are controlled in 122(a) and thus can be obviated by that section – this path can and does destroy your legal position. It matters not if I attempt the step you ask in asking for an early publication of a provisional. This direction is yet another red herring. As a provisional, of its own accord (before invoked or converted) gives no reason to call into play the 122(a) possible nullification of the exceptions in 122(b). I think you know this.

    Once again, I am chagrined that you ignore my points and simply proclaim your view without seemingly understanding what I have said. Ignoring my points is not persuasive. Curiously – you have no comment on my post indicating where you agree with my stand.

  11. 242

    Regarding my point about “claimed subject matter,” I believe it is prior art under Section 102(g) because McKellin was decided on the basis that the prevailing party won based on his foreign filing date. But what is consistently clear is that unclaimed disclosure is not prior art under Section 102(g). I think this is also the position of the USPTO today.

    For Section 102(e) purposes, the disclosure of a patent application filed under Section 111(a) is prior art as of its filing date upon grant. This is consistent with Milburn and with the wording of the statute. LATER patent applications claiming Section 120 benefit to such a 111(a) case and which continue to disclose the subject matter are in essence the same patent application. This is why it is prior art when a patent later issues from such a continuation.

    However, any patent application not filed under Section 111(a) cannot issue as a patent and is NOT eligible to be Section 102(e) prior art no matter what happens later.

    The muddy thinking of the Office on this issue is caused by the assumption that the statute operates BACKWARDS, essentially converting that which was not eligible to be prior art into prior art. Its thinking in this regard has consistently been rejected every time they tried to get it adopted by the courts. McKellin is just one such example. Hilmer I and II are further examples. And, while never tested in court, its earlier position that the filing date of an International Application, filed in WIPO, for example, was the effective prior art date of a patent issuing on a Section 111(a) claiming the benefit of its filing date was (and still is) IMHO complete nonsense.

    Ditto provisionals. They cannot issue as patents as filed. The cannot be Section 102(e) prior art.

  12. 241

    NAL, you claim I have not rebutted your argument about 122(b). I did. But you may not be satisfied.

    Again, I ask you to request early publication of a provisional application and see what happens.

  13. 240

    NAL, a converted provisional must meet all the requirements of a Section 111(a) application. What if the provisional as filed has no claims and is in a foreign language? Can it be converted as is? Who has to file the Oath? The inventors of the appended claims or all the inventors named in the provisional?

  14. 239

    Zeltz: link to cases.justia.com

    “Disclosure” in a patent is not prior art under 102(g).

    Cites: In re McKellin, 529 F.2d 1324, 188 USPQ 428 (CCPA 1976)

    Deckler, link to openjurist.org, explains McKellin

    “In re McKellin, 529 F.2d 1324, 188 USPQ 428 (CCPA 1976), the “sole issue” before the court was “whether claims may be rejected under 35 U.S.C. § 103 on the ground that a losing party to an interference is not entitled to claims which are asserted to be obvious variations of the invention defined in the counts, when section 102(g) and interference estoppel are not applicable.” Id. at 1325, 188 USPQ at 430.

    “McKellin had lost an interference in which the winning party prevailed solely on the basis of a foreign priority date. The Board rejected McKellin’s remaining claims under section 103 as unpatentable in view of the counts of the interference or in view of the disclosure of the interfering patent. The court reversed, holding that because the interference was decided solely on the basis of the winning party’s right to the benefit of an earlier foreign filing date, there was no “statutory basis for finding that either the subject matter of the lost counts or the disclosure of the [interfering] patent is prior art, in the sense of 35 U.S.C. § 103, to [McKellin].” Id. at 1329, 188 USPQ at 434 (emphasis in original). In so holding, the court also rejected the Commissioner’s theory that the count was statutory prior art under 35 U.S.C. § 135(a) for purposes of section 103. Id. at 1327, 188 USPQ at 432.”

  15. 238

    Ned,

    Per your 7:21 post, “We also have a doctrine since Alexander Milburn that a US patent application that can and does issue as a patent is prior art for everything it discloses as of its filing date. This can be extended back to earlier applications, also filed in the United States, upon which a patent could have issued.”

    Recognizing that conversion is a different animal, nonetheless, I think it throws a monkey wrench in your logic in attempting to use the Milburn doctrine, a doctrine that quite simply did not anticipate the provisional law.

    With conversion, a provisional may be filed that includes everything a non-provisional requires (including claims – in fact to convert, what at elast must appear as to be claims are necessary). You stated that a converted application is no longer a provisional. I don’t buy this proposition, as it elevates form over substance. As the application itself not only HAS NOT changed – by law it CANNOT change (no new matter).

    Therefore, in theory, since no provisional, on its face, is precluded from conversion (could is a broad and permissive term), the bounty of prior art date AND priority date extends to provisionals as a class.

    Additionally, the premise of 122(b) dating relying on 122(a)’s ability to remove the exceptions has not been refuted.

    I will have to check out In re Zeltz – Do you have an appropriate case cite?

    In your 7:50 post, I believe you finally relinquish the point I have been trying to make:
    “One last point, if the subject matter in an issued patent is both claimed and supported in the provisional, I believe the effected prior art date of that subject matter is the provisional’s filing date.”

    Perhaps you can add some detail to the next comment of “But, this does not mean that the whole contents of the provisional is prior art. Neither does it mean that some unclaimed disclosure in the non provisional is prior art as of the date of filing of the provisional.” – Since the typical back claiming usually states “…in its entirety”, I struggle to see how anything can be selectively excluded. The document “is” or “isn’t”. If the point is that the material is not sufficient, then that is a different argument than the material does not merit the date.

  16. 237

    “Is there a real difference between claiming “benefit” of an earlier application and claiming “priority” to an earlier application?”

    No. The benefit you get from the benefit claim is the right to priority, if the requirements are met. Those who tell you it’s incorrect to “claim priority” are being needlessly pedantic.

  17. 236

    Malcolm, I have no idea what lies you are speaking of. There is no requirement that a provisional be filed in English, that it be directed to one invention of one applicant, that it have any particular form.

    Now, if a Japanese company filed all its monthly reports as a provisional application, naming all its 2000 engineers as inventors, what is wrong with that?

    Now, it might be your contention that such a provisional is prior art in the US for all its contents as of the date of publication of any patent application claiming priority to it. But I can tell you that that is completely wrong for the reasons I have patiently tried to explain. But what is also true is that anyone actually trying to rely on such a provisional for an effective filing date would to prove a number of things

    1) that the claimed subject matter was disclosed in a manner provided by Section 112, p.1; and
    2) that at least one inventor named in the application was also named in the provisional.

    Now we do not have any law on the subject yet, but I would suggest that any proof of Section 112, p.1 support, would include providing a translation of at least that portion of the provisional that described the claimed invention.

    Now, where did I lie?

    One last point, if the subject matter in an issued patent is both claimed and supported in the provisional, I believe the effected prior art date of that subject matter is the provisional’s filing date. But, this does not mean that the whole contents of the provisional is prior art. Neither does it mean that some unclaimed disclosure in the non provisional is prior art as of the date of filing of the provisional.

  18. 235

    Confused: In the US, we talk about claiming the benefit of a filing date as a claim for priority. There is no magic per se in the language.

    We also distinguish between priority and prior art for “obviousness” purpose. In the US, the one with the earliest priority is the senior party and normally is awarded claims in an interference. But the prior art date of this “count” is another matter, for if the “count” is awarded the applicant due to a date which is not in the United States, it is not prior art for obviousness purposes. See In re Zeltz and the cases it relies on.

    We also have a doctrine since Alexander Milburn that a US patent application that can and does issue as a patent is prior art for everything it discloses as of its filing date. This can be extended back to earlier applications, also filed in the United States, upon which a patent could have issued.

    The USPTO has contended otherwise from the above from time to time, but its positions have not generally been sustained by the courts.

  19. 234

    Is there a real difference between claiming “benefit” of an earlier application and claiming “priority” to an earlier application?

    The title of 35 U.S.C. 119 is Benefit of earlier filing date; right of priority.

    What is the difference?

  20. 233

    Ned: “Malcolm, the burden is on the applicant to demonstrate the entitlement to the priority claim. Obviously, if the provisional is in Greek, the applicant would best be advised to get a translation if necessary.”

    Thanks Ned for stating the obvious and failing to address the false claims in your earlier comments.

  21. 232

    Malcolm, the burden is on the applicant to demonstrate the entitlement to the priority claim. Obviously, if the provisional is in Greek, the applicant would best be advised to get a translation if necessary.

  22. 231

    When did they make provisionals available to the public? There was a rule change in 2003 regarding making provisional applications available. I mentioned this long ago in this thread.

  23. 229

    posted by: 6 | Nov 05, 2009 at 11:38 AM”Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. ”

    Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.

    You’re just trailing off into wackiness Ned.”

    Check the statute. Co-pendency is not required. Provisional applications can and should be formally abandoned after filing for Paris Convention purposes. This has nothing at all to do with 12 months.

    Repeat: Co-Pendency is not required. The Provisional can be abandoned on day 2 and still form the basis for a priority claim.

  24. 228

    MM: “Literally impossible? That’s literally false. Regardless of the language, if the provisional app is incomprehensible gibberish to the Examiner, it’s not a priority document and the issue is moot.”

    Not the law.

  25. 227

    “Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.”

    6, you’re way over your head on this. A practice tip – when you don’t understand something you read, there are at least two possible explanations. The first is that the writer doesn’t know what he’s talking about. But you should probably stop to consider the second possibility before you open your own yap. Ned’s statement might be “weird,” but it’s completely accurate, and is occasionally quite important. He gave the reason earlier in this thread.

  26. 226

    Ned: “Remember, there is no requirement that provisional applications be filed in English or have English translation, that they have any particular format, or contain anything remotely printable as a published application. We joked at the time that Japanese companies could file as provisionals a months worth of engineering reports, naming as inventors every engineer in the department.

    It would be literally impossible for the Office to actually “publish” such provisionals at all.

    Literally impossible? That’s literally false. Regardless of the language, if the provisional app is incomprehensible gibberish to the Examiner, it’s not a priority document and the issue is moot.

  27. 225

    Ned: “Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it.”

    Is there a law preventing it? If not, then I don’t see how they can be kept from the public, Ned.

    “Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.”

    When did the PTO not allow public access to provisionals, Ned? Please answer the question and state your evidence. Otherwise, I think you’re just pulling crap from your axx.

    And I’m with 6 on this: BPAI will be upheld, with little fanfare.

  28. 224

    “Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. ”

    Wut? Ned that’s too weird, obviously you have to have the prov not having gone past 1 year (when it stops being “pending”) when you file your nonp to get priority.

    You’re just trailing off into wackiness Ned.

  29. 223

    “Similar to international applications and foreign applications, provisional applications cannot issue as United States patent applications.”

    Let’s be 100% honest though Ned. A prov, with sufficient disclosure to later support a patentable invention, could very well issue if the applicant took 2 seconds to write a claim and but for office delays.

  30. 222

    Oh and just fyi, if someone filed something in Japanese as a prov I would bust their arse so bad you wouldn’t believe it. There has to be a disclosure under 112 1st to get the priority. I’m sorry, but Japanese is not a sufficient disclosure to me, the examiner, or to Joe the American or Rader the American judge. Same thing would happen for a nonp.

  31. 221

    “The issue was decided years and years ago. It had to do with German “laid open” patent applications. They were “published” even though they were not printed.”

    But could they themselves be searched? It’s a german system which is undoubtably better than our own so I’m betting yes. And that’s your explanation for why theirs are “published” and ours aren’t.

    I’m going to be 100% honest with you Ned, despite your background, what you write has not convinced me that your side of the argument will prevail in this case. In fact, I believe you will lose.

  32. 220

    Nice contributions Ned. Hadn’t appreciated before the underlying logic of 102(e), that it rests on the fiction of the filing going through to issue instantaneously.

    As to the Applicant with the JP UM then the JP regular, I suspect any Applicant from outside the USA knows that it must cite every app filed before the US filing date, whether it is a Paris claim or not. I guess they claim under Paris whenever they can, and hope it will have an effect. But non-US Applicants have learned by now that a Paris priority claim never works anyway, inside the USA. Or does it? Even occasionally?

  33. 219

    Max, I hear you on “quality.” We Americans are more spoiled by the grace period than by insufficient provisionals. However, once we understand that full Section 112, p.1, support is required for an effective priority date, sloppy provisionals will become less frequent.

    I mentioned earlier a US case where the applicant had begun commercially using the invention more than a year before his non provisional filing date, but less than a year before his provisional filing date. He ended up barred because his claims were not fully supported in the provisional.

    Outside the US, you can still abandon the earlier case if you deem it insufficient and then file a “sufficient” case. This would avoid the collision issue.

  34. 218

    Martin, ref the Japanese case: just like Max said, the priority claim has to be to the first regular application. Legally, therefor, the earlier “UM” must not be considered a regular application under Japanese law.

  35. 217

    6: “The thing is Ned, (and Noise since you keep talking about this “publication”) as I understand it, provs aren’t “published” in so far as the word is used in the statutes. They are simply made publicly available. One difference between this publicly available status and “published” is the ability to find just the content of provisional (which could vary wildly from the nonprov) with any type of search mechanism other than by guessing that it would in that nonp published application’s history. That is, the only thing that gets published is the pgpub, but the prov is made publicly available.”

    6, I think they are published if made publicly available, albeit, they are not published under Section 122(b). The issue was decided years and years ago. It had to do with German “laid open” patent applications. They were “published” even though they were not printed.

    Remember, there is no requirement that provisional applications be filed in English or have English translation, that they have any particular format, or contain anything remotely printable as a published application. We joked at the time that Japanese companies could file as provisionals a months worth of engineering reports, naming as inventors every engineer in the department.

    It would be literally impossible for the Office to actually “publish” such provisionals at all.

    Provisionals were originally conceived to allow Americans 21 years of priority just like foreign applicants in an era of patent term measured 20 years from filing. But, just like foreign priority, the priority claim was just that. It had to be proved, by the applicant, in order to be effective.

    Now, at the time, the Office was treating even the filing dates of International applications as prior art under 102(e), provided patents issuing on Section 111(a) applications claimed the benefit of their filing dates. It is easy to understand just how the Office got confused about whether provisional applications provided a basis for Section 102(e) prior art.

  36. 216

    6 said: “quoting Ned ‘If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date.’

    “I was under the impression that they get the date [effective prior art date?] for everything in the prov if they simply make a reference to the prov. Me and JD had a huge back and forth about that same issue 2+ years ago. And if I recall he won it. I don’t remember hearing jack about an applicant having to “prove” this. If you can be so kind as to point out where this “requirement” comes from I’d be much obliged.”

    6, the thinking here represents the same fundamental error here the Office made when it claimed that a Section 120 benefit claim to an international application designating the US made the international filing date the effective prior art date for section 102(e) purposes. The Office was equating “effective filing date” for priority purposes with an “effective filing date” for prior art purposes. Thus a patent issuing from section 111(a) bypass continuation, according to the Office, would have a prior art date as of the international filing date, while an patent issuing on the international application itself would have a prior art date as of the date it entered the national stage. This is obviously wrong, which forces one to look to the basics for why it is wrong.

    The reason that it is wrong is actually fairly obvious. The reason that a patent is prior art as of its filing date in the United States is based on the legal fiction that a patent might legally issue on that date but for patent office delays. A section 111(a) application and only a section 111(a) application may issue on filing. In contrast, a foreign patent application cannot issue as United States patent. Similarly, an international application cannot issue. It must first enter the national stage. That is why the former section 102(e) specified that the date of entry into the national stage was the section 102(e) of a patent issuing on an international application.

    Now this brings us to provisional applications. Similar to international applications and foreign applications, provisional applications cannot issue as United States patent applications. For this reason they are not eligible to be section 102(e) prior art.

    Moreover, there is no requirement that a provisional application be pending when the non-provisional is filed and a benefit claim is made. Without such a legal requirement, a provisional application is exactly like an abandoned, non-co-pending United States application. A patent cannot issue on such an abandoned application.

    Now with respect to the “grace period” etc. etc. etc., there is a legal requirement in the benefit claim that there be full compliance with section 112, paragraph 1. There is a recent Federal Circuit case that denied the benefit claim because the provisional did not have written description support for the invention claimed in the non-provisional. I don’t have a citation in front of me, but the case was decided within the last two years. Just like with CIP’s and foreign and applications, there is no presumption that the subject matter of the provisional automatically provides full section 112, paragraph 1 support for the claims in the non-provisional. The reason for this is that there is no requirement that no “new matter” he added to the non-provisional. Often, new matter is added to the non-provisional. But the only subject matter that is given the effective filing date of the non-provisional is that subject matter that supports claims in the non-provisional. In other words, for priority purposes, one first looks to the claims and then looks to the support for the claims in the provisional.

    Once one (the applicant or patentee as the case may be) establishes an effective filing date in the provisional for the claimed subject matter, that is the date that establishes the one-year grace period for statutory bars — for those claims and those claims only.

    Hope this helps.

  37. 215

    Martin, is it any more interesting than when a US Applicant files outside the USA, with a declaration of priority of a US c-i-p application? Can you give me just a little clue, why you think it’s “interesting”. Is it that Paris gives a right of priority only in respect of the FIRST filing of an application for protection of that SAME invention, in a Paris Convention country? Or is it that a utility model is NOT an application for protection? Or is it that it is, but more like a pro than a non-pro?

  38. 214

    I had a case that claimed priority to a Japanese patent application, which in turn claimed priority to a Japanese utility model application. The Japanese patent application was filed less than a year before the U.S. case was filed; the utility model was filed more than a year before the U.S. case was filed. The applicants mentioned both foreign applications on the oath, but only claimed priority to the JP patent application. Interesting situation.

  39. 213

    Thank you, all, for keeping this thread running. I think the issues are fascinating. I don’t understand the arguments under US law but await the outcome of the case with great interest.

    The thing is, you see, under the European Patent convention (and hence most everywhere in the world outside the USA) Quality Matters, when writing and filing a provisional specification, whereas it seems not to, inside the USA.

    You will see that the reality is in fact the reverse of what Chicken Little and her friends say about Quality and First to File. They say that FtF will provoke a flood of poor quality, premature filings. Based on my experience at the EPO, the reverse will happen. The poor quality premature filings are the US provisionals. Once US attorneys realise how these things can destroy what would otherwise be an impregnable patent position for their client, quality will increase because, in First to File country, quality of drafting and Goldilocks timing of the filing date is of decisive importance.

    By “Goldilocks” I mean, “Not too soon, and not too late, but just right”.

    Too soon is when the inventive concept is not yet defined, and/or not yet enabled. You think you have a prio date, and act accordingly (disclose something to somebody, for example) and then later find out (painfully) that the priority date does not stand up. Not only that, but the loss of priority has knock-on consequences for other properties in the patent portfolio. (In Europe, we call it “self-collision”)

    Too late is when the other guy filed already.

    So, let’s hear no more rubbish about FtF encouraging poor quality premature filings, shall we?

    And America, stay with provisionals, 35USC102 and First to Invent, do. For as long as you do, it will give ROW more chances, both inside the USA and without, to get a patent portfolio edge over 100% American-thinking, IPR-savvy corporations.

    Anybody say different?

  40. 212

    “If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date.”

    I was under the impression that they get the date for everything in the prov if they simply make a reference to the prov. Me and JD had a huge back and forth about that same issue 2+ years ago. And if I recall he won it. I don’t remember hearing jack about an applicant having to “prove” this. If you can be so kind as to point out where this “requirement” comes from I’d be much obliged.

    “For years, they did not”

    You keep saying that, and I’m obliged to take your word for it, but I cannot see how that ever could have been permitted. If they actually did that then they were violating the entire principle of provs. Without the public being able to verify that a patentee gets the priority date (due to their disclosure at filing of the prov) then the whole thing is just a whole big sht fest.

    What I think may have happened, and I seem to have some vague recollection of this (though I could have dreamt this entire part) was that while they were still putting the program together they did not make prov’s publicly available unless the app issued as a patent. That is, pubs did not get their prov’s made public for awhile, because there was a lot of data entry etc to be done and presumptively, the public shouldn’t really care that much about a not yet issued application.

    “that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals”

    The thing is Ned, (and Noise since you keep talking about this “publication”) as I understand it, provs aren’t “published” in so far as the word is used in the statutes. They are simply made publicly available. One difference between this publicly available status and “published” is the ability to find just the content of provisional (which could vary wildly from the nonprov) with any type of search mechanism other than by guessing that it would in that nonp published application’s history. That is, the only thing that gets published is the pgpub, but the prov is made publicly available.

    “What are the “whole host of issues”?”

    I have them at work in an email. If I remember I might grace you with their presence.

  41. 211

    This is interesting to me, because I seem to be running into this more and more. Maybe it is because many of the applications I am prosecuting claim priority to provisional applications, and examiners don’t seem to look at priority dates, just application dates in their rejections. So, I find myself routinely arguing that a cited reference is not 102(e) art because my application claims priority before the filing date of the cited reference. And, the examiner sometimes comes back and cites the priority date for the reference as being earlier than my priority date, and then I ask him to provide both a legal justification for that based on case law, and show where the cited elements were disclosed in the provisional.

    So far, the direction of prosecution has changed in most of these cases, so I have not received the types of rejections after that the examiners above provide in such cases. But, I expect that since I am doing as much of this as I am, that I will see it eventually.

  42. 210

    One big problem with a provisional application being made available as a publication under 35 U.S.C. 102(b) is that it would presumably be “published” at the day that the application that claims priority to it is published or granted as a patent. And, then that starts the one year statutory bar running. But the application/patent is prior art as of the date of application (or possibly the provisional date) under 102(e).

    So, in a typical situation, where the utility application is filed 1 year after the provisional, and published 18 months after the provisional (and 6 months after the utility) is filed, the 102(b) date for the provisional would be 30 months after the filing of the provisional, and 18 months after filing of the utility, and therefore 18 months after the 102(e) date of the utility w/o the provisional and 30 months after the 102(e) date with the provisional. Of course, you couldn’t swear behind the 102(b) date, BUT, I would also suggest that it is usually pretty difficult to swear back either 18 or 30 months.

  43. 209

    Mr Heller thank you for your stamina, in continuing to run the “swords and shields” Hilmer point, in relation to provisionals, both those filed at the USPTO and those filed in the UKPTO. I await any further debate with ongoing interest.

  44. 208

    Ned: “Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.”

    This is absolutely correct. The Board again had bogus reasoning. They argue by anectdote, believing that because most provisionals become available whan an app claims priority, therefore all do so. From firsthand experience, I am aware of at least several cases where provisionals, though claimed to, were not publicly available and had to ask the Examiner for a copy. By extrapolation, there are many other non-published provisionals to which priority has been claimed. Presumption of publication is a poor basis for a rule of law when that publication is by the good grace of the PTO and not by law.

  45. 207

    6: “That is not to say that the least amongst these is effectively significantly defanging 102e.”

    Circular. It’s like saying “we have to not weaken 102e because we can’t weaken 102e”.

    What are the “whole host of issues”?

  46. 206

    Ned, thanks for the insights.

    I’d add that that the PTO’s reasoning is bogus.

    The BPAI’s reason to include provisionals under 102(e) was that one should not be entitled to patent something for which they were not the first to invent. But this theory is not consistent with U.S. patent law.

    The US patent laws are intended to encourage _public_ spread of knowledge. It’s possible for one who invented second to have patent rights if the first inventor kept the use and knowledge private. Provisional applications don’t prove prior public use or knowledge. The PTO ignores the fact that US patent law does indeed allow patents for “second to invent”. PTO needs to stick with statutory construction.

  47. 204

    6, provisional application were intended to allow an applicant a basis for priority. However, due to their informalities, priority is not assumed. It has to be proved — by the applicant. If they prove it, they will overcome a reference and move their “grace period” for statutory bars back to the date of the provisional’s filing date. They could also use this date in an interference for the purposes of establishing who is senior party. But again, the proof of support is the burden of the applicant.

    So you see, that when two parties are claiming the same invention, a provisional application’s filing date is effective to establish the date of an invention. But whether this date is further effective for prior art purposes is a separate and distinct question. Thus, if the provisional’s date is not available for prior art purposes, the respective inventors may obtain patents on otherwise obvious variations of what is disclosed in the provisional. But, they cannot, due to 102(g), obtain a patent on same invention.

    The same “problem” exists for priority based on foreign and foreign-language international applications. The foreign filing date may be enough to win the interference, but it is still not prior art. The losing party and everyone else for that matter may patent obvious variations.

    Now, assuming all of the above, an inventor can still protect himself by publishing the invention described in the provisional, or by embodying it in a product on sale in the US. Either would be effective prior art for even obviousness purposes.

  48. 203

    NAL, thanks for your courteous reply.

    Regardless of Section 122(a), I believe the better view of 122(b) is that provisional applications cannot be published. Note, for one thing, they expire by law in 12 months, but publication takes place after 18 months.

    If you doubt me, try requesting that a provisional application be published early under Section 122.

    Also, I mentioned earlier, that there is no law requiring provisional applications be made available to the public upon publication of a non provisional claiming priority to it. Without such a law, there is no publication even if the patent office will NOW allow public access to provisionals. For years, they did not.

    As to whether a provisional application is an application for patent under 102(e), I suggest that it is mandatory that a patent be able to issue on it for either subsection. In this regard, please see 111(b)(8), which expressly says the provisions of Section 131, for example, do no apply. That section gives the commissioner the authority to examine and issue a patent. Thus, by law, a provisional cannot form the basis of an issued patent under any legal theory.

  49. 202

    “Once one understands that for prior art purposes, the non provisional is equivalent to a later-filed, non co-pending patent application on the same invention, it becomes abundantly clear why a provisional cannot be the basis of Section 102(e) prior art.”

    Ned, I hear all that you’re saying, but if we don’t allow the provisional to extend the “available as 102e reference date” back then there are a whole host of issues that arise. And I don’t even mean necessarily between your client’s app and some other person/corps applications.

    That is not to say that the least amongst these is effectively significantly defanging 102e.

  50. 201

    Ned,

    My apologies if I seem overly gruff with you – dealing with the likes of snarksters like 6 and Malcolm tends to sharpen the edge of my writings.

    I have taken some time to review in greater detail the background of your actions and I can see where we may be miscommunicating. Let’s start with what I did comment upon and what I did not comment upon. I did not explore 102(e)(2). So your repeated replies to my writings globally addressing 102(e) as if there was no “or” in the rule does make a difference. Your answer (at least to me), should recognize this. I think that you are trying to address more than one audience, but this is creating confusion, rather than clarity.

    An example of your response that illustrates you addressing more than the points I have brought up is in your post of 4:14 PM.

    There, you seem to contradict yourself in the third and sixth paragraphs. You rely on Milburn in qualifying “application for patent”, and then later say the section is not based upon a Supreme Court case. As far as the application for patent phrase, you have not addressed the simple and clear reading of 111(b)(1). Can you address this?

    The reliance on Milburn is excessive. Milburn, a 1926 case, cannot speak to provisionals. The brief tries to make this argument, but that argument is stillborn.

    Your fourth paragraph appears to be a non-sequitur to our discussion. I realize now that you are speaking to a larger audience than just me.

    Your fifth paragraph tries to make a distinction that does not have a difference, or at least one that I understand in how it relates to our discussion (effective filing date versus filing date). Can you clarify?

    The meat of our discussion is only picked up in your paragraphs 8 and 9. I am not sure if I reviewed the correct In re McKellin case, as the one I reviewed spoke to loss due to suppression, rather than what you implied.

    I did read the Giacomini brief and thought that several of the legal arguments were at best tenuous. I believe that you mistake (as well as the brief mistakes) the published under 122(b) position. While 122(b) does have specific exceptions, those exceptions must follow the caveats presented in 122(a). The exception to the exception, as it were. Removing the exceptions, as allowed by 122(a), does mean that provisionals ARE published under 122(b). You have not addressed this aspect of 122. The publication of provisionals is a publication under 122(b). This will be the ruling of the court. The statement “A Provisional does not publish” is simply incorrect. They are clearly published.

    One glaring legal shortcoming to the brief’s arguments is the lack of addressing the allowable split-dating that is afforded CIPs. The arguments seem to bank on an all or nothing dating system that allowed only EXACT specification content to grab earlier filed dates. A CIP does shift for what is disclosed (as opposed to what is claimed).

    I also found the discussion on the plain language of 119 on page 20 to prove the converse of the attempted point, by simply emphasizing different portions: “An application for patent…disclosed in a provisional application… shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title.” As we have seen – 111(b)(1) indicates quite clearly that provisionals are applications for patent. I think we agree that the date as discussed here is the provisional filing date. It is a hollow argument to merely state that the reference date isn’t also switched – given the same logic that is applicable to CIPs.

    I will also say that the logic on page 30 of the brief is not compelling. Trying to assume a different reading of the letter of the law from its straight forward reading because a specific reference was NOT present is strained. Other sections may have such a reference, but those are other sections that have been amended in each of their own ways. This section must be read as it is.

    As to other items of mine that you have not responded – I will leave that to you if you wish to pursue – I cannot know what you have read or not read, and I do not wish to retype all of my responses. Perhaps setting aside the vigor of your position would help you focus on what I have said. I leave that to you.

  51. 200

    I would like to add to my comment above:

    <>A pip of an example is my friend Lionel Hutz<>

    , and another is me.

  52. 199

    Well, as far as the relevant provisions of the Paris Convention are concerned, Ned Heller writes good sense. So, I’m taking it that what he writes about his own jurisdiction is also to be relied upon.

  53. 198

    To reiterate to make what I am saying here abundantly clear, the Office’s position in the ’90s was that a Section 120 benefit claim to an international application designating the US was sufficient to makes its date the effective Section 102(e). The vice in their interpretation was that the Section 102(e) status did not depend upon the prior art status of the parent case. If that application was NOT eligible to be prior art as if its filing date, a subsequent Section 120 benefit claim could not change it status. See, e.g., In re McKellin, supra. The office ignored this case law.

    The current position the Office takes in the present case is highly reminiscent of this fundamental error of the prior Office regime.

  54. 197

    Just, no problemo.

    My views are somewhat “tainted” by my history. As I mentioned, it was my letter to the editor and my petition to the commissioner that forced the Office to reconsider its positions on the prior art status of applications under Section 102(e). In response, they twice amended Section 102(e) to get their position just right, and in line with Supreme Court case law.

    It was also my petition which forced them to adopt a clear position on Section 102(g) and patent applications.

    So I have some history here.

    Regarding provisional applications, I was there when the legislation was drafted and understand the legislation quite well. Their primary if not sole purpose was to give Americans “internal” priority without affecting expiration date so that Americans would have 21 years of priority just as foreign filers. Given that, Section 119(e) was drafted to make a priority claim to a provisional application exactly the same as a priority claim to a foreign application. Particularly, the priority claim had to be within one year and their did not have to be co-pendency.

    This latter aspect is under-appreciated. For Paris Convention reasons, one has to abandon a provisional before the filing of a subsequent patent application on the same invention (as in a CIP) in order for the latter to be considered first if it is desired to claim Paris Convention priority to the second-filed case and not the first for any reason. Thus customary practice would be and should be to expressly abandon provisional applications on filing in every case so that one would not inadvertently make a mistake in this regard.

    Once one understands that for prior art purposes, the non provisional is equivalent to a later-filed, non co-pending patent application on the same invention, it becomes abundantly clear why a provisional cannot be the basis of Section 102(e) prior art.

  55. 196

    Dear Ned,

    Please believe me, I believe my views are at least equal, or more susceptible, to being influenced by my own personal subjective agenda than other Patently-O writers.

    That being said, I hope my interjected comments on this thread have not offended anyone.

    So guys, have at it, and I’ll buzz out. Besides, it is, in the ETZ, that special lubrication time – (I started early, it being the weekend).

  56. 194

    NAL, please begin me if I am not making myself clear, I am trying to answer your questions. If there is anything that I have missed, perhaps you could restate the question.

    Re: the “or” in section 102(e), I’m quite aware of that. It doesn’t change my answer one iota. If a reference qualifies under either clause of 102(e), it qualifies as prior art.

    Let’s go back to basics. The Supreme Court in Alexander Millburn held a patent to be prior art as of its filing date because it was deemed granted on the date it was filed because everything else that happened between filing and grant was due to “patent office delays.” In 1952, Congress enacted section 102(e) to codify this case. In interpreting section 102(e), one cannot interpret it in a manner inconsistent with Alexander Milburn, because Congress since 1952 has not changed the substance of section 102(e) in any significant manner except to variously address PCT’s, and to add the clause concerning published applications. According to this case therefore, in order to qualify as an “application for patent” for the purposes of prior art, a patent must have been able to issue upon that application but for patent office delays. Since a patent can never issue upon a provisional application but for patent office delays, a provisional application is never eligible to be a basis for prior art under what is now section 102(e)(1).

    Important in this analysis is that what happens “later” does not change the status of the provisional application. I particularly pointed out that a section a 119 (e) priority claim does not require co-pendency, an essential aspect of continuity that justifies extending the effective filing date for prior our purposes back to parent applications that disclose an invention described in the published patent. This theory of “what happens later” is particularly pointed out in such cases as In re McKellin, 529 F.2d 1324, 1329, 188 USPQ 428, 434 (CCPA 1976) (the prevailing count of an interference does not become “prior art” in the United States if the reason that the count prevailed was based upon a priority date that was not itself prior art).

    Section 102(e) now contains a first clause that will permit the effect of prior art date of a patent application published under section 122(b) to be prior art as of its filing date. Note, that the statute does not say “effective” filing date. It simply says “filing date.”

    Since this section is not based upon a Supreme Court case, there is no basis in Supreme Court case law for extending the statute beyond what it actually says to make prior art the filing dates of the earlier patent applications to which it claims priority. If a parent application was not published or was not publishable, or was not prior art under some independent basis, under what basis can its filing date be deemed prior art as of the publication date of its child? For example, imagine application published under section 122(b) that claims section 120 benefit of an earlier-filed PCT application filed in the United States receiving office in a language other than English. Now the statute expressly states that such PCT’s shall be eligible (under this subsection? — what does that mean?) only if such PCT’s were published in English. The later publication under 122(b) cannot make the PCT prior art as of the PCT filing date simply by the act of publication. Similarly, a foreign patent application cannot be made prior art simply by the subsequent publication under section 122(b). Again why? The answer is that the foreign application itself is not prior art. (By this I mean, the effective prior art date of its publication or its patenting is not its filing date, but its publication date.) Similarly, a provisional application cannot be made prior art by later publication under 122(b) because it itself is not prior art.

    Now the thornier issue is the status of a application published under section 122(b) that claims section 120 benefit of an earlier application filed in the United States. If such application was itself published under section 122(b), clearly it is also prior art under section 102(e)(1). Because it itself is prior art, I would agree that the effective prior art date of the Child publication would be the date of its published parent. But consider the circumstance where the parent was not published or was not publishable under section 122(b). That parent has no prior art date as a potential publication. I would argue, consistent with prevailing CCPA caselaw such as In re McKellin, that the child application published under section 122(b) does NOT have an effective prior art date as the filing date of its unpublished or unpublishable parent.

    Central to the above rationale is that there is a consistent difference between priority and prior art, that “effective filing date” is essentially a priority concept, and that the analysis of “prior art” critically depends on the status of the application as filed, and that status cannot be changed by subsequent events. If a non provisional application is filed in the United States and can issue as a patent, it is eligible for prior art status when a patent issues. If such an application is filed in the United States without a non publication request, it is eligible prior art under section 122(b). If an application claims section 120 benefit of such application and it is either published or patented, the publication or patent has an effective prior art date as of such a parent’s filing date.

    NAL, I don’t know if I was able to successfully answer all your points here. So if I have not, please respond.

  57. 193

    \There are several interesting comments and argumens above [buried among all the usual useless ad hominum attacks].
    Here’s one that puzzled me, if I undersoond it correctly: An argument that 119 or 120 cannot apply to give full filing date benefit to a provisional application because it is not copending with the formal application claiming its priority?
    Since the provisional lasts for a year and the formal has to be filed within that same year to validly claim its priority, it seems to me they must to be copending?

  58. 192

    Dear The authors k/a “Publius,

    You are too kind – thank you.

    * * * * *

    Dear Noise above Law,

    Perhaps I shouldn’t interject in a thread I have not been following.

    However, it sounds to me that Ned has subjective views that prevent him from logically reappraising his views.

    Of course it is possible your points are influenced by your subjectivity as well. I know my views are greatly influenced by my personal subjectivity. I believe, however, that your subjectivity and my subjectively tend to align.

    As a righteous family man, loyal patriot, private businessman and freelance inventor, my subjectivity leads me to strive to lead a Biblically principal life, absolute allegiance to our nation’s Constitution and to embrace strong American patent rights.

  59. 191

    JAOI – how are your comments even remotely pertinent to “Ned – I grow tired of chasing you.”?

  60. 190

    Jaio,
    You are incredibly talented!
    For example, you can “connect the patent-political dots” as if you are playing chess many moves ahead!

    You are most THE insightful commenter on board – a true inspiration and motivation to all inventors, IP practitioners and other interested parties, and especially to those patriotically inclined, as we are.

    Please keep it up.
    Yours faithfully,

  61. 187

    Re:
    “Ned – I grow tired of chasing you. You appear to be intelligent and well-reasoned, but I cannot think of any reason why you keep avoiding my points, other than you simply choose not to. Answer my points please.
    Posted by: Noise above Law | Oct 31, 2009 at 09:06 AM ”

    I haven’t been following this thread, but please allow me to paraphrase a comment I made on April 22nd pertaining to Ned and, unfortunately, most people, even IP practitioners, inventors (including myself), infringers, jurors, judges and Examiners.
    A pip of an example is my friend Lionel Hutz.

    On a Patently-O thread dated April 13, 2009, Prof. Crouch posted an article titled:

    No guns, no boats, no gold. Piracy? (which was deleted by accident).
    I debated with Mr. Nice Llama about his notion that,

    …the term ‘pirate’ … carries a much stronger connotation than troll.

    The fact that that notion exists in someone’s head demonstrates basic human nature – that people, all people have subjective views that taint there perception and opinions. And subjective views typically out weight logic.

    The term “patent pirate” is more offensive than “troll” to farkin infringers; and

    the term “troll” is more offensive than “patent pirate” to independent inventors.

    And that is the objective truth, pure and simple.

    And that is why a ruling like the Supreme Court’s KSR ruling is crazy-nuts!, and our country’s top Justices should know better! We are paying them to be aware of all of the consequences of their rulings.

    How the hello can a District Judge or Appellate Judge rule if there is no objective rule to follow? There is no reason to think that what is reasonable to one Juror, Judge or Examiner will be reasonable to another.

    KSR invites (maybe requires is a better word) a subjective result. And that my friend, is how a patent can get tanked for no valid reason.
    Posted by: Just an ordinary inventor(TM) | Apr 22, 2009 at 03:35 PM

    It appears if you use italic, it gets stuck.
    I’ll check out the bold.

  62. 186

    Ned,

    You STILL do not answer my points – why is that?

    e(1) – while 102(e) asks for published under 122(b), 122(a) allows differences – this is complicated and a side note only to our discussion. Yet you ignore this point. Also, you are the one wanting to stick to basics – yet now you want NOT to stick to basics – why is that?

    e(2) – You are parsing my response in an incorrect and misleading manner. You are YET ignoring the “or” in the statute and banking your argument on something I did not state. – why is that?

    Whether I give you a proper cite or not is a mere side issue to the law, and a pedantic attempt to put the spotlight away from the subtance of our discussion. Answer the direct points and then we can talk about citations. You seem NOT to want to focus on the basics – why is that?

    Re: Milburn – Which briefs are you talking about? I seached this string for Milburn and came up empty. It seems that you are referencing something that is referenced in something else, going to great lengths to butress a legal theory understanding, yet you have ignored my points based on direct language of the law – why is that?

    Ned – I grow tired of chasing you. You appear to be intelligent and well-reasoned, but I cannot think of any reason why you keep avoiding my points, other than you simply choose not to. Answer my points please.

  63. 185

    “1. A method comprising:
    populating a cache with a resource only when at least i requests
    for said resource have been received;
    wherein i is an integer and is at least occasionally greater than
    one.”

    At the risk of being told to put down the pipe, or offering something that everyone already knew, here’re some thoughts…

    First, claim interpretation…
    “at least i requests” – plural implies frequency of requests
    “requests for a resource” – what type of resource? a few things came to mind: web pages, database information, processor instructions
    “populating a cache” – storing in quick, local or near memory that efficiently and responsively provides the resource
    “i is greater than one” – if i is one, request may not be likely to be made again; use cache only if requests are made repetitively

    Next, search strategy…
    A PHOSITA (eg with a Computer degree) may look in the following areas.

    1. IT/MIS network/server design/configuration. For example if there’re plenty of HTTP requests to patentlyo.com, the corporate server will store the webpages instead of retrieving them from the remote patentlyo.com server each time a request is made.

    2. Database design. If there’re repeated queries for certain types of information, the DB engine will save the response in cache instead of indexing and searching each time.

    3. Computer architecture, OS, IC/processor design. If instructions from certain segment of code or some virtual pages keep getting invoked, save them in cache for quicker access by the microprocessor (eg Intel/AMD chips in a PC). Also cache of frequently accessed sectors in a hard drive.

    Finally, search…
    I haven’t done much search, but there should be plenty of prior art references prior to the claim’s priority date of 11/29/2000.

    Verdict: the claim is indeed “pitiful” as previously characterized by Jules.
    (Wish all my cases are like this, even though I won’t get any RCE as Applicant would go straight to appeal with the original claims.)

    Double patenting alert (identical claims in continuation)
    link to freepatentsonline.com

  64. 184

    NAL
    e(1)
    Being published and being published “under” Section 122(b) are not the same thing. The effective date of a publication is the date of publication, not some other date.

    e(2)
    Effective filing date relates to priority. “Granted on” is not the same thing and is required by the statute.

    If you believe a provisional application can be cited, give me a form of citation that I can put into an IDS.

    The Alexander Milburn case was discussed in the briefs. I thing it was also discussed earlier in this thread. But, the only reason patents are prior art as of their filing date is because of this case.

  65. 183

    Ned,

    I find your summary of our discussion a bit disingenuous. You have left out critical distinctions that I have raised and that damage your position and continue to pass unfounded assumptions as fact. If you want, I can lay out in rich detail a more complete timeline without leaving out arguments you have decided not to pursue and points of mine that you have declined to address.

    Here, I will focus on replying to your 3:16 post.

    “NAL, I asked whether a provisional application is citable under §102(e). You responded, yes.” More accurately, I addressed §102(e)(1) and distinguished §102(e)(2). You ignored this.

    You say “I respectfully disagreed with this position because…”. More accurately, you did not address my position and ignored the full weight of my caveats, in at least you ignored the “or” part of the rule.

    You now want to claim as a rule “contents of the provisional application are not published “under” section 122(b) even if they are published in fact”. This is merely an assumption on your part and a point that is not granted. I was trying to keep to the basics by mentioning this as a separate topic – “the seeming violation of these provisos is a topic for a separate conversation”; but you might contemplate the weasel words of 122(a) “UNLESS NECESSARY to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” This clause allows the exceptions listed in 122(b)(2) to be ignored. I had thought this point had been posted on this thread, but could not quickly locate it to give proper credit.

    You continue in your broad assertions that “Notably, the patent office does not cite provisional applications under any legal theory.” Which is simply not true. The “any” is simply too broad and unsustainable. Hyperbole is notably ineffective if you have not conquered the basics. You have not.

    You then introduce a strawman of Paul Morgan’s point on CIPS’s “The Office simply cannot cite a CIP and state that the effective date of its whole contents is its earliest priority date” which was not only NOT germane to OUR back and forth, but actually supports my view (as expressed in a separate discussion with NWPA), in that “ONLY to the extent it is fully supported…” means that provisionals MUST be analyzed on a case by case basis thereby preventing any bright-line rule. – But that’s a separate line of thought in this thread.

    You ignore the criticality that I introduced in my answer, distinguishing §102(e)(1) and §102(e)(2) by stating “Among the statutory requirements of §102(e) is that the patent be “granted on” the patent application.” CLEARLY, we are NOT arguing whether patents can be granted on provisional applications. And just as CLEARLY, you have ignored, yet again, the letter of the law because it does not fit into your legal theory understanding of the law, this time with §102(e). You have missed the “or”, and thus your statement is in error. You want to hearken back to a Milburn Case (which I cannot find mentioned in this thread), and expound on legal theory. You do this at the neglect of the actual law, and appears to be just another stretch and unfounded assumption – like your stretch with 112, or your ignoring 35 U.S.C. 111(b)(1).

    Good legal debate doesn’t ignore those points that damage your position. At the very least those points must be acknowledged and addressed. Ignoring the damage is like leaving a festering wound, which will kill the patient if left untreated. Respectfully disagreeing in silence to the points raised is not only rather weak, it is rather like the vocal examiners here at the Trainwreck.

    “37 cfr” – the only reason I would be wearing track shoes is to run after those running away from me. I’m glad you like their style.

  66. 182

    traveling can be so limiting – my handheld interface doesn’t like the recent changes to this site.

  67. 181

    He seems to keep avoiding the points I have already brought up – but in fairness, I have not yet read his 3:16 post yet.

  68. 178

    I hope your asking me another question isn’t your way of addressing “in some fashion”…

  69. 176

    Onthe run, so will have to come back, but I got down to
    “If the provisional application it is not published in some fashion,…”

    I hope you address the “in some fashion” which is done by PAIR…

  70. 175

    NAL, I asked whether a provisional application is citable under §102(e). You responded, yes. You explained your reasoning as follows: when a non-provisional patent application claiming section 119 priority to a provisional is published under section 122(b), the provisional application is published under that section because it is accessible through public PAIR.

    I respectfully disagreed with this position because the contents of the provisional application are not actually published “under” section 122(b) even if they are published in fact. There is a difference. The provisional application may be a reference under section 102(a) or (b), but it is not a publication under section 122(b).

    Notably, the patent office does not cite provisional applications under any legal theory. This demonstrates a central weakness in the current argument of the Office to the Federal Circuit. If the provisional application it is not published in some fashion, it cannot be citable under §102(e). This is why the Office cites the publication number of published applications, or the patent number of issued patents. A provisional application has neither of these and cannot be cited.

    I refer back to Paul Morgan’s point about the CIP’s. A CIP is a mixture of previous matter and new matter. The Office simply cannot cite a CIP and state that the effective date of its whole contents is its earliest priority date. That is complete and utter nonsense. I would hope you would agree with this at least. The CIP is a reference with respect to subject matter disclosed in earlier patent applications ONLY to the extent it is fully supported under section 112, paragraph 1, and to the extent that a proper benefit claim was made under section 120 that includes all the requirements of section 120 including “co-pendency.” It should be the burden of the office to demonstrate full compliance with section 120 and section 112, P1 before the burden shifts to the applicant.

    Among the statutory requirements of §102(e) is that the patent be “granted on” the patent application. Clearly, patents cannot be granted on provisional applications. The question then becomes, can a patent be deemed to have been granted on a provisional application when a section 119 priority claim is made to that application. I think not, primarily because there is no co-pendency requirement. Again hearkening back to the Alexander Millburn case, the legal theory behind §102(e) is that a patent could have issued on the application but for patent office delays. Since there is no co-pendency requirement in a section 119 priority claim, a section 119 priority claim cannot be legally equivalent to a section 120 priority claim.

    The same consideration apply to published applications that rely on Section 119 priority claims to provisional applications.

    There seems no basis therefore to make a provisional application prior art as it is filing date under §102(e).

  71. 173

    NWPA: “So, I think this whole non provisional vs. provisional has many aspects to it that probably weren’t well thought out by the writers of the statute.”

    Ding ding ding ding!

    And so the CAFC will do the reasonable thing, which is exactly what the BPAI did.

    Anyone disagree? I didn’t think so.

  72. 172

    So, I think this whole non provisional vs. provisional has many aspects to it that probably weren’t well thought out by the writers of the statute.

  73. 171

    NWPA, just in case others do not follow the link, there are three requirements for a parent application to be accorded the status of a “constructive reduction to practice” under 102(g):

    1) the subject matter must be claimed;
    2) the subject matter must meet the requirements of section 112 paragraph 1; and
    3) all the requirements of section 120 must be satisfied: this would include of course that a claim for section 120 benefit be properly made, and that the claim be made before the abandonment of the parent, i.e., the two applications must be legally co-pending the United States patent and trademark office.

    Obviously, a claim for priority under section 119 does not meet these requirements for at least two reasons: first, the benefit claim is not made under section 120; and, second, a section 119 benefit claimed does not require co-pendency. In fact, for Paris Convention reasons, provisional applications are often abandoned well prior to their first anniversary.

  74. 169

    Ned,

    You are straying off topic, wandering in (g) land – come back to basics. Answer my points.

    You “briefly” post of 11:19 was too brief – you didn’t make any point.

  75. 168

    The more I think about it, the more I understand Newman’s and the CCPA’s position that patents are not automatically Section 102(g) references. They are with respect to claimed subject matter only.

    Provisionals have no claims.

  76. 167

    NAL, briefly

    1) to be a 102(e) reference, the application must be published under 122(b) or it must be a patent granted on a patent application, both filed (or deemed filed) in the United States;

    2) the effective date of the published material can extend back to earlier applications under Section 120 or 121; but, under (e)(1), only those patent applications actually published or publishable b/c there was no non publication request filed or which could have issued as patents on filing but for Office delays;

    The effective disclosure today of a provisional application on publication (through PAIR) perhaps makes them a reference on the date of publication under Section 102(a) or (b).

  77. 165

    “I think that the rule is…”

    Why do you think this way? This would defeat the potential advantage of the year filing for the provisional. It seems that you are trying to make a brightline, cover-everything rule, and as we have seen, such brightline rules often fail.

    I would be interested if you remember the source of this thought, or if other esteemed readers of the Trainwreck could help you out.

  78. 164

    Assume both the provisional and the non provisional comply with 112 and all the other statutes and that the non provisional claims priority to the provisional and that the non provisional matures into a patent.

    I think that the rule is that there is a constructive reduction to practice at the time of the filing of the non provisional, but not at the time of the provisional. Even if the two applications are exactly the same.

    So, there is a bonus of a constructive reduction to practice with filing a non provisional, but not a provisional. I think that is the rule.

    But, I can’t remember where I got that from.

  79. 163

    NWPA,

    You cannot make assumptions about a provisional meeting requirements such as 112. Provisionals, in and of themselves, are not examined. Thus, it is only when the need arises to verify later through priority that such an examination would take place (leaving out for now the conversion path).

    I realize that if Malcolm suggests something, the immediate response is a gag reflex, but I do not believe that the constructive reduction assumption reaches applications not subject to examination, but does reach when examination is required.

    You are correct in a sense – provisionals, in and of themselves, do not likely get that bonus. It is in the special cases, either through conversion or through claimed priority that the constructive reduction can be evaluated. Thus, there is no blanket rule of “all provisionals” or “no provisionals”.

  80. 162

    >>NWPA, to answer your question, Malcolm agrees >>with me. It really does depend on the >>particular application.

    I don’t have the time to look this up right now, but I think this is not the answer. I am pretty sure that a non provisional is a constructive reduction to practice whereas a provisional does not count as a constructive reduction to practice.

    And, 102(g)(2) requires a reduction to practice either constructive or actual.

    MM’s argument that the contents of the application will tell you whether or not it is a constructive reduction to practice are not on point. If we assume that the provisional and non provisional both meet all the requirements such as 112, then a non provisional is a constructive reduction to practice. That means you don’t actually have to build it. It is a bonus for disclosing. I don’t think you get that bonus for provisionals whether or not they would meet 112 or not.

    MM: you work in the patent office and are not an attorney and are not a regular examiner. So, what are you?

  81. 161

    Ned, I had thought that the reference above, to the Edwards case, was seriously off-topic but I’m glad you read it and noticed that what the US calls its “written description” requirement Europe regards as a prohibition on adding “matter” to a pending app. A rose by any other name, as Willie Wobbledagger might have said. Sometimes concepts in patent law really are universal, and not controversial. It is just that communication between different languages is so difficult. We should talk more often.

  82. 160

    Ned,

    I am not hung up on Muncie Gear and the statute – they are not the foundation of any of my premises and I do not have to establish any assumptions made with them.

    You call me out and call me to get back to basics, but you don’t answer my reply and meekly state “I remain unconvinced”. Shouldn’t getting back to basics include answering the questions put to you? Perhaps if you answered the questions, you may open your eyes to be convinced.

    I see you quote the statutory requirement for 35 U.S.C. 102 (e)(2), which was not part of my answer above. If you would like, I can analyze that for you. You then make a conclusionary statement following the (e)(2) remark – did you forget the (e)(1) part of that rule is connected with an “or”? You are quick to dismiss the actual words of the statute (I assume you are dismissing them, since you did not answer my point concerning 35 U.S.C. 111 (b)(1)).

    As to your comment about (g), your stretching may not be as harsh as in other areas. In (e)the statutory requirement says “described” and not “claimed”, while (g) just says “invention”. Of course, if you are mixing up your arguments between the sections, you can be more easily confused – that can happen when you stretch too thin and then convolute yourself – you end up in knots.

    Your reasoning seems stretched and built on a base of assumptions you cannot establish. Like you, I remain unconvinced on your position.

  83. 159

    NAL, let’s not get hung up with Muncie Gear and the statute. However, after reading the EDWARDS LIFESCIENCES AG case from the post at the top of this page, I was stuck just how much our “lack of written description of the invention” was like the English “added matter.” If an amendment claims subject matter not clearly described, it is deemed “added matter” even though is it not amended into the specification.

    It looks like Europe and the US are not so different on these issues after all.

  84. 158

    Heirarchy said, “It’s false that a provisional should be considered published if an app claims priority to it. I have personally dealt with published applications where the related provisional was not available to the public via PAIR or any other source. Until there is a formal rule addressing publication of provisional applications, neither the BAPI nor the CAFC should conclude that claimed-to provisionals are published. In Yamaguchi, the Board gave no proof to support their claim that provisional applications of published apps are always available via public PAIR. Probably their decision was based on anectdotal evidence.”

    My experience as well. I believe the rule was changed in 2003 to allow access to provisionals consistent with the Office’s view that they could be Section 102(e) prior art. But before that date, they were not publicly accessible AFAIK.

    The whole point of provisionals in the first place was to allow claims of priority. But, often, priority has to be proved by the claimant, the applicant, it is not assumed.

    But there is a difference between prior art and priority. The difference has long been maintained in US law. So it should not be assumed that a provisional application can be prior art just because one can claim priority to it.

  85. 157

    Paul Morgan, what do you think if Newman’s opinion that patents (and applications) are not Section 102(g) prior art unless the subject matter is claimed. See my note of 2:55 for more.

    This is the Patent Office’s current position as well. They developed it when I contended in a petition that a patent was Section 102(g) prior art as of its provisional filing date. They resisted, of course, relying on Newman’s opinions.

  86. 156

    NAL said: “At that point, the provisional IS published, even given the 35 U.S.C. 122(b)(2)(A)(iii) proviso, as well as the 35 U.S.C. 122(b)(2)(A)(i) proviso, and is thus accessible (the seeming violation of these provisos is a topic for a separate conversation)….”

    I remain unconvinced. PA’s are not published under section 122(b) even if the act of publication of a citing document makes them publicly available under Patent Office Rules. But the rules change and have changed.

    Second, patents are not granted (and can never be granted) on applications for provisional applications. “Granted on” is statutory requirement for (e)(2). Case closed.

    There is no basis under 102(e) for citing provisional applications as prior art.

    There is a basis under Section 102(g), the argument I made long ago, but which was rejected by the Commissioner citing Newman’s opinion in, for example, In re Zeltz, link to cases.justia.com
    where she said,

    “Rule 131 provides an ex parte mechanism whereby a patent applicant may antedate subject matter in a reference, even if the reference describes the same invention that is claimed by the applicant, provided that the same invention is not claimed in the reference when the reference is a United States patent. As explained in In re McKellin, 529 F.2d 1324, 1329, 188 USPQ 428, 434 (CCPA 1976), the disclosure in a reference United States patent does not fall under 35 U.S.C. Sec. 102(g) but under 35 U.S.C. Sec. 102(e), and thus can be antedated in accordance with Rule 131. But when the subject matter sought to be antedated is claimed in the reference patent, Rule 131 is not available and an interference must be had to determine priority. In re Eickmeyer, 602 F.2d 974, 979, 202 USPQ 655, 660 (CCPA 1979); In re Clark, 457 F.2d 1004, 1007, 59 CCPA 924, 173 USPQ 359, 361 (1972).”

    What this implies to me, and consistent with the Office’s interpretation, is that the subject matter in a patent or application becomes Section 102(g) art when it is claimed.

    However, I am not so sure this is at all consistent with prevailing Supreme Court authority.

  87. 155

    Ah Pook, I think most commenters are aware of the MPEP, as it is the position being asserted by the BPAI in the posted case.

    I think there is a lot of confusion here between how priority dates of applications are determined versus how prior art dates of references are determined. On the one hand, 119 and 120 accord the priority date or effective filing date for an application; i.e. the shield date in In re Hilmer. On the other hand, 102 accords the effective-as-prior-art date for a reference; i.e. the sword date in In re Hilmer.

    EG’s analysis above is spot on. Another commenter mentioned the purpose of provisionals, i.e. putting U.S. filers and Paris Convention filers on an even playing field. That also is spot on. Any arguments to the contrary seem a strained reading of 119, confuse the distinction of priority and prior art, or overlook the reason provisionals were created in the first place.

    The Federal Circuit will reverse the BPAI on this one, and the MPEP will be revised shortly hereafter.

  88. 154

    Ned Heller Wrote: “The circuit courts have split on what Muncie Gear meant. The CCPA and the Fed. Cir. believe it to be a case that holds that if you add new matter and then claim it, your claims are invalid. However, the Supreme Court did not say this about claims 11 and 13. They were held invalid for a different reason: there was no description in the specification as filed that the anti-cavitation plate was an invention — even though it was fully described and enabled. Now, with the above in mind, do you understand what a written description requirement is that is different from an enablement requirement?”

    Not yet, but I will once I read the cases you cited and follow the thread and current case for a while. I can tell that looking at it from a non attorney perspective it really seems like all that is needed is a requirement for an enabling written description instead of two separate laws/requirements for written description and a description of how to make and use. Thank you for your help.

  89. 153

    It’s false that a provisional should be considered published if an app claims priority to it. I have personally dealt with published applications where the related provisional was not available to the public via PAIR or any other source. Until there is a formal rule addressing publication of provisional applications, neither the BAPI nor the CAFC should conclude that claimed-to provisionals are published. In Yamaguchi, the Board gave no proof to support their claim that provisional applications of published apps are always available via public PAIR. Probably their decision was based on anectdotal evidence.

  90. 152

    Arguments based on Foreign priority parent applications, including In re Hilmer I or II, all of which are governed by the express 102(e) “filed in the United States” requirement, cannot have any relevance to this case in which the priority parent application WAS filed in the United States (even by analogy).
    Since the reference here is an issued patent it was never “abandoned, surpressed or concealed” and hence is available as a 102(g)/103 reference from its original, provisional, filing date. 102(g) was expressly divided in 1999 to conform to the case law that, like most other 102 subsections, a 102(g) reference can be used for prior art rejections, even in a 103 obviousness combination. There is no requirement for claiming the same invention, nor any prior publication requirement. E.g., Hybritech Inc. v Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986); and especially, Mahurkar v. C. R. Bard, Inc., 79 F3d 1572, 38 USPQ2d 1288, (Fed. Cir. 1996); New Idea Farm Equipment Corp. v. Sperry Corp., 916 F.2d 1561, 16 USPQ2d 1424 (Fed. Cir. 1990); , and Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).

  91. 151

    Troll: “which may explain the verbal attack on N”

    I was just crabby because I hadn’t eaten lunch.

  92. 150

    Jame,

    So nice of you to field a question for me, and insult NWPA with names you usually have thrown at you.

    Even better, in black and white, Malcolm proclaims that he is not an Examiner. Let that put the rumors to bed. Malcolm works in the intake department of the USPTO after being downgraded from examiner status.

    Or perhaps he is an SPE – Just_an_Examiner blog indicates that the SPE’s won’t be getting a 2009 bonus, which may explain the verbal attack on NWPA (or it could just be Mooney being Mooney).

    NWPA, to answer your question, Malcolm agrees with me. It really does depend on the particular application.

  93. 149

    “I’m not an Examiner”

    The favorite retort of every employee of the PTO that has managed to escape the production treadmill.

    FYI, everybody who works at the PTO, including you Mooney, is an examiner.

  94. 148

    >>NWPA, I’m not an Examiner. But you are an >>idi0t and a sleazebag.

    Touched a nerve, eh? OK. I’ll believe you. Then I’ll guess a SPE?

  95. 147

    NWPA: “is filing a provisional application a constructive reduction to practice?”

    Silly question. It depends on what’s in the provisional and what the alleged invention is.

    But certainly the filing of a provisional may be a constructive reduction to practice of an invention. Even the troll won’t dispute that.

  96. 146

    “MM, I am on the other side. I make you examiners follow the MPEP when it will help me”

    NWPA, I’m not an Examiner. But you are an idi0t and a sleazebag.

  97. 145

    “What would be really funny in my opinion would be if the CAFC just threw this case out. Or confirmed with BPAI with no explanation.”

    This is why you are an examiner. ;-)

  98. 144

    >>””MM, I am on the other side. I make you >>examiners follow the MPEP when it will help me”
    6 wrote: >>In other words, never.”

    Don’t be a pest, 6.

  99. 143

    NAL: what is your opinion: is filing a provisional application a constructive reduction to practice?

  100. 142

    Ned,

    Before we get carried away, am I to assume that you are asking what I think of 35 U.S.C. 102 (e)(1)?

    If so, the answer to the citable question is yes. There are of course caveats, not the least of which is 35 U.S.C. 122(a) dealing with confidential status and the “published under 122(b)” phrase.

    This creates all kinds of interesting wrinkles. I would also refer you to 35 U.S.C. 122(b)(2)(A)(iii) which directly impacts the “published under” phrase for provisionals. Further, you may consider that Office policy (this has happened to me many times) is to publish a non-provisional application that claims priority to a twelve month earlier filed provisional application at the six month mark. Compare to 35 U.S.C. 122(b)(1)(A).

    At that point, the provisional IS published, even given the 35 U.S.C. 122(b)(2)(A)(iii) proviso, as well as the 35 U.S.C. 122(b)(2)(A)(i) proviso, and is thus accessible (the seeming violation of these provisos is a topic for a separate conversation). Of course, as you understand, a provisional application converted to a non-provisional application falls under the general publication rules (the file date is maintained btw).

  101. 141

    Jules: “As 1701 applies to issued patent presumed valid, I’m also open to any examiner insights into aspects of this case.”

    Who wants to patent what?!

    “1. A method comprising:
    populating a cache with a resource only when at least i requests
    for said resource have been received;
    wherein i is an integer and is at least occasionally greater than
    one.”

    Allow me to put on my software engineer’s hat.

    #define INFINITY (2^16 – 1)
    for i = 1 to INFINITY {
    printf(“LOL\n”);
    }

    or search:
    frequent$2 near3 request$3 with (cache or (local adj3 (memory or ram)))

    then narrow results with priority date, e.g., @rlad<20000101

    there should be hundreds of potential prior arts

  102. 140

    “”MM, I am on the other side. I make you examiners follow the MPEP when it will help me”

    In other words, never.”

    I have to say that if this ever occured that app would not issue for ~19.99 years or not before I quit whichever is shorter. Simply because it would be obvious to everyone that that app was not entitled to a patent.

  103. 139

    SteveW – you are correct that whether you claim priority (a) has no effect on what is known, but (b) has a significant effect on both your rights and the rights of others.

    For example, assume that you file non-provisional A at time T1, and then file a non-provisional B (same spec but different claims) at time T2 while T1 is still pending.

    If B claims priority to A, you (1) disqualify some prior art that could otherwise be used against B, (2) make B qualify as prior art under 102(e) against more cases, and (3) reduce the patent term of B.

    Whether it is good to allow procedural choices to have such legal significance is debatable, but that’s how things are.

  104. 138

    >>”[A] prior art reference that discloses a >>range encompassing a somewhat narrower claimed >>range is sufficient to establish a prima facie >>case of obviousness.” In re Peterson, 315 F.3d >>1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. >>2003).”

    MM, I am on the other side. I make you examiners follow the MPEP when it will help me, not when it will render my patent application obvious.

  105. 137

    “A provisional application can never become a patent, as it expires in one year.”

    I don’t think this is accurate. A provisional expires only if it is not converted within a year. That’s not much different than saying a non-provisional expires if you don’t file missing parts within the designated time period. The fact that an applicant has to take some affirmative step to keep it alive does not negate the fact that it is an application.

  106. 136

    Ned, you continue with the assumptions. “The 52 act was intended to codify or overturn….” Show me where this is stated and where this statement is meant to be inclusive of EVERY case prior to the 52 act. Show me where your assumptions have grounding. You left out a third viable option – the act doesn’t address Muncie Gear.

    Does “back to basics” include grounding your assumptions?

    You then continue as if your assumption is accepted. The assumption is not accepted. I am not talking about later split authorities – you don’t get there yet without establishing the first point, which you haven’t.

    HUGE difference between the explicitness of invention and make and use and the point you are trying to make. Don’t ask me to make a different point when you haven’t yet made your point. I would expect such a non-sequitur from the likes of 6 or Malcolm, not from you. Stick to the one point at hand okay?

  107. 134

    What would be really funny in my opinion would be if the CAFC just threw this case out. Or confirmed with BPAI with no explanation.

  108. 133

    “I have a question for the computer geniuses who lurk here. Did methods for “populating a cache with a resource after one request” exist prior to this alleged invention?”

    I didn’t do a search for some art to point you to, but, almost definitely, from what I remember in school. Pulling something into a cache is generally caused by one of two things, prior knowledge that something will be needed (i.e., if B is always/usually needed after A, then needing A means you probably need B soon), or because a cache miss occured (A was requested, but not in the cache, time to go find it).

  109. 132

    NAL, lets go back to basics: the ’52 Act was intended to codify Supreme Court case law, or overturn it where noted. Muncie Gear was either codified or overturned. Which was it?

    As I noted, there is a split in authority about Muncie Gear. The CCPA views Muncie Gears as a new matter case. Other circuits viewed it as a “late claim” case. But, the way the Fed. Cir. is developing “written description,” they are coming out exactly where Muncie Gear was on claims 11 and 13.

    Now you go figure. One does not have to have an explicit statement from Frederico or Rich as to why they separated “invention” from “make and use” with a comma when drafting Section 112, p. 1. But they are separate requirements. Why are they separate?

  110. 131

    NAL, if a provisional is eligible under Section 102(e) because it is an “application for patent,” then it should be citable in a Section 102(e) based rejection.

    What’s your position on this?

  111. 130

    NWPA “You can force the PTO to follow the MPEP. If an examiner is not, call the SPE, then call the tech supervisor. I have always been able to force the examiner to follow the MPEP.”

    Like this part of the MPEP?

    2144.05 Obviousness of Ranges

    “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).”

  112. 129

    “1. A method comprising:
    populating a cache with a resource only when at least i requests for said resource have been received; wherein i is an integer and is at least occasionally greater than
    one.”

    I have a question for the computer geniuses who lurk here. Did methods for “populating a cache with a resource after one request” exist prior to this alleged invention?

  113. 128

    Thank you Late. Are you saying that, as things stand today, the USPTO actually advertises the non-compliance of US patent law with the “enjoy” provisions of the Paris Convention?

    As I understand you, if Motorola relies on S119, and Nokia relies on S120, the PTO will automatically favour M, and disfavour N, whenever their respective 35 USC 102(e) dates are significant?

  114. 127

    yapex: “As examiners are not allowed to express any opinion as to the patentability or unpatentability of any claim in any US patent (MPEP 1701), any thoughts from patent pratitioners? Patent Attorney?”

    As 1701 applies to issued patent presumed valid, I’m also open to any examiner insights into aspects of this case.

  115. 126

    “The partners in the law firm that represents Broadspider Networks, Inc. — Jason Paul DeMont & Wayne S. Breyer — are shareholders in Broadspider
    Networks, Inc. and have a financial interest the patent application under appeal.”

    LOLOLOLOLOL

  116. 125

    hindsight from the future: “what is the MPEP position? the Office doesn’t even enforce it on the examiners. the MPEP is worse than a waste. it is relevant to nothing.”

    That must be why court decisions and opinions never cite to the MPEP.

    Oh, wait …

  117. 124

    FWIW, the PTO explicitly promotes the Nokia scenario posted by MaxDrei on Oct 27, 2009 at 08:53 AM:
    “Under the provisions of 35 U.S.C. § 119(e), the corresponding non-provisional application [that claims priority to an earlier filed provisional] would benefit in three ways: … (2)
    the resulting publication or patent would be treated as a reference under 35 U.S.C. § 102(e) as of the earlier provisional application filing date”. See link to uspto.gov

  118. 123

    “What’s the estimated legal co$t to the Applicant in this case?”

    Probably nothing

    From brief:
    The partners in the law firm that represents Broadspider Networks, Inc. — Jason Paul DeMont & Wayne S. Breyer — are shareholders in Broadspider
    Networks, Inc. and have a financial interest the patent application under appeal.

    I’ve also seen another case (different applicant) where DeMont/Breyer made a similar statement, so that kind of relationship seems to be a regular part of their business model.

  119. 122

    “they did attempt to enact it in some fashion.”

    – Ned, this is a baseless supposition. There is nothing in the record speaking to this. Nothing. On its face, legislative action CANNOT be assumed to be in response to all or any of the court cases preceding the legislative activity. You are making assumptions and hand-waiving the fact that you are making assumptions. That doesn’t fly.

    “I also believe it is being followed in principal…The Supremes holding” – Again, so what? The Supremes holding you speak of is ALSO pre-legislative action and has the exact same weakness as your Munci Gear baseless supposition. You are again merely over-reaching.

    I recognize the “want” to find a home in 112 paragraph 1. I recognize the sense of why you want to find it. It just isn’t there in the plain language of the Law.

    Once again: Misreading the letter of the law to place a well-meaning rule is still misreading of the law.

    “the date the applicant has done all that he can…” but that is not a filing date – no matter how you rationalize it. The stretch doesn’t reach.

    Separately, several posters seem to want to make the point that a provisional application does not merit the standing of an application for patent, presumably based on the need to convert to actually obtain a patent from the original filing dated material. However, this is a path (strained as it is) that does not need to be traveled.

    To wit, the Law in plain language addresses just what a provisional patent application is:

    35 U.S.C. 111 Application.
    (b)(1)AUTHORIZATION. — A provisional application for patent…

    To emphasize, a provisional APPLICATION FOR PATENT…

    Seems like a provisional is an application for patent to me… regardless of whether it can become a patent with conversion or not.

    The proposed argument is stillborn.

  120. 121

    Jules: “That claim is pitiful…

    What would be the purpose of a firm appealing this rejection? Do they just have a penchant for clarifying the area of 102(e)/provisional law, or do they truly believe that if they overcome that reference, they will be entitled to a patent?”

    As examiners are not allowed to express any opinion as to the patentability or unpatentability of any claim in any US patent (MPEP 1701), any thoughts from patent pratitioners? Patent Attorney?

    What’s the estimated legal co$t to the Applicant in this case?

  121. 118

    NWPA, good question on whether the PA is a constructive reduction to practice. If it is not, then I would agree we have a problem with PAs being Section 102(g) prior art.

  122. 117

    NAL, regarding the provisional conversion, when converted, there is no provisional. I believe the original filing date is the 102(e) date as well, but it could be the conversion date. We shall see. The reason I say this is that the date of conversion is the date the applicant has done all that he can to have the patent issue per the original Supreme Court case.

  123. 116

    NAL, “The crux, it appears, is whether the other path than conversion – incorporation – yields the same standing. A look-at-the-scoreboard type of argument would be to simply ask – did the file date somehow change between the two paths? However, this argument may NOT be enough to overcome the letter of the Law. Ironic – Ned, you appear to be sticking to the letter of the law in one case and deviating from it (based on principle) in the other.”

    NAL, on Muncie: since it was not overruled, they did attempt to enact it in some fashion. Rich believed they did this with Section 132. But Rich was not the only drafter.

    Regardless, Muncie Gear is still good law and is followed at least on “new matter.” I also believe it is being followed in principal by the Fed. Cir. when it recognizes that just having a written description sufficient to make and use is not enough. That is the nut of the Supremes holding regarding claims 11 and 13.

  124. 115

    “The answer is… regardless of whether the publication is a patent or ‘application publication,’ the underlying fact pattern of the 1966 case could be modified to substitute ‘application publication’ in place of ‘patent’ and the resulting legal conclusion would be exactly the same.”

    LOL

    “So yes, the MPEP does have some smart people behind it.”

    ROFLMAO

  125. 114

    6 said:

    “Ned I just read that decision and the USSC doesn’t even appear to have decided the case upon the issue of WD and instead used the on sale bar.”

    That is what happens when your claims are not fully supported in the parent. Back then, they did not have the formal continuation procedure we have today. The Supremes treated the amendment as if it were a new application because of the new matter, treated the claims as being barred as being on sale because they were not supported in the “parent.”

    The same analysis pertains today in modern CIPs.

  126. 113

    This discussion reminds me of another post I wrote a while ago…

    “‘Portions of the patent application which were canceled are not part of the patent or application publication and thus cannot be relied on in a 35 U.S.C. 102(e) rejection over the issued patent or application publication. Ex parte
    Stalego, 154 USPQ 52 (Bd. App. 1966).’

    I found this to be a very intersting quote from the MPEP. It is a clear example of a policy change based on propagation of a new law. Specifically, 102(e) did not account for “application publication” before AIPA-1999, so how can the MPEP say this policy is based on a Board decision from 1966? The answer is… regardless of whether the publication is a patent or “application publication,” the underlying fact pattern of the 1966 case could be modified to substitute “application publication” in place of “patent” and the resulting legal conclusion would be exactly the same.”

    So yes, the MPEP does have some smart people behind it. To say it’s the same as a WalMart receipt in a gutter would be ignoring reality.

  127. 112

    “That often a patent issues with a priority date based on a provisional application and yet whether or not the provisional application supports the claims of the utility patent is often never examined”

    This is already accepted as a “hole” in the presumption of validity. Where the patent office doesn’t make any analysis of support in the provisional, clear and convincing evidence is not required to show that a non-provisional doesn’t get the priority date of the provisional. However, clear and convincing evidence is still required with regard to the application of intervening references.

  128. 111

    A court can (and they often do) take judicial notice of the procedures in the MPEP and use that notice as a basis for a legal decision.

  129. 110

    “The MPEP is not the law” – is a favorite catch-phrase of attorneys that want to sound intelligent and surprising to lay people – the fact that it’s not precisely true notwithstanding. I’ve probably been guilty of saying it myself a time or two.

    The MPEP is not a statute, a court decision, or even an executive regulation, this is all true. However, it is the stated opinion of an executive body on the state of patent law especially as it relates to examination, and is therefore persuasive authority that will have some weight with a court. They will, of course, not be bound by it and may choose to ignore it. But there is an entire spectrum of stuff between a Wal-Mart receipt found in the gutter on your way to court, and an on-point SCOTUS opinion about your issue. Much of that stuff is “law” even if it’s not “the law”, whatever “the law” means.

  130. 109

    “Sure, I’m aware of that, but it’s surely relvant to the debate and some of the comments here suggest a lack of any awareness of the MPEP position.”

    It’s relevant in that it is the PTO’s interpretation of the statute. Given the PTO’s ability to interpret statutes (e.g. PTA determinations, etc.), I’m not putting much faith in the PTO’s intepretation(s).

  131. 108

    >>nose out of wack.

    Imagine ole MM being told by his SPE to follow the MPEP. He would spend days figuring out how to get revenge. (And probably spend time trying to figure out how to get revenge on powerful computer brains as well.)

  132. 107

    >>what is the MPEP position? the Office doesn’t >>even enforce it on the examiners. the MPEP is >>worse than a waste. it is relevant to nothing.

    There is an executive order that says that agencies have to follow thier policy manuals. Does anyone know what order that is?

    You can force the PTO to follow the MPEP. If an examiner is not, call the SPE, then call the tech supervisor. I have always been able to force the examiner to follow the MPEP. Although this is pretty heavy handed solution and usually gets the examiner’s nose out of wack.

  133. 106

    Ned,

    You rely too much on Muncie Gear. You are trying too hard to read into a case 10 years prior to the legislative action a motivator for that legislative action. Your statement regarding 112 may make sense to you, but simply over-reaches.

    I have posted this before and you don’t seem to have a comment: Misreading the letter of the law to place a well-meaning rule is still misreading of the law.

    Had the legislature wanted to explicitly do as you strain to suggest, they were free to do so. They did not. There is nothing in the record to suggest that your scenario is the reason 112 was written as it was.

    As to the provisional being converted, what you say there is true, but not complete, and is a bit misleading. The date of the provisional filing still stays the same, converted or not. Your statement “The application then qualifies as a patent application that will be published under the law.” implies (with the use of “then”) that some later date is in effect.

    The crux, it appears, is whether the other path than conversion – incorporation – yields the same standing. A look-at-the-scoreboard type of argument would be to simply ask – did the file date somehow change between the two paths? However, this argument may NOT be enough to overcome the letter of the Law. Ironic – Ned, you appear to be sticking to the letter of the law in one case and deviating from it (based on principle) in the other.

  134. 105

    1) a provisional application is not an application for a patent
    2) one claims benefit of a provisional application, not priority.

  135. 104

    Of course, if there is a constructive reduction to practice with the provisional filing, then the provisional could be used as a 102(g)(2) without any problems that I can see.

  136. 103

    102(g)(2): might be a problem using this as the non provisional is a constructive reduction to practice, but the provisional I think is not.

    If the provisional does not show evidence of actual reduction to practice, then there is a problem.

    You would have prior conception using the provisional date, and then a reduction to practice when the non provisional was filed. But, how do you show diligence between the time of the filing of the provisional and the non provisional?

    What do other think?

  137. 102

    “They were held invalid for a different reason: there was no description in the specification as filed that the anti-cavitation plate was an invention”

    Ned I just read that decision and the USSC doesn’t even appear to have decided the case upon the issue of WD and instead used the on sale bar.

  138. 101

    Did we cover the recent UK court case regarding US provisionals, assignments and priority here?

    I hope Maxi brought it up, but I did not see it mentioned anywhere.
    link to alpha.bailii.org

    Apparently since they did not assign the rights in the provisional application from the inventors to the Applicant, and the Applicant filed the PCT application, they had a problem that led to invalidation.

  139. 100

    what is the MPEP position? the Office doesn’t even enforce it on the examiners. the MPEP is worse than a waste. it is relevant to nothing.

  140. 99

    “The MPEP is not the law. I would hope that you are aware of that already. But I’m not so sure.”

    Sure, I’m aware of that, but it’s surely relvant to the debate and some of the comments here suggest a lack of any awareness of the MPEP position.

  141. 98

    Historical note: Prior to the 1999 amendments, effective November 29, 2000, § 102(e) was limited to patents issuing applications filed in United States and excluded patents issuing on “international applications,” but further provided that international applications would have an effective § 102(e) as of the date they entered the international stage. However the Office treated at the effective § 102(e) date of any section 111(a) patent claiming “section 120” benefit of an international application as the filing date of the international application. Thus, a national stage patent issuing on an international application had an effective §102(e) date as of its date of entry into the national stage, while a continuation of this very same “application” may have the international filing date as its effective § 102(e) date.

    I wrote a JPTOS highly critical of this “nonsense.” In response, the Office twice amended § 102(e) in order to clarify the situation and limit the § 102(e) benefit to international patent applications both filed and published in English.

    While all this was going on publicly, I had filed a petition with the commissioner asking him to recognize that a patent issuing on an international application that claimed priority to a provisional application filed in the United States or the benefit of the filing date of non-provisional application filed in United States had an effective § 102(e) date as of the filing date of the provisional or the non-provisional as the case may be. The commissioner decided that regardless of the claim of priority or benefit, that the issue was decided by 35 USC section 375. In essence, the commissioner held, a patent issuing on an international application has NO, repeat that, NO § 102(e) except its national stage date.

    It is interesting to note that in our argument we made the point that regardless of § 102(e), a patent issuing on an international application that claimed priority to an earlier-filed provisional application or the section 120 benefit of an earlier filed non-provisional application was prior art under § 102(g). The commissioner essentially “ignored” our argument by citation to a mysterious, and wrongly decided, opinion by Judge Newman, which essentially said that patents had no Section 102(g) dates.

  142. 97

    Ken, just a note: when you convert a provisional into a non provisional there is no provisional. The application then qualifies as a patent application that will be published under the law.

  143. 96

    More on Muncie Gear, the patent was owned by Johnson Motor Co., not Muncie Gear as I suggested before I reread the case just now. The amendment adding new matter was treated as a new application, a CIP in today’s world. When a claim is presented in a CIP, its effective date depends upon whether it is fully supported in the parent in term of written description, not just whether one can make and use what eventually was claimed. That is the way the Fed. Cir. now addresses the written description issue, but the Feds go further and apply the requirement to any claim presented by amendment, or in a continuation.

    I think the result in Muncie Gear would have been different had the “parent” application given any hint that the anti-cavitation plate was part of the invention and not old. The Fed. Cir. has not fully developed its jurisprudence on written description, except to say that enablement is not enough. But describing something in terms of what it is not, and not what it is, will take a long time. However, if presented with the facts akin to Muncie Gear, I suggest the Feds. will decide such a case in the same way. If they do not, they may have trouble with the Supreme Court. Check the Quanta case as an example.

  144. 94

    Actual Inventor, You might want look at the thread involving en banc Fed. Cir. case that is going to review the written description requirement — particularly the amicus briefs. I reference there the most important Supreme Court case on this point: Muncie Gear. You might read the case link to supreme.justia.com and the patent and claims under discussion. link to google.com

    What you will find is this. The patent application as filed had a specification and claims directed to a feature of an outboard motor: a deflection plate that compensated for motor torque. An anti-cavitation plate was described, but no indication was given anywhere that such was new.

    After final rejections, Muncie Gear added description to the specification directed to the housing and how the walls of the housing were smooth and unbroken and how this helped with anti-cavitation.

    New claims 11 -14 were added, all directed to the anti-cavitation plate in combination. Claims 12 and 14 included, in similar terms, that the housing had smooth and unbroken walls. That they did, the Supremes said, was not clear from the drawings as filed as no cross section was provided. Claims 11 and 13 did not have the new matter, but were arguably fully supported in the application as filed.

    The Supremes held all claims invalid, not just claims 12 and 14.

    The case was decided in 1942. In 1952, section 112 was re-written to break out the written description requirement from the description of make and use. Additionally, Section 132 was added forbidding the addition of new matter by amendment.

    The circuit courts have split on what Muncie Gear meant. The CCPA and the Fed. Cir. believe it to be a case that holds that if you add new matter and then claim it, your claims are invalid. However, the Supreme Court did not say this about claims 11 and 13. They were held invalid for a different reason: there was no description in the specification as filed that the anti-cavitation plate was an invention — even though it was fully described and enabled.

    Now, with the above in mind, do you understand what a written description requirement is that is different from an enablement requirement?

  145. 93

    This is making mountain out of a mole-hill. If you convert from a provisional to a utility then 102(e) is as of the date of the provisional. If you claim priority to a provisional then it does not. Look at the comments on the reason why provisionals exist. Q.E.D.

  146. 92

    Malcolm, if they were accessible, the rules should have provided for it. But the rule change in 2003 seems to (for the first time?) allow access to provisional application. Are you sure provisional applications were accessible in 2000?

  147. 91

    xmr-not6, the rule you quote, CFR 114 was changed in 2003 to permit access to unpublished abandoned applicatons and provisional applications. I believe the rules allowing access were different prior to that date. It would be helpful if you quote the rules circa 2000, the dates relevant here.

  148. 90

    Ned wrote:

    ” The law as it stands today is that a parent has to have

    1) a written description of the invention; and
    2) a description of how to make and use the invention.”

    Ned,

    How is a written description different from a description of how to make and use the invention?

    I have scoured The USPTO website to see if a distinction is made but could not find one. The Office web site does include the following…..

    “(5) Background of the Invention.

    (6) Brief Summary of the Invention.

    (7) Brief description of the several views of the drawing (if any).

    (8) Detailed Description of the Invention.

    (9) A claim or claims.

    (10) Abstract of the disclosure.

    (11) Sequence listing (if any).

    ______

    So would the “written description of the invention” be considered 5-7 above, and the “description of how to make and use” be in the 8 category?

  149. 89

    Ned,

    Regarding accessibility of provisional applications, any that are references in a later published document are accessible under the rules.

    37 CFR 1.14 Patent applications preserved in confidence

    (1) Records associated with patent applications (see paragraph (g) for international applications) may be available in the following situations:

    (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

    (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

  150. 88

    Ned: “Often, provisional applications lack 1), a written description. A set of drawings and plans from which one of ordinary skill could build the invention is not enough.”

    You must be an Examiner!!!!!!!

    /tinfoil troll off

  151. 87

    Ned: “Prior to being accessible through public PAIR, provisional applications were not publicly accessible. Rather they were archived.”

    They were archived and publicly accessible.

  152. 86

    Dark Night: “I’m surprised the examiner did not cite 102(b) art. I couldn’t find one in 20 minutes of searching, but I did find a reference with a 1999 non-prov 102(e) date.

    Mr. DeMont, make sure to submit this reference on an IDS.”

    The Examiner did have multiple rejections 102(e) rejections. For example, Teoman (e.g., column 15) was affirmed by the Board (4/17/2009).

    link to google.com

    Here’s another potential 102(e) reference. Edwards, filed May 1998, Fig. 3, box 60: “Has page been requested 5 times before?”; box 62, “Yes, Store page in cache”.

    link to google.com

    I wonder if the Applicant has been fully advised of the application’s patentability, or lack thereof.

  153. 85

    “Be careful what you wish for, young one. The 102(g)(2)/103 combo has vast, unrealized potential. Childish braggarts should not play near dry powder.”

    Ooohhhh!!!!! I’m so ascared!!!!!!

    BWWWWWAAAAAAAAAHHHHHHHHHAAAAAAAAAAAHHHHHHHHHHAAAAAAAAAA

  154. 84

    Actual inventor wrote:

    “broje wrote: ‘The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular. Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional.’

    Thanks, Thats a valuable point to remember.”

    AI, broje’s note is misleading and adopts a non accepted theory of Section 112, p.1. The law as it stands today is that a parent has to have

    1) a written description of the invention; and
    2) a description of how to make and use the invention.

    Often, provisional applications lack 1), a written description. A set of drawings and plans from which one of ordinary skill could build the invention is not enough.

  155. 83

    6 and yapex said:

    “6: ‘You should not be replacing your references to the pub with references to the prov. Of this I’m pretty sure. You can’t use the prov. to reject, you use the pub.’

    The non-provisional claims priority to several provisionals, at least 3 of which beat the application’s filing date. I used one of those 3 earlier provisionals in the next office action.

    Btw I mentioned the provisional application number; apparently the Applicant accessed it directly in PAIR.”

    This is EXACTLY why the Office is wrong! The contents of the non provisional and the provisional not only do NOT have to be identical, they more often than not are widely divergent. Like Paul Morgan said, this is like a CIP, where it is encombant upon the Office to cite the first of the parent applications that claims to be a pure continuation or a division of the application whose filing date is being used to reject, otherwise there is no guarantee of that the subject matter being used to reject was not introduced at a later date.

    If one cannot cite the provisional application directly for any reason, there is no basis in the statutory framework for the provisional application to be prior art at all. However, for the reasons previously stated, it is my opinion that a provisional application constitutes section 102 (g) prior art provided that it is accessible to the public. It clearly does not constitute section 102 (e) prior art because it cannot adnd is not published either as a patent application or as a issued patent. It only becomes prior art on a 102 (g) when it is identified in a published application or patent and thereby is “implicitly” published in the that one may access the provisional application through public PAIR. But public PAIR is recent. Prior to being accessible through public PAIR, provisional applications were not publicly accessible. Rather they were archived. Therefore whether they were actually published when they were identified by a published patent application or by a published patent is more than highly questionable. I would argue that the lack of public accessibility to provisional applications until they were accessible through public PAIR made them per se ineligible to be prior art even under section 102(g).

  156. 82

    broje wrote: “The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular. Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional.”

    Thanks, Thats a valuable point to remember.

  157. 81

    “In view of the gain to the public that the patent laws mean to secure, we assume for purposes of decision that it would have been no bar to Whitford’s patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone. More than that, since the decision in the case of the Cornplanter Patent, 23 Wall. 181, it is said at all events for many years, the Patent Office has made no search among abandoned patent applications, and by the words of the statute, a previous foreign invention does not invalidate a patent granted here if it has not been patented or described in a printed publication. [citations omitted] These analogies prevailed in the minds of the courts below….

    As to the analogies relied upon below, the disregard of abandoned patent applications however explained cannot be taken to establish a principle beyond the rule as actually applied. As an empirical rule, it no doubt is convenient, if not necessary, to the Patent Office, and we are not disposed to disturb it, although we infer that originally the practice of the Office was different. The policy of the statute as to foreign inventions obviously stands on its own footing, and cannot be applied to domestic affairs. The fundamental, rule we repeat, is that the patentee must be the first inventor. The qualifications in aid of a wish to encourage improvements or to avoid laborious investigations do not prevent the rule from applying here.”

    link to supreme.justia.com

  158. 80

    6: “You should not be replacing your references to the pub with references to the prov. Of this I’m pretty sure. You can’t use the prov. to reject, you use the pub.”

    The non-provisional claims priority to several provisionals, at least 3 of which beat the application’s filing date. I used one of those 3 earlier provisionals in the next office action.

    Btw I mentioned the provisional application number; apparently the Applicant accessed it directly in PAIR.

  159. 79

    db: “Examiners, once Mr. DeMont wins his appeal, feel free to make all the 102(g)(2) rejections you want. I’ll shoot ’em all down in no time.”

    Be careful what you wish for, young one. The 102(g)(2)/103 combo has vast, unrealized potential. Childish braggarts should not play near dry powder.

  160. 78

    “Re: section 102 (g), the patent office position on this is that a reference patent or application is 102 (g) prior art as of its filing date, or the date of an earlier application, only if it is “claiming” the disclosed subject matter.”

    Maybe under 102(g)(1), but that’s nonsense as far as 102(g)(2) is concerned.

  161. 77

    I agree with the appellant’s brief and with the many observations here that a section 119 (e) benefit claim, structured in terms of full section 112 support for the “invention,” refers only to priority. There is no clear intention here to make provisional applications prior art under section 102(e). The analysis of section 102 (e) must stand on its own to determine whether that statute embraces provisional applications. I believe the analysis presented by the appellant in this regard is persuasive, but particularly since 102 (e) is a codification of a Supreme Court case that deemed a patent prior art is of its filing date because the applicant had done all that he could have done to have the patent issue.

    Re: section 102 (g), the patent office position on this is that a reference patent or application is 102 (g) prior art as of its filing date, or the date of an earlier application, only if it is “claiming” the disclosed subject matter. In essence, this converts a section 102 (g) reference into a 102 (e) reference with the sole exception of provisional applications, assuming for a moment that section 102 (g) may apply to a provisional application while section 102(e) may not. In other words, a patent (or a patent application) maybe section 102 (g) as of the filing date of an earlier provisional application only to the extent that the patent is claiming that invention.

    I think this analysis of section 102(g) prior art flies in face of the case law, which only requires that the prior invention be 1) reduced to practice in the United States, 2) publicly disclosed, i.e. not abandoned, suppressed or concealed. A provisional application filed in United States is a constructive reduction to practice. If this application is not abandoned, and is disclosed, it constitutes prior art under section 102(g).

    I had all this out with the patent office several years ago. They publicly disagree with my position, but privately they did agree that I was right. I’ll explain in due course.

  162. 76

    “1. A method comprising:
    populating a cache with a resource only when at least i requests
    for said resource have been received;
    wherein i is an integer and is at least occasionally greater than
    one.”

    Mr. DeMont, is claim 1 infringed by populating a cache with a resource after 1 request for said resource, or are two requests for said resource required before infringement occurs? If the latter, can you tell us what the term “at least occasionally” means in this context, and where support for your construction of “at least occasionally” can be found in the specification?

    Thanks in advance. Obviously, this is extremely important for everyone who populates their caches with resources.

  163. 75

    102(g)(2) – (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

    Examiners, once Mr. DeMont wins his appeal, feel free to make all the 102(g)(2) rejections you want. I’ll shoot ’em all down in no time.

  164. 74

    “Why? What difference will it make?”

    Coming from you LaMonkey, – Nothing, absolutely nothing.

  165. 73

    “no one has disputed the comments that a published application claiming priority to a provisional application is a presumptive 102(g)(2)/103 reference as of the provisonal filing date.”

    I’m probably not the only one here who has never seen a 102(g)/103 rejection, but that looks right to me. 102(g) has the additional limitation that the invention of the reference be “made in this country.” Serious question: if an Italian inventor makes an invention in Switzerland, and files a provisional 6 months later, then a utility 8 months after that, and then abandons the case after the application is published, as of what date does that qualify as “made in this country”? Or is the answer never, in which case we’re back to 102(e)?

  166. 72

    I’m surprised the examiner did not cite 102(b) art. I couldn’t find one in 20 minutes of searching, but I did find a reference with a 1999 non-prov 102(e) date.

    U.S. Patent 6341304
    DATE FILED: September 23, 1999
    Column 4 line 66
    “When the count of the number of times a particular data file has been requested exceeds a predetermined value “A” 409, the file is marked as a “Frequently Requested Item” 411 which will be downloaded to local non-volatile storage.” The fact that there is a “no” branch on 409 means i>=2 is disclosed.

    Mr. DeMont, make sure to submit this reference on an IDS.

  167. 71

    “Please feel free to file an amicus brief in this case.”

    Why? What difference will it make?

  168. 70

    Some above observations seem to be getting ignored.
    First, someone has correctly observed that once a cited formal application claiming priority to a provisional is published, the provisional itself is laid open to the public. That IS a publication of the provisional application.
    Secondly, irrespective of 102(e), no one has disputed the comments that a published application claiming priority to a provisional application is a presumptive 102(g)(2)/103 reference as of the provisonal filing date. [That is, unless it can be proven that what is in the provisional does NOT constitute a 103 reference.]
    This seems to leaves the only Substantive issue to be: why is not an examiners statement that the provisional is substantially identical sufficient for a prima facie case to switch the burden of showing the contrary to the applicant?

  169. 69

    “However, if priority is claimed, then the provisional can be “published” as patenthunter and others suggest.”

    Sure, but this is beginning to look like a claim construction argument over the word “published”. A provisional application is not “published under section 122(b)”, as specified by 35 usc 102(e)(1). The file of a provisional application that is relied on for a priority claim is “made available to the public” pursuant to 37 CFR 1.14 (a)(1)(iv). I assume the statutory authority for the latter is the “unless necessary” exception in 35 USC 122(a).

    Providing access on PAIR is “making available to the public”. You can call it “publication” if you like, but it is not publication under 35 USC 122(b).

  170. 68

    To be even clearer,

    Provisionals aren’t published by 122, but that does not mean that when a utility application is published that provisional that it claims priority too cannot be published with the utillity application.

  171. 67

    don’t bother,

    Provisionals of and for themselves are not published. Left alone, they indeed die a quiet death.

    However, if priority is claimed, then the provisional can be “published” as patenthunter and others suggest.

    If a provisional is converted, then it can be published.

    Jason Paul Demont, not only are you late, but you are incorrect. The “never mature” has already been posted as well as the correction to that statement.

  172. 65

    I want to thank everyone for their comments — at least the intellectually constructive ones.

    Please feel free to file an amicus brief in this case.

    Jason Paul DeMont
    Attorney for Giacomini

  173. 64

    122(b)(2)(A)(iii) clearly states that provisionals are not published under 122.

  174. 62

    “But, EG, the provisional application is published with the utility application, because it is made available on the PTO’s website when the utility application is published.”

    Probably not. 102(e)(1) requires an application for patent, published under section 122(b).

    122(b)(2)(A)(iii) clearly states that provisional applications are not published.

    I hope Mr. DeMont’s appeal is successful.

  175. 61

    “I would hope that you guys all are aware of this already but from some of the comments I’m not so sure:

    link to uspto.gov
    “III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
    The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under 35 U.S.C. 102(e).”

    The MPEP is not the law. I would hope that you are aware of that already. But I’m not so sure.

  176. 60

    Mr. Morgan:

    “The situation as to an application or patent claiming priority from a provisonal is essentially the same as for claiming priority from a CIP.”

    But the word “essentially” is the rub. You might have a good policy argument for changing the statute, but the law is pretty clear that a 119(e) priority claim shifts ONLY the priority date of the applications claims back to the provisional — it doesn’t also shift the effective reference date back to the provisional. If it did, you’d be giving an effective reference date to a document that is before the document ever came into existence!

    A provisional is authorized until 111(b) and can never mature into a patent or publication. A CIP is authorized under 111(a) and can mature into a patent and publication.

    A priority claim to a provisional under 119(e) is analogous to a priority claim is authorized under 119(a)-(d). A priority claim in a CIP to an earlier 111(a) application is authorized under 120.

  177. 59

    Not quite, AI. The regular patent application claiming priority from the provisional is like a CIP claiming opriority from a regular.

    Claims in the patent get the priority date of the provisional if they are enabled by the provisional. The regular application can have additional disclosure. But claims enabled only by that additional disclosure do not get the benefit of the provisional.

    As always, IANYL, TINLA, and SPORK.

  178. 57

    AI: “It is my understanding that whatever you include in the regular patent application must also be included in the provisional application in order to get the benefit of the provisional filing date. But I had always wondered how practical it is to expect the examiner to take the time to read both applications in detail. From what I read here examiners barely have enough time to read the regular app and claims.”

    Have you heard about this amazing software that lets you compare documents? It’s like putting two documents side by side and making notes on one of them where there has been a change, except it’s all done by a powerful computer brain.

  179. 56

    Actual, good question. In the EPO, Examiners routinely have to assess whether:

    1. Applicant is entitled to a priority date and

    2. Whether the priority date in the reference is good against the claim

    but, you know what, that demanding exercise is never done (not at all, simply not in the tiniest fraction) unless it’s needed. That’s when the respective dates are “interlaced”. It happens in maybe less than 5% of cases. When it does though (usually in inter partes post-issue opposition proceedings) the job is done thoroughly. As it has to be, in any First to File country.

  180. 55

    It is my understanding that whatever you include in the regular patent application must also be included in the provisional application in order to get the benefit of the provisional filing date. But I had always wondered how practical it is to expect the examiner to take the time to read both applications in detail. From what I read here examiners barely have enough time to read the regular app and claims.

  181. 54

    “why not just require PTO to cite to the provisional and ignore the publication?”

    Because 102e does not speak to prov’s so far as I’m aware.

    “Next, I called the SPE and he actually yelled at me on the phone.”

    That’s lol worthy in and of itself. You got a spe that worked up? Most spes I know are pretty hard to get that worked up.

  182. 53

    I guess looking up 119(e)(1) is now considered “novel” in academic circles…

    It seems to me that 119 determines the effective filing date of a reference whether it is claiming the benefit of priority or whether it is being used as a reference against an application under 102(e)(1).

    The key language from 119(e)(1) is: “An application for an invention . . . shall have the same effect, as to such invention, as though filed on the date of the provisional application”

  183. 51

    I would hope that you guys all are aware of this already but from some of the comments I’m not so sure:

    link to uspto.gov
    “III. PRIORITY FROM PROVISIONAL APPLICATION UNDER 35 U.S.C. 119(e)
    The 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C. 112, first paragraph. See MPEP § 706.02(f)(1), examples 5 to 9. Note that international applications which (1) were filed prior to November 29, 2000, or (2) did not designate the U.S., or (3) were not published in English under PCT Article 21(2) by WIPO, may not be used to reach back (bridge) to an earlier filing date through a priority or benefit claim for prior art purposes under 35 U.S.C. 102(e).”

  184. 50

    “What would be the purpose of a firm appealing this rejection? Do they just have a penchant for clarifying the area of 102(e)/provisional law, or do they truly believe that if they overcome that reference, they will be entitled to a patent?”

    Those aren’t the only explanations.

    Maybe the applicant had been made aware of this reference at the time the application was being prepared and told the client, “Oh, that won’t be an issue.” And now it’s being fixed just to make a point that the prosecutor stands behind his word.

    Or perhaps it’s just to put on a good show for the investors. You know, sort of like how certain commenters here are always convinced that the PTO is this evil force trying to deny their clients their God-given rights to a patent. Sometimes investors and their representatives become addicted to the idea of owning a broad patent. The amount of money spent on the appeal, even if issuance of the claims is an absurd longshot, is peanuts compared to the rich creamy pie in the sky whose crust can almost be smelt by the CEO and his fellow confidence men. Don’t forget: a pending claim on appeal is worth more than a dead claim, as long as you have some patent-ignorant suckers with loose wallets riding the same train.

  185. 49

    2. The method of claim 1, wherein occasionally responding includes employing a computer processor interfaced with a communications system.

  186. 48

    I claim:

    1. A method for dealing with MM, the method comprising:

    predominately ignoring MM; and

    occasionally responding to MM in a tit for tat fashion.

  187. 47

    “Yes. In software arts it’s a common claiming issue to deal with; how to claim something that can be handled in two ways,”

    It’s called an “algorithm.”

  188. 46

    “The provision makes clear that a patent claiming priority to an international application will be given the international application filing date if that application “designated the United states and was published . .. in the English Language.””

    The treatment of international (PCT) applications is not a true parallel with provisional applications. Note that PCT applications themselves can (and often do) claim foreign priority from an earlier application. (Indeed, PCT applications are allowed to claim priority from US provisional applications.) It is that priority claim, if any, in the PCT application that is treated as the 119 equivalent of a provisional application, while the PCT application designating the US itself is treated (assuming the US national stage is pursued) as a US application from the international filing date – the PCT filing date, not the claimed priority date, is the 102(e) date.

    I suspect, the courts will need to consult the legislative history of the provisional application statutes to help resolve this issue. I think they will find that provisional application priority claims are to treated the same as all other foreign priority claims under 35 USC 119 – which are not given 102(e) treatment.

  189. 45

    I forgot to mention in my 12:21 post that the actual filing date of the patent being applied was after our foreign priority date, which was after the provisional filing date.

  190. 44

    >>MM: “In the grown-up art units”. Could this >>guy drop his pretentiousness if he even cared >>to? What an ***.

    He is an examiner in the biotech arts. He believes that the other arts have ruined the PTO.

  191. 43

    6: “‘Not according to BPAI. The burden is on the applicant.’
    I don’t know if I’d go so far as to say that.
    However, if someone brings up that they believe I didn’t “establish” it then in the next action I state specifically that I establish it. And then I rofl some lols.”

    Once, years ago I argued no support in a provisional for a claimed feature. The provisional did not include support for that claimed feature, which was added in the non-provisional of the patent being applied against our claim. While I heard no lols, I called the examiner after he repeatedly ignored our argument. Next, I called the SPE and he actually yelled at me on the phone.

    The client was a foreign entity and decided to drop the application. I believe they abandoned because they generally avoid appeal and figured we were incorrect in this approach.

    lols indeed

  192. 42

    That claim is pitiful…

    What would be the purpose of a firm appealing this rejection? Do they just have a penchant for clarifying the area of 102(e)/provisional law, or do they truly believe that if they overcome that reference, they will be entitled to a patent?

  193. 41

    Does the prior art have zero capability to rise to a value >1? If so, then a claim that recites such a capability (even if that capability manifests itself only occasionally) endows the claimed subject matter with novelty, no?

  194. 40

    MM: “In the grown-up art units”. Could this guy drop his pretentiousness if he even cared to? What an ***.

  195. 39

    Paul F. Morgan said: “Does anyone else find this claim “limitation” of “at least occasionally greater than one” interesting? [Would not that also read on “one”, which I gather even from the brief is the prior art?]”

    Yes. In software arts it’s a common claiming issue to deal with; how to claim something that can be handled in two ways, sometimes in an old way, and sometimes in a new way. My approach is usually to just claim the new way and ignore the old way. All the infringer has to do is practice the new part one time, even if most of the time they do it the old way.

    That said, what I don’t like about “ocassionally” is that I think it could be indefinite, or at the least, limiting in an unecessary way. Why not just say “sometimes”? It leaves out any connotation of infrequency (though “sometimes” does suggest more than once). Better yet, just leave out that clause altogether. The claim is _open ended_. If the method is implemented on a device that sometimes caches after one request and sometimes caches based on two or more requests, such server would still infringe. It might be basic patent law, but software can be tricky to claim _sometimes_.

  196. 38

    Regarding the claims, Mr. Morgan makes several good points at 11:03.

    What a total waste of everyone’s time.

  197. 37

    DC: “The novel question here on appeal is how to interpreted the statute’s silence regarding provisional applications.”

    Well, for the sake of reason, I hope that Giacomini loses big time.

  198. 36

    NWPA: “Actually, you know, I have been a bit suprized that those who question of the prsumption of validity haven’t picked up on this point. That often a patent issues with a priority date based on a provisional application and yet whether or not the provisional application supports the claims of the utility patent is often never examined.”

    Depends on the art unit. In the grown-up art units, we’re accustomed to Examiners reviewing the priority applications and making arguments based on what is or is not disclosed therein. It doesn’t happen all the time, but it happens often enough that one does not expect the shortcomings of a spineless provisional to go unnoticed during prosecution.

  199. 35

    JohnDarling: I think that the Yamaguchi panel skirted the issue of burden of proof (or at least what it requires) by holding that any failure by examiner to meet such duty in Yamaguchi was harmless error because, after doing its own fact finding, the panel found that the provisional did in fact support the reference patent publication. See Table 1 of Yamaguchi and accompanying text. Note also “we hold that Appellants have not shown _harmful_ error in the rejections on appeal”.

    The Examiner held that the provisional was the same as the publication. Burden shifted to applicant to show error, but they didn’t show error, there was no error, and if there was error, it was harmless.

    The burden-of-proof in this provisional-date scenario is grounded in the basic rule that PTO must establish prima facie case. Yamaguchi didn’t touch on that. See non-precendential Appeal 2007-2225 for insight, notably

    “The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

    The Examiner has not provided copies in this appeal of the two provisional applications in controversy, much less shown where any kind of § 112 support may be found in the provisional applications for the subject matter of the published application upon which the rejection relies. In accordance with the Examiner’s theory that some or all of the [reference] published application may be applied against the instant claims, the rejection should show, to establish a prima facie case for unpatentability, where § 112 support resides in the earlier provisional applications for each instance of specific subject matter relied upon in the published application, including an explanation why the provisionals would still be recognized by the artisan as providing support if not “word for word” the same as the later text or drawings. Mere reference to the text or drawings of [the reference publication]is not sufficient.”

    At first glance, it could seem that Yamaguchi alleviated PTO of having to show provisional supports the reference publication, but what it really held was that (i) when the provisional does clearly support the publication (ii) the PTO doesn’t have to detail such support so long as(iii) the PTO makes some finding of fact with regard to the provisional (e.g., “provisional is nearly identical to publication”).

    Aside from all that, Kudo’s to Giacomini’s counsel for writing a lively and logically sound brief. I also like Giocomini’s argument that if the provisional is being relied on, why not just require PTO to cite to the provisional and ignore the publication?

  200. 34

    “[Does anyone else find this claim “limitation” of “at least occasionally greater than
    one” interesting? [Would not that also read on “one”, which I gather even from the brief is the prior art?]”

    111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111
    11111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111
    222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222222

  201. 33

    “Very rare–only one time did I ever have to use the provisional in the office action.”

    You should not be replacing your references to the pub with references to the prov. Of this I’m pretty sure. You can’t use the prov. to reject, you use the pub.

  202. 32

    Broje, the original, and the biggest major purpose to the prov. (imo) was to allow people to establish a FD without “any” adverse consequences.

  203. 31

    “Not according to BPAI. The burden is on the applicant.”

    I don’t know if I’d go so far as to say that.

    However, if someone brings up that they believe I didn’t “establish” it then in the next action I state specifically that I establish it. And then I rofl some lols.

  204. 30

    “Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application.”

    Not according to BPAI. The burden is on the applicant.

  205. 29

    I haven’t checked the specific provisions, but it seems to me that 35 USC 154 might draw the lines very clearly. If the court decided that provisionals toll 102(e), would that be the only section of 119 that would toll 102(e)? Would it be the only category of priority claim under 154 that would toll 102(e) without tolling term?

    35 USC 154 says:

    (2) TERM.-Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed.

    (3) PRIORITY.-Priority under section 119, 365(a), or 365(b) of this title shall not be taken into account in determining the term of a patent.

  206. 28

    Night Writer: “When I have challenged examiners on this issue, I have never had a problem with the examiner saying, ok, well then I will show you that it is in the provisional. Fair enough.”

    Indeed that’s exactly what I did, when the application’s claimed priority date is between the filing dates of the provisional and non-provisional, and I initially quoted the non-provision in the rejection. In the follow-up responses Applicants never raised the the issue again since I then referenced the provisional for rejection.

    Very rare–only one time did I ever have to use the provisional in the office action.

  207. 27

    The purpose of the provisional application’s creation was to give US national filers partiy with foreign national filers under the 20-year term. A foreign application’s term is measured from their US filing date, but they have priority to their Sec. 119 date one year earlier. On the other hand, a US filer’s term begins ticking from the date of the non-provisional filing. The a provisional application accords priority benefit equivalent to Paris Convention filers, but does not impact the 20 year term, and gives US filers the option to obtain the same patent term available to foreigners under the Paris Conv. Logically, the provisional application statute was therefore located under sec. 119.

    Prov. filings should therefore be treated no different than the priority application of a Paris Conv. filing for purpose of prior art applicability under 102(e).

    Additionally, one purpose of 102(e) is to not prejudice the earlier filer because of administrative delay at the USPTO. A subsequent patent should not issue over an earlier application disclosing the same invention, where the later application would have been barred (e.g. under 102a) had the PTO acted more quickly. This rationale does not apply to provisional applications, which will never be published by the USPTO and are not awaiting any action by the Office.

  208. 26

    “1) Why is that not a breach of the Paris Convention?

    2) Should every other country (China included) copy the USA and ignore priority dates, but only when they are US ones? ”

    I don’t have any clue. Also I ha te “Paris” and I think we should break it every chance we get until it is annulled. Even if we have to fight a war or 2.

    “Totally different outcomes under your proposed system, even though, from the perspective of the applicants for app C, the state of knowledge of the rest of the world is exactly the same – the only difference is whether a procedural step was taken. That may be the right answer, but I’m wondering why you think it’s so straightforward.”

    Because I put a lot of thought and effort into it already. You should try it, it works wonders.

    Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application.

    Normally, provisional applications contain a mish mash data dump. I would be dollar to donuts that the Examiner failed to sufficiently establish that the prior art subject matter cited against the patent applicant was in the provisional application.”

    Mine are usually nearly identical with informal drawings.

    “I predict that the Federal Circuit will reverse the Board of Appeals on the issue of a provisional filing date having a 35 USC 102(e) “prior art” effect. 35 USC 102(e)(1) says that the application for patent must be “published under section 122(b)”; a provisional application cannot be “published under section 122(b).” ”

    We’re not rejecting you over the prov. We’re rejecting you over the PGPUB. A PGPUB that happens to get a nice FD.

  209. 25

    BTW, from Appelant’s brief:
    “Claim 1 is representative of all of the appealed claims, and recites:
    1. A method comprising:
    populating a cache with a resource only when at least i requests
    for said resource have been received;
    wherein i is an integer and is at least occasionally greater than
    one.”
    [And this application was only filed in 2000.] [Is this just another example of wasted time and money from failure to find and apply better 102 art?]
    [Does anyone else find this claim “limitation” of “at least occasionally greater than
    one” interesting? [Would not that also read on “one”, which I gather even from the brief is the prior art?]

  210. 24

    “the provisional application is published with the utility application, because it is made available on the PTO’s website when the utility application is published.”

    Night Writer,

    That’s not technically correct. The “disclosure” in the proviisional may be published in the non-provisional application, but not the provisional “application” itself. It’s also not unusual for the disclosure in the non-provisional to differ from the disclosure in the provisional from which the benefit of priority is being claimed.

    Anyway, this is an argument in semantics. As I noted in an earlier post, a provisional could still have a “prior effect” at least as early as its filing date based on 35 USC 102(g).

  211. 23

    @ME:
    The app A as a non-provisional is similar but not identical. app A non-provisional will publish at the 18 month mark all on its own (absent a specific non-publish request, etc.)

  212. 22

    I’ve thought about this some more, and while a provisional should not have a 35 USC 102(e) “prior art” effect, that does not mean it can’t have a 35 USC 102(g) “prior art” effect, especially if no interference can be declared.

  213. 21

    “As it was early in my career, I don’t recall what it was that determined that you get an extra year of term by not converting to reg.”

    By statute under 35 USC 154, claiming priority under 35 USC 119 does not affect patent term.

  214. 20

    The reason “..patents claiming priority to a foreign filing under Section 119 are not given the foreign priority date [in the U.S.]” [other than the exception at the end of amended 102(e) for international applications published in English] are the two [Judge Rich?] In re Hilmer decisions of the CCPA, which strictly apply the “filed in the United States” requirement of 102(e) for all but that one exception. [The pending patent reform bills would eliminate “in the United States” in 102(e)and elsewhere.]
    BTW, there are more than a few 102(e) rejection situations which, even if overcome in the PTO, could become 102(g) prior art situations if the patent was ever litigated.

  215. 19

    “That’s the problem. The practice of using a utility disclosure based on a provisional as prior art has to stop. If the examiner has to use the provisional date, then the examiner should be citing portions of the provisional application and not the utility patent.”

    So what’s stopping you from challenging the Exr that the provisional does not contain sufficient disclosure relative to the non-provisional? Are provisional apps not available on PAIR? It’s true that some provisionals are a “data dump” as someone mentioned, but most I’ve seen are near verbatim to the non-provisional that is eventually filed.

  216. 18

    >>published under section 122(b)”;

    But, EG, the provisional application is published with the utility application, because it is made available on the PTO’s website when the utility application is published.

  217. 17

    I predict that the Federal Circuit will reverse the Board of Appeals on the issue of a provisional filing date having a 35 USC 102(e) “prior art” effect. 35 USC 102(e)(1) says that the application for patent must be “published under section 122(b)”; a provisional application cannot be “published under section 122(b).” That the application must be “published” to have the 35 USC 102(e) “prior art” effect is also made clear by the priviso relating to PCT applications.

    35 USC 119 (as the title clearly says) only defines the effective filing date as it relates to the “right of priority,” not the “prior art” date; that’s why an original foreign filing date is not accorded a 35 USC 102(e) “prior art” effect by virtue of 35 USC 119(a). Similarly, 35 USC 119(e) only defines the effective filing date of a provisional for the purposes of “priority” and not for the purpose of “prior art” date. Unless the Federal Circuit wants to distort the meaning and purpose of 35 USC 119, there’s no way that a provisional filing date can be accorded a 35 USC 102(e) “prior art” effect.

  218. 16

    I don’t know for sure, but I recall that it has previously been settled that if one converts a provisional application to regular, the term of the issued patent expires 20 years from the filing date of the provisional application. But if one simply claims priority from the provisional, the term of the patent expires 20 years from the filing date of the patent application, not the provisional. That’s why no one converts to reg.

    If true, that would seem to suggest that the US effective filing date is the filing date of the regular application, so long as the filer did not convert to the provisional to regular, but merely claimed priority from the provisional.

    As it was early in my career, I don’t recall what it was that determined that you get an extra year of term by not converting to reg. I think it was a case, but I’m not sure. Does anyone remember?

  219. 15

    When I have challenged examiners on this issue, I have never had a problem with the examiner saying, ok, well then I will show you that it is in the provisional. Fair enough.

  220. 14

    The situation as to an application or patent claiming priority from a provisonal is essentially the same as for claiming priority from a CIP. Namely, if the specfications are not identical, there can be an issue as to whether the provisional is 35 USC 112 sufficient to support the all the claims of the later application for a valid priority claim. E.g., New Railroad Mfg. L.L.C. v. Vermeer Mfg. Co., 63 USPQ2d 1843 (Fed. Cir. 2002).
    BUT for the parent CIP date to merely be available as a 103 reference date, the question is different – namely merely if the parent CIP has enough of a teaching or suggestion for one skilled in the art for 103, not 112, purposes.
    So I do not see any really novel issue here unless there is some new twist in the facts of this case. For example, is the appellant here trying to argue that the PTO had the burden of showing the provisional spec was substantially identical, rather than the applicant having the burden to show the provisonal spec failed to contain a sufficient 103 teaching or suggestion?

  221. 13

    Actually, you know, I have been a bit suprized that those who question of the prsumption of validity haven’t picked up on this point. That often a patent issues with a priority date based on a provisional application and yet whether or not the provisional application supports the claims of the utility patent is often never examined.

  222. 12

    But, as long as the examiner is basing the rejection on the provisional application, then it would be structurally inconsistent not to allow the examiner to use the provisional as prior art.

  223. 11

    >>the Examiner failed to sufficiently establish >>that the prior art subject matter cited >>against the patent applicant was in the >>provisional application

    That’s the problem. The practice of using a utility disclosure based on a provisional as prior art has to stop. If the examiner has to use the provisional date, then the examiner should be citing portions of the provisional application and not the utility patent.

  224. 10

    Even assuming the provisional application is the priority date, the examiner has the burden of establishing that the prior art subject matter cited against the patent applicant was in the provisional application.

    Normally, provisional applications contain a mish mash data dump. I would be dollar to donuts that the Examiner failed to sufficiently establish that the prior art subject matter cited against the patent applicant was in the provisional application.

  225. 9

    Indeed, Lurking. Thanks for the cue. Swords and shields again. Paris Art 4 speaks of the enjoyment of “a right of priority” which is “for the purpose of filing in other countries”. Thus, the inventor doesn’t have to file all over the world on Day One but has a year to get its foreign filing programme executed.

    Now, what might be the “purpose” of filing in the USA?

    Some would say their purpose is to hold manufacturing industry to ransom, when their US patent issues.

    But others (like, me) muse on why, say, Nokia, might file. One “purpose” might be to try to restrict the reach of the Motorola patent portfolio. How might Nokia do that? Early 102(e) dates might be quite effective. Thus, when it comes to filing at the USPTO, a major purpose for serious filers is to get an early 102(e) date.

    You hold to Hilmer logic, that Paris covers troll purpose (1) but NOT manufacturer’s purpose (2). i concede I haven’t read Hilmer or any of its progeny, so maybe you, or Dennis, or readers can give that logic to me succinctly.

  226. 8

    “A provisional application can never become a patent”

    A provisional application can be converted into a non-provisional during the year after filing. If so, it doesn’t expire and can become a patent.

  227. 7

    Steve:

    The same situation would arise if app A were a non-provisional that was not published before the filing of app C.

  228. 6

    6:
    So I file a provisional (app A), then file a later application (app B). If app B claims priority to app A, then app B counts as 102(e) art (say against later filed app C) as of the provisional date. However, if I do not claim priority in app B to app A, then my application counts as 102(e) art only as of the actual filing date.

    Totally different outcomes under your proposed system, even though, from the perspective of the applicants for app C, the state of knowledge of the rest of the world is exactly the same – the only difference is whether a procedural step was taken. That may be the right answer, but I’m wondering why you think it’s so straightforward.

  229. 5

    Max,

    Regarding your question 1, I think you’re getting confused between (1) the priority date given to the foreign application when it is being examined and (2) the priority date given to the foreign application when it is being applied as prior art against another application. My reading of the Paris Convention is that it covers situation 1, but not situation 2. For 102(e) purposes, situation 2 is what matters. There does not appear to be a breach here.

    I will not attempt to answer question 2.

  230. 4

    A provisional application can never become a patent, as it expires in one year. It is therefore not an “application for patent.” It is this phrase that keeps provisionals out. And yes, I suspect it’ll be a problem if they start using provisional filing dates but not foreign priority dates.

  231. 3

    Questions to you, 6. US provisional filing dates count (you say that’s crystal clear). Non-US Paris priority dates don’t (says Dennis, as if that too is crystal clear). So, decisive to the outcome, all other things being equal, is whether the priority date declared on the face of an issued US patent corresponds to a filing at the USPTO or another Patent Office which is not the American one. Questions:

    1) Why is that not a breach of the Paris Convention?

    2) Should every other country (China included) copy the USA and ignore priority dates, but only when they are US ones?

  232. 1

    That is not a “novel” question. People assert this nonsense occasionally. I then point them to :

    “(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent…”

    And that is pretty clear. Find the filing date and you have your priority date. The filing date gets moved back by the provisional statute.

    “(4) FILING DATE.-The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.”

    Then we have to look what was the filing date of the actual application claiming priority.

    “(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application”

    So long as all the conditions are met then there you have it.

    Arguably you might even could use:

    “An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.”

    I usually use (1) in my rejections though so I don’t usually run into this nonsense.

    These guys are going to get nowhere.

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