The Increasing Role of Published Applications in Patent Examination

In 2001, the USPTO began publishing pending patent applications at approximately 18-months after the application's priority date. Over the past eight years, this publication rule has slowly become more integrated with the examination system. As the first chart shows below, most issued patents now cite to at least one US publication. (Patents issued January 1, 2009 – June 23, 2009 cite 4.2 US published applications, on average).

Moving toward Transparency in Prior Art: Patent applicants have historically been frustrated by prior art defined under Section 102(e) of the Patent Act. That section defines a class of "secret prior art" that was not publicly available at the time of an applicant's filing, but that was already on-file with the patent office. By opening-up the application files at an earlier date, the potential unfairness of secret 102(e) prior art is beginning to be reduced because the early publication makes the prior art searchable by the public. Although not directly proving this point, the second chart categorizes the cited US published applications according to their prior art classification. As time moves forward, more applications have become 102(b) prior art (published for more than one year before the applicant's filing) and the percentage of cited applications categorized as 102(e) prior art continues to drop.

Notes:

  • This study is based on an analysis of all US patents issued between January 1, 2000 and June 23, 2009.
  • A cited published application was counted as 102(e) prior art if the publication date of the cited application was later than the filing date of the issued patent that cited the application.
  • A cited published application was counted as 102(b) prior art if the publication date of the cited application was more than one-year prior to the filing date of the issued patent that cited the application.  The graph shown limits the analysis to only issued patents that do not claim a priority date based on a prior patent filing.  Patents that claim an earlier priority date tend to eliminate a portion of 102(b) prior art.
  • See also Dennis Crouch, Published Applications as Prior Art, Patently-O, https://patentlyo.com/patent/2009/07/published-applications-as-prior-art.html (July 28, 2009).

   

   

   

   

  

158 thoughts on “The Increasing Role of Published Applications in Patent Examination

  1. 158

    MaxDrei – just because the question seems futile to you, does not mean that you shouldn’t try to answer it. In answering the question, you may find that it is far less futile than you initially think and may do more to help you understand the critical differences in US patnet Law that you so earnestly strive to understand. As you grapple with the answer, also contemplate WHY the question has a different weight in the different systems. These are not trivial exercises.

    Good job by the way of not falling for Malcolm’s urgings, as I mentioned in another thread, you deserve the credit for making your posts so much more substantive – (Malcolm, even Darth Vader in the end rejected the Dark Side).

  2. 157

    Sorry Dr Katznelson. Not trying to evade serious questions. It is just that the question doesn’t have the same weight here that it does in the USA. Imagine the Government in China, Japan, Korea or Russia changing the Rules and you saying “Absent evidence, you just can’t do that”. What might their reaction be? Incomprehension, perhaps. Then what might their tart answer be?

    My impression is that you would get the same answer in Europe. Therefore, your question seems to me futile to pose. Anyway, that’s why I didn’t answer it. I simply don’t know of any “evidence”. (But that of course doesn’t prove that it doesn’t exist.).

    I take it you are against devolution to the USPTO of any Rule-making authority whatsoever.

  3. 156

    MaxDrei: Any evidence of public harm found by the EPO? This is the third time you evade this question.

  4. 155

    No time to do justice to your thoughtful posting Dr Katznelson. sorry.

    I don’t deny your shorter product lifecycle explanation. I think it’s right. I take it further. I postulate that an ever greater proportion of patents are in ever shorter lifecycle fields.

    And, sorry for misunderstanding so much of what you write.

  5. 154

    MaxDrei,
    My comment regarding the “profound misunderstanding of simple patent policy principles” was not directed at you – a patent expert. It was directed at patent policymakers who may have very little understanding of the unintended consequences of their actions, which often lack relevant evidentiary basis. There appears to be no shortage of them, including in the previous USPTO management.

    I was serious in my questions about what evidence of public harm was found by the EPO before it promulgated the new restrictive rules. If your response about “the hot cases involved in litigation all over the EU” was not such evidence, then please be sure to identify (and perhaps provide a link to) such evidence. The only reason for promulgating these rules that I was able to find, was EPO’s administrative convenience, and that is hardly a basis for sound patent policy.

    MaxDrei, precision and clarity is paramount here, before you draw unsupported conclusions. You apparently misunderstood my comments on the shrinking lifetime of European patents (on average) as “increasingly denying inventors a long enough term” and conflated it with ability of applicants to extend their patent term by SPC’s, when their claims are useful. The point I was making is that nobody is being denied longer term patents – they can have them! But on average, they choose to drop the claims that they obtained, and they do so at a progressively earlier stage. In any event, the EPO lifetime shrinkage in the Trilateral Office stats I cite is found as an average over all patents, including those that were SPC’ed.

    Precision and clarity is paramount here. Shooting from the hip does not cut it… I speak of probable causes for a trend, a change of lifetime shrinkage. You merely state renewal-fee facts that only go to reasons for patents’ lifetime being shorter than full term, but no facts that explain any causes for the change in lifetime. For example, if it exists, evidence with time series of increasing costs of EPO patent maintenance over the last two decades in real terms would be a relevant candidate explanatory factor for a change. Another of your shots from the hip is your speculation about “efficiency” improvements of patentees’ ability to terminate their patents. It is simply not credible over the whole ensemble of patentees. You may have other anecdotal experience, but the common reality is that for the longest time, patentees always sought ways to save money and have long adopted patent maintenance review practices that were very “efficient.” Do you have any statistical evidence for the nature of these “efficiency” improvements you speak of?

    Finally, do you deny that the undisputed product lifecycle shrinkage causes patent lifetime to shrink? This is the simplest and most robust explanatory factor. The only question is, what claiming mechanisms can best mitigate some of that contraction. The new EPO rules can only work in the undesired direction.

  6. 153

    Oh dear, oh dear. What a shame.

    Ron, where do I express surprise that the 5% are the litigated ones. I agree with you: that’s what one would expect.

    I’m sorry you impute “surprise” and from there get to the implication that I suffer from a “profound misunderstanding” of patents. And I thought we were getting on so well.

    I hadn’t heard until now your theory about Europe’s patent laws increasingly denying inventors a long enough term for their valuable contributions to progress. Do your lectures cover European SPC’s (supplementary protection certificates) by which patent owners extend their patent terms in Europe well beyond the statutory 20 years?

    The fee for renewing a patent for another year is higher, with every passing year. This prompts patent owners to stop paying before the end of the patent term. A landscape in which every Japanese and Korean electronics maker patents every last little mod results in huge numbers of issuing European patents, most of which will not be kept in force till end of term. Companies are not only collecting ever higher piles of patents, they are also getting ever more efficient. One aspect of efficiency is to see more quickly which cases should be terminated before full term 20 year lifetime. All of this will pull down the average number of years over which a European patent will be kept in force.

    So, you see, I can respect your collection of stats without drawing from it the same conclusions.

    But we’re off the point of the thread, aren’t we? Where did we get to, on the original issue? Or have we exhausted that?

  7. 152

    MaxDrei: “Within the 5% are the hot cases involved in litigation all over the EU”.

    Is this EPO’s “evidence” of harm? Patent disputes arise only in cases where the claims appear to read on products in the market. Patent claims issued from continuations and divisional applications are based on more recent embodiment information, improvements and developments. As such, they better match the patentee’s actual products on the market and those of competitors. Patents issued from continuations and divisional applications are maintained over longer periods by their owners, resulting in longer economic patent lifetime. Thus, the fact that such patents are disproportionately involved in patent litigation is hardly surprising, nor evidence of patentees’ “mischief.” Any expectations to the contrary are manifestations of a profound misunderstanding of simple patent policy principles.

    A less-known but important fact that appears to be ignored by European patent policymakers is that the lifetime of European patents is shrinking at a rate of two years per decade. Think about this for a moment: the economic protection life of an average European patent issued today will be shorter by two years compared to that of an average European patent issued ten years ago. In contrast, US patents’ lifetime shortens by only about 6 months per decade, in part because owners of US patents are able to mitigate product lifecycle contraction effects by an increasing use of continuations, CIP’s and divisions. Hence, do not expect the European patent lifetime erosion trend to abate with these recent EPO rules – apparently adopted solely for the EPO’s administrative convenience.

    With this real patent protection erosion trend, I wonder how long it would take Europeans to realize that the risks of European investments in patentable inventions outweighs the diminishing and shrinking benefits of patent protection. In other words, looking forward a few decades into the 21st century, will European patent lifetimes and protective power be sufficient to fetch adequate returns on investments in products protected by patents? We may yet see a European epiphany similar to that found in the Netherlands in 1912, when patent law was restored after 43 years of administrative convenience of examining no applications and issuing no patents.

    For more on patent lifetime erosion and the implications for the 21st century patent-bargain, see slides 25-32 in the presentation downloadable from link to works.bepress.com.

  8. 151

    Why’s that then Paul. Are you a darts player or a genuflector. People might want to know, before any advice is proffered. And another thing, please. Where in this thread is Saint Pauline mentioned, pray?

  9. 150

    Erez, as to the pan-European Design Registration, my point is yours: much potency for little money. My point is that pols arranged it that way thinking it would benefit domestic European industry disproportionately. They were wrong because European industry is too dozy to recognise disproportionate benefit even when it’s right in front of their noses. Instead, it’s the clients of Mr Gur who reap the benefit. good luck to you and your clients. I hope you get out of the court handling the infringement case just as much scope of protection as would be given, had the proprietor of the asserted pan-European registered design right been an EU citizen.

    As to continuations: agreed.

  10. 148

    Max,

    We are off-topic, but I am a fan of the European design protection scheme, I don’t know why you aren’t. For no money, but more importantly without delay, you get absolute protection for a very limited time (3 years, no?) for your novel design. This is exactly the protection small design-innovators need from quick knock-offs.

    As for the continuations topic. Since in the EPO you can’t add new matter and patent judges are patent experts that aren’t easily fooled by clever claim drafting, the issue that Ned Heller mentions at 2:00 does not exist with EPO.

  11. 147

    Just seen your question Erez. But I think my contribution at 06.14am reveals that I don’t exactly share your suspicion. Never mind, we were neither present at the deliberations of the Administrative Council of the EPO, so neither of us knows for sure. Perhaps Ron’s right: that it’s all about protectionism for the European biotech industry.

    That was a joke, but the European Design patent regime is not. It gives preposterous levels of potency for little cost. It was cobbled together by European politicians intent on giving home industry an advantage (who in the world files design patents overseas?). But never under-estimate The Law of Unintended Consequences. Most pan-European Design Registrations are now owned by non-European industry. When it comes to IPR, most of European industry is a bit dozy. Giving it a potent means of protecting nice new design isn’t enough to get it to invest in design creation.

  12. 146

    Ron, no pride, no exaltation, just a feeling that somebody has to balance (in the public interest) the encouragement to progress that comes from free competition with the encouragement to progress that comes from permitting limited term patent monopolies. Putting a cap on the time permitted for filing divisionals is a part of that balance that I agree with.

    Within the 5% are the hot cases involved in litigation all over the EU. The technology I personally think of is that relating to stents, in which the courts have grown exasperated with petitions from the European owners of 4th and 5th generation EPO divisionals on one particular EPO filing nearly 20 years ago. Exasperated because every earlier generation divisional was killed post-issue in opposition at the EPO, yet the owner of the latest generation divisional still wants the American “infringers” enjoined, even while the asserted patent is still embroiled in the opposition process at the EPO. Quality is more important than quantity. Just because a very small percentage of EPO patents get to a 5th generation divisional doesn’t mean that the problem of cascading divisionals is de minimis. Only a very small sub-set of all issued patents is litigated, yet nobody suggests that the patents in that small sub-set are trivial.

    You attribute European conduct to trade protectionism. Forgive me, but where I come from, we have a very old saying, namely, It Takes One To Know One.

    What would you like to say next?

  13. 145

    The new EPO rules were made together with the extra page fees (bad development) and extra claim fees (good development).

    I suspect that all these rules were made to reduce uncertainty caused by multiple inventions described in a single application rather than to stop “tailoring” claims for later “infringers”.

    Max, comment?

  14. 144

    MaxDrei,
    I detect a sense of pride and exaltation in your description of the new EPO rules designed to cap patentees’ “mischief” in filing divisional claims several years after a priority application. Of course, the EPO and 36 governments have promulgated this rule after considerable research, documentation and assessment of the harm inflicted by “mischievous” patentees. Of course, the EPO came on the side of restricting divisions (constituting about 5% of EPO applications) only after it had carefully balanced such harm with the benefits of divisions in providing better patent protection – fostering investments in the most valuable inventions. Of course, this enlightened policy was adopted with the same European certitude that drove the Netherlands to abolish the “mischievous” patent system in 1869 (only to restore it 43 years later).

    For your sake, I hope it does not take 43 years for Europeans to realize that they are gradually destroying their patent system and their innovation economy.

    Or do I have this all wrong? Is it rather the European way of imposing trade protectionism by disproportionately weakening patents owned by American biotech companies who make much heavier use of divisions?

  15. 143

    The world is small, and getting smaller. The new EPO Rules that put a cap on the period during which divisionals can be filed is to deal with precisely the same mischief as that tackled by the misbegotten Dudas continuation capping Rules. The EPO Rules went into force straight away. Having been enacted by 36 Governments on the EPO Administrative Council, they are immune to challenge in the courts (which court?). Come on USA, do GSK a favor, run a challenge in the WTO, why don’t you?

  16. 142

    “One of the major reasons for publications was to allow the public to monitor the progress of continuations.”

    Except for that fact that non-publication requests have always been available and defeat the very reason you think such an action was for.

    Except, (again), the 20 years from filing IS the stake in the sand that defeats “submarine” tactics. And this has nothing to do with publication. Nothing.

    Again – see Ron K’s post for a better reason publication was enacted.

  17. 141

    NAL, we can agree to disagree. But just accept that so long as a continuation is pending, one cannot reliably use anything remotely similar to the disclosure as we patent attorneys are very good at drafting claims that avoid the prior art, are supported by the specification and which read on equivalents of what is disclosed. One of the major reasons for publications was to allow the public to monitor the progress of continuations. One of the major reasons for the Dudas “continuation” rules was to limit the number of continuations in order to finally put a stake in the sand, to draw a line, so that the public might rely in the claims in an issued patent at some point during the 20 years from filing.

  18. 140

    Ned,

    I understand what you are trying to say. I am not being obtuse when I reply that you are wrong. Your definition of “submarine” would have the basic premise of ALL applications examined in secrecy to protect the most basic of Quid Pro Quo labeled as submarine patents.

    It just isn’t so.

    Try reading Ron K’s post in light of the Quid Pro Quo and ask yourself what is left for the public to obtain after an application has been published?

    You are hung up on secrecy – In the original Quid Pro Quo, secrecy was always there, and yet the “submarine” issue was an issue apart. That separate issue was resolved fully with the term change. This is completely apart from publication.

    Further, you make no comment on my observation of what is open booked in pure continuations processed under secrecy and the difference between pure continuaitons and CIP’s. I do not know if this silence is an affirmation of my point or something that you don’t understand.

    Until you can grasp that secrecy, in and of itself, is not the same as “submarining” we will have to agree to disagree.

    MaxDrei,

    The people CAN see what you are on about – the problem is that you are on about NOT US law. Once again, you are conflating issues and bodies of law and wondering why you are confused, or at least why no one seems to understand your point of view.

  19. 139

    Readers, just to clarify one thing: there is no link between 18 month publication and speed to grant. My own UK patent, for example, will issue 3 months after its A publication. It could have issued sooner, except that the UK Patent Office insists on waiting 3 months after A publication, just in case some member of the public wants first to show the PTO its novelty-destroying art. I’m wondering whether to file a divisional. At the UKPTO there is a 54 month cap on the pendency of divisionals, starting from the prio date. Still, having a divl published and pending for 3 full years might be handy for me, when negotiating licences. Only problem is, prospective licensees know that my reservoir of disclosure (from which I can craft new and different claims in the pending divisional) is limited to what’s in the A publication.

    I think that people who can’t see the fairness of the “balance” I am on about, between inventor and public, are people who lack my experience, 50% of which is assisting a client who is an inventor and the other 50% lies in writing FTO opinions for clients threatened by the A publications of their competitors.

  20. 138

    “NAL, think about the term ‘submarine’ for just a moment. What does ‘riding in secret below the waves’ imply?”

    Uh, oh. Someone’s about to get assailed…

  21. 137

    NAL, think about the term “submarine” for just a moment. What does “riding in secret below the waves” imply?

  22. 136

    Ron: “A return to basic patent policy principles is in order and the best way to solve world patent pendency problems is to abolish the mandatory 18-month publication rules and apply them only to cases elected by applicants for deferred examination.”

    Dream on.

  23. 135

    MaxDrei,

    It appears that your main concern is with issued but invalid patent claims. Would that be a fair statement?

    As is your want, the conflation of issues stymies you again.

    Since the predominance of patents with published claims (in the US) have been amended, your statement of “confident that it knows what valid claims will issue” simply is not true on its own standing. However, to my point to Ned, publication does open the book as to all support for any claims (thus in a sense we could be talking about the same thing).

    You also throw in the fear of shakedown merchants, but I cannot see the logical tie to either publication or validity in your stated position reaching from this fear. Are you saying that ALL holders of property should be foreclosed from doing as they see fit with their property? Have you drunk the kool-aid of the practicing versus non practicing crowd? Would you be in favor of a rule forbidding any transfer of property rights away from inventors to combat the so-called Troll problem? What side effects may arise with that solution?

    You seem to be saying that since a bad patent could happen, all patents should be published so that the public knows what it is in store for. This completely ignores the points that Ron and others a bit more brusque make, and actually reflects those errors Ron illuminates.

    Perhaps Lord Kappos will apply the presidential edict when making further changes to the system and look at the Office’s part in creating the problems of today, realizing at least in part one root cause for the lack of urgency in actually making prosecution compact. After all, once published, what else can the public get from the applicant?

  24. 134

    Ned,

    Your definition of submarine patent is wrong. In your definition, ALL patents were submarine patents pre-18 month publication. No one subscribes to this view. How could secrecy in itself be held to be so pernicious, yet be fundamental to the patent bargain of the original quid pro quo?

    Further, your second branch is an illusion.

    Prosecuting claims in a pure continuation cannot be a submarine as anything available with those claims is already public knowledge. One only has to read the published and abandoned parent application to understand what could be claimed. It doesn’t matter what you try to prosecute in secret, the book is out. Now, as I pointed out, if there is more, then you are talking about a CIP, and then the rest of my post above applies.

    Either way, submarine patents were killed with the term change.

    Kudos to Ron K – a finely articulated position that basically answers what hindsight asks from the previous comment page.

  25. 133

    Good stuff from Ron Katznelson but that doesn’t mean I go along with his line.

    Ron, I think that the “bargain” should not involve shake downs of hard-working deserving labour-employing manufacturing industry by owners of issued but invalid patent claims. The patent system should balance the threat of being found to infringe (which begins with the 18 month A publication) with the chance to get an invalid claim struck down. Mr Jefferson might not be turning in his grave but he surely would not approve of all the activities that the shake down merchants get up to, these days.

    Patents are all-pervasive, these days. When I started, they were pretty much an obscure chemical industry speciality. Great for my career and great for imposing stresses on the traditional post-issue publication model. The modern solution of A publication does not deprive applicants of their leverage and potential to threaten an industry. On the contrary, it raises that potential. However, it also gives competitive industry the chance to invest without any delay, confident that it knows what valid claims will issue.

    And, if that’s not the way it is, in the USA, the fault lies with the PTO and the courts, and not with the concept of A publication at 18 months.

  26. 131

    MaxDrei on Pre-Grant publication:
    “I find it hard to understand why the fundamentals of patent law in the USA are different from everywhere else. One would think that society ought to reward, with a temporary monopoly, the inventor who is the first to bring to the public contributions (progress) to the technological arts. But, alone in all the world, the USA rejects that scheme for its patent law. I’m sure Mr Jefferson has long been turning in his grave on that point.”

    MaxDrei, you seem to suggest that the USA strays away from sound patent policies that have long been accepted by the rest of the world. Perhaps the answer to your question lies in the fact that the ROW had strayed further away than the USA from sound patent policies enshrined in the patent bargain. Has America deviated the least from the patent bargain, because it appears to take such a bargain more seriously to protect both sides? [This, in contrast with other countries, who do not encourage more disclosure in CIP’s, intricate enablement, and best-mode requirements].

    From your comments one would not discern that the pre-grant publication practice is a rather recent practice in the annals of world patent law, originally intended to alleviate the potential public harm of a newly introduced practice of deferring examination up to 7 years. I should also remind those who commented on the virtues of immediate publication that, had mere public notice been the goal, the 18-month publication practice would have been much shorter. Rather, it had been widely accepted that a deferral elected by an applicant should not prejudice the public and that there should be no material CHANGE in the timeline of making inventions public even if patent examination and grant is deferred. This is why deferred examination laws were coupled with pre-grant publication. The Netherlands was the first country to formally adopt an 18-month mandatory publication period in 1964 as part of its adoption of the deferred examination system. The 18-month period was apparently set to approximate the search and preliminary examination timeline practices of the time. However, the crucial problem (and I maintain, a grave mistake) with this policy was that the 18-month mandatory publication rule was coupled too broadly and was imposed on ALL applicants and not only on those who elected to defer examination. Alternatively, without upsetting the core patent bargain – disclosure upon grant of exclusive rights, an equitable INCREMENTAL quid-pro-quo would have been: applicants reap the ADDITIONAL optional benefit of deferral for several years in exchange for early disclosure of their trade secret. That way, applicants who do not wish to defer would then be unaffected and their core patent bargain would have been undisturbed – disclosure only upon grant of exclusive rights.

    Thus, this 1964 law in support of deferred examination had failed spectacularly in adhering to the patent bargain by granting the public MORE than its part of the bargain, GUARANTEED at 18 months, for any application, whether ultimately granted or not. No time guarantee is provided in exchange to applicants who do not elect deferral. There is no assurance that applicants’ part of the bargain will be granted within 18 months, or at any time thereafter. This blatant deviation from the patent bargain was soon followed by other European states, and 18-month mandatory publication periods FOR ALL APPLICATIONS whether deferred or not, were instituted by Denmark, Finland, Norway, Sweden and Germany in 1968 and by France in 1969. Other countries including Japan followed suit in the early 1970’s.

    You see MaxDrei, this choice is indeed up to these countries but this deviation from the patent bargain has more serious consequences than most observers realize: The pre-grant publication policy gives “the public” their part of the patent bargain UPFRONT. In so doing, it is stripping-out any incentives for “the public” to TIMELY deliver applicant’s part of the bargain, which it would otherwise achieve by pushing for sufficient public examination resources to maintain short pendency. It is not surprising that the most spectacular increases in patent pendency at national patent offices began creeping-in after these offices adopted pre-grant publication rules. For example, Canadian patent office average pendency following request for examination increased by about 2 years after its adoption of a pre-grant publication in 1989. We are also keenly aware of the unprecedented and comparable rise in USPTO pendency after 2001, when 18-months publication started taking effect. The EPO started operating with the 18-months publication rule and I cannot remember when the EPO ever had pendencies of 18 months, except perhaps in its startup phase.

    Consider this: Had “the public” not received upfront more than its part of the bargain, do you think “the public” would have quietly allowed pendency of secret applications to reach 3-4 years? Would there not have been an orchestrated outcry from industry groups for augmenting patent office examination resources every time a single key patent issued after such long delay and secrecy? The patentee is also harmed by long pendency. How does the power of a single patentee to affect pendency reduction compare to that of large stakeholder groups affected by that patentee’s patent? This is the problem. The individual patentee gets the short end of the bargain with very little power to compel specific performance by “the public”.

    The rest of the world had been partially successful in pushing the USA towards perilous deviations from the patent bargain. I agree that Thomas Jefferson has long been turning in his grave, but not on the point MaxDrei suggests. A return to basic patent policy principles is in order and the best way to solve world patent pendency problems is to abolish the mandatory 18-month publication rules and apply them only to cases elected by applicants for deferred examination. With this type of policy in place, fewer applicants would likely elect deferral, resulting in earlier issued claims and overall improvements in the public notice function of patents.

  27. 130

    NAL, submarine practice primarily related to keeping patent claims secret. A secondary problem was the term dating from issuance. (Lemelson) The new terms solved only one branch of the problem as it remain fully possible to prosecute continuations in secret even if a parent is published, so long as the parent was not filed foreign.

    From my own personal point of view, since I believe provisional rights are illusory, there is no good reason to publish except for the statutory bar. But, as I have mentioned, there are ways one can both publish and prosecute in secret. I would think it borders on malpractice not to advise one’s client of these options if one does not file foreign.

    FYI, it was I who pointed out the problem of third parties submitting art to disrupt prosecutions once publication started. I also pointed out the problems that could occur if public use proceedings remained. As a result the publication statute eliminated both.

  28. 129

    The year and a half delay to publication gives the inventor the time to work out a commercial embodiment and to make manufacturing and marketing arrangements. Without the delay, big corporations and Asian companies would beat him to market.

  29. 128

    Alan McDonald wrote: “How about this? Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.”

    Well Alan, I don’t know all the legal issues/ angles associated with such a policy but I can elaborate from the perspective of an “Actual Inventor. And I can tell you now that such a rule would be disastrous!

    Imagine if you come up with a process that would enable your new business to compete against Microsoft. Now what do you think would happen as soon as that app is published?

    I’ll tell ya what. MS will use all of its power to kill that app before it ever gets a First OA. With MS unlimited resources to lawyers, lobbyists, and media the small inventor would never know what hit him/her. Then after the big corp vultures and their flying monkey mignons have ripped the application apart, its elements would be quietly assimilated into the collective system of the MS Borg hive. Leaving the public with less choice, higher prices and the poor inventor ripped off and broken hearted.

  30. 127

    Senthil, I am assuming the unpublished application is not related to the published one:

    From MPEP 706.02(f)(2):

    “If there is no common assignee or common inventor and the application was not published pursuant to 35 U.S.C. 122(b), the confidential status of applications under 35 U.S.C. 122(a) must be maintained and no rejection can be made relying on the earlier filed, unpublished application, or subject matter not supported in a redacted application publication, as prior art under 35 U.S.C. 102(e). If the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. If the application with the earliest effective U.S. filing date will not be published pursuant to 35 U.S.C. 122(b), it must be allowed to issue once all the statutory requirements are met. After the patent is published, it may be used as a reference in a rejection under 35 U.S.C. 102(e) in the still pending application as appropriate. See MPEP § 706.02(a) and § 2136 et seq.”

    I would also say the the examiner can suspend prosecution if issue (and subsequent publication) of the unpublished application is imminent.

    I find the chances of these things with non-related applications occurring very rare.

  31. 126

    In case, a patent application get published by early publication and started prosecution earlier than unpublished another patent application, which is filed before the published application; will the examiner cite the unpublished patent application or not? What is the consequence.

    Need explanation.

  32. 125

    “This permits one to file an application with a generic claim, have it published, have it abandoned”

    Why not just publish the disclosure on one of the internet publication sites?

  33. 124

    Ned,

    Malcolm may be correct. I have seen PAIR list unpublished children of abandoned applications, (the listed child is an inactive link, only indicating that a child has been created).

    Interestingly, the ability to maintain secrecy is worded such that the INTENT to file a foreign related applicaiton is enough to lose the right. Of course, there are strict rules to follow if you do decide to make a foreign filing after having chosen non-publication (intent later arises).

    However Ned, I do not think that your scenario quite reaches the “submarine” level. Your continuation application must find support in the parent (and published) application even for the claims you are trying to bring at a later date, otherwise the application is a CIP and priority dates would be determined by when the actual support has been disclosed. Term, as well, will be determined by the supporting priority date, not strictly by either the earlier parent or later continuation filing date. In either case, the filing of the continuation gives no “submarine” benefit.

    Either the term is limited to the support of the parent or the new filing. As it would be regardless of secrecy status. For continuations, the source and support for any future claims is public. For CIP’s, there is nor real difference from a regular filing for the claims requiring support from the new material.

    Maintaining in secrecy has no real interaction with the element of “submarine” patent as that term is known.

    Further, if you are adding claims in a continuation from a competitor’s newly filed patent, you will generate an interference with or without the status of secrecy.

    You are correct though in that submarine practice was not ended by US publication – it was ended by the change in term calculation.

  34. 123

    Ned: “This permits one to file an application with a generic claim, have it published, have it abandoned, and have the real prosecution take place in a previously-filed continuation in which a non-publication request was filed. (If anyone has any case law to the contrary, I would appreciate a citation.)”

    I don’t know about case law, just thinking about PAIR. How long does it take before an abandoned (but published) app is disappeared from PAIR? Otherwise one would expect to find the continuation info under the “related app” tab, no?

  35. 122

    Today, publication is only required if you file foreign, where publication 18 months from a priority date is automatic. Given this, US publication of applications filed outside the US only operates to grant inventors provisional rights (which are illusory).

    However, publication is optional if one does not file abroad. The benefits are an earlier statutory bar creating publication date.

    Most Americans, it appears, are choosing to publish even if they do not file outside the US. It appears they like the idea of creating statutory bars.

    However, many inventors and companies are not so much interested in the statutory bar, but in obtaining a patent in exchange for disclosure. This option is still available.

    Finally, and this is not well understood, so long as a patent application is not filed foreign, secrecy remains a option in a continuation, even if the patent application was published. This permits one to file an application with a generic claim, have it published, have it abandoned, and have the real prosecution take place in a previously-filed continuation in which a non-publication request was filed. (If anyone has any case law to the contrary, I would appreciate a citation.)

    Submarine practice was not ended by US publication. It may be ended if publication becomes mandatory.

  36. 121

    Bigguy – even with my attitude “weakening” my arguments, the correctness of my arguments remain unassailed by the skirt and track shoe group.

  37. 120

    “It” – creepy Jame’s back.

    Any good reason – while Jame’s, er um, Malcolm’s fingers are in his ears…

    BigGuy – we’ll have to agree to disagree.

  38. 119

    I assume the reasons for the delay in publication of International Applications are, at least in part, historical/practical and also, at least in part, simply a concession to applicants/business interests.

    As I wrote upthread, I don’t see a good reason for not making filed applications electronically available immediately after they are filed (electronically) or scanned in (if filed non-electronically).

    And nobody here as proposed a good reason. We have, however, seen the usual empty threats along the lines of “people won’t file applications if they are published right away”.

    Are there any good reasons, though, not to do as Alan suggested? Anyone?

  39. 118

    It: “my assailing has borne fruit with MaxDrei”

    This works best if you imagine it spoken by Ricardo Montalban.

  40. 117

    “As I point out, it is interesting that you are annoyed with my posts, but say nothing against the mindlessness (of content and repetition) of Malcolm and 6 (hmmm).”

    If you look, you’ll find that I’ve had my issues with Malcolm and 6. (Even though I don’t generally see the point of attempting intellectual engagement with provocateurs and/or sophomoric examiners.) But, if you’d rather harbor paranoid delusions about my identity, feel free.

    And yes, I find it annoying when people making arguments I generally agree with are unnecessarily shrill, condescending, insulting, etc. In my view, these tactics weaken the arguments. But if you’re happy with how your “in your face” style is actually perceived, so be it. Have fun with your “debates.” But pardon me if I don’t read them anymore.

  41. 116

    “I love it. NPEs for returning to submarine patents. And there are no Patent Trolls.”

    sarcasm? submarine patents? Patent Trolls – As I mentioned, and you omitted – even the big players exhibit Troll behavior – please Big Guy, let’s keep it real.

    The “How about this” is indeed a call for change. Step one is true – but the grounding for that change is inane and incorrect. You would view the basis of the proposed change as sarcasm without content. How is that a logical argument?

    My high-minded debate can only happen after the refuse is dealt with. You don’t get that do you? I am not debating with taking out the trash. I am clearing the road for debate.

    “But a patent application that stays hidden for 10 years because of a non-publication request can look an awfully lot like a “submarine” to the ultimate target” – ten years to prosecute and achieve a patent is not the fault or even possible aim of the applicant. If indeed patentable, why does it take ten years for the Office to recognize and award this. If not patentable, there is no arguement as there is (or should be) no patent to act “as a submarine”. You are mixing apples and elephants in order to ry to reach a point that is not logically connected – only easily obfuscated.

    Of course my posts are repetitive – look at the shield of persistent ignorance I am posting against. As I point out, it is interesting that you are annoyed with my posts, but say nothing against the mindlessness (of content and repetition) of Malcolm and 6 (hmmm). As for MaxDrei – the credit belongs to Max for stepping up his game. I only use Max as a counter to the “assailing does nothing” propaganda that I find on the board. Of course, your limited excursion to find quotes won’t find the several times Max has thanked me for pointing out the loss of credibility that his path was taking him on.

    As for condenscending – too bad. I am not about putting forth the effort “to be nice” with those that don’t care. Others try that and are walked on. If it takes being in your face to make the point, then I will be in your face. Of course, since I am correct in my posts, the people who face I’m in rather have a hard time with it. You see this in the skirts and track shoes – otherwise, bring it on.

  42. 115

    “Regarding your comment ‘suggesting that the law should be changed is not displaying a “wanton disregard” for the law.’ … That’s great, but that’s not what Alan is saying. … Alan is spouting falsehoods and incorrect characterizations …”

    Perhaps you’re the one that needs a little “assailing.” Let’s review the transcript, OK?

    Alan first said: “How about this? Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.”

    Later, apparently responding to a suggestion that applications never be published, Alan said (sarcastically, for those who have trouble with such things): “I love it. NPEs for returning to submarine patents. And there are no Patent Trolls.”

    Finally, Alan said: “We need a new ‘quid pro quo’ definition. You disclose your idea to the public and the PTO/courts will determine if it is worthy of a patent and grant/uphold one if it is worthy.”

    Where are the “falsehoods and incorrect characterizations”? I read Alan’s comments as a proposal to change the system, hence the “How about this?” and the proposal for a “new” quid pro quo. I don’t agree with this particular idea, but that’s another matter. Alan also expresses his personal concern with so-called trolls and ironically suggests a comeback of “submarine” patents. (Yes, we know that the most egregious examples of submarine patenting were eliminated with the 20-year term. But a patent application that stays hidden for 10 years because of a non-publication request can look an awfully lot like a “submarine” to the ultimate target. So Alan’s point is well taken, in my opinion. But I suppose I’m in for some indignant “assailing” now that I’ve aired a personal opinion.)

    Now, let’s look at your responses.

    Noise: “I must take issue with your ignorance and anti-patent bias. [Rant about trolls and submarines omitted.] … Try to post when you know something about the topic, instead of being misleading and simply wrong.”

    Noise: “… refrain from wanton and clearly incorrect attacks… Leave your scares from troll battles on the sidelines where they belong. … Besides, you know your [sic] in trouble if you have Malcolm and 6 taking your side.”

    Noise: “Time to turn in your registration Alan. It’s one thing to not like the law. It’s another to post with such wanton disregard that you sound as ignorant as 6.”

    These are examples of the high-minded debate you insist upon? Give me a break.

    “Much to Malcolm’s consternation, my assailing has borne fruit with MaxDrei.”

    You are truly full of yourself. Max, would you be a dear, and come forward and testify about how your life has been positively changed by Noise’s posts? Thank you in advance…

    “…the Trainwreck will continue. So will my posts as I choose.”

    And I, for one, have never suggested that you stop posting. I’ve only pointed out that your posts are often condescending, repetitive, and annoying. Even when you’re right.

  43. 114

    BigGuy,

    Regarding your comment “suggesting that the law should be changed is not displaying a “wanton disregard” for the law.”

    That’s great, but that’s not what Alan is saying. If you are going to lecture me lecturing others, YOU need to get it right first. Alan is spouting falsehoods and incorrect characterizations based on his personal experience which do not apply to the topic at hand. Or do you think that requests for nondisclosure are the same as Submarine patents? How do you feel about an inventors “pro” being taken in publication without any corresponding “quid” being provided? What would be wanton disregard in your eyes?

    sucemabite, I’m expressing my opinion just as anyone else can. You are free to ignore it if you don’t like it. Some such as 6 and Malcolm readily do so. They run from my challenges and offer nothing of substance. However, whem I am right and you choose to ignore my statements, the rest of the blog readership is free to see that as well. The skirts and track shoes are visible to everyone.

    When you have a pattern of being incorrect and sloppy, don’t hide behind “well the law is wrong and I want to change it”. I don’t assail those with different viewpoints who base their arguments on logically and legally sound principles. I may disagree with many here but I do not assail just because the viewpoint is different. I assail the inane.

    Further, just because my opinion calls on the carpet those who make ridiculous statements and otherwise blatantly incorrect applications of the law does not mean I want silence. I love a good debate. But it’s got to be good. And its got to be a debate. I have little patience for those who wish to indulge themselves but cannot or will not put forth the effort to apply reason to their arguments or glibly brush aside logical and reasonable counters brought against their own viewpoints. That’s not debate. That’s Malcolm, 6 and others I assail using a fingers-in-the-ears, I’m-just-going-to-keep-talking monologue. Where is your posts disdaining that type of behavior? You are notably quiet in that regard. Why is it that you only seem to come out of the woodwork when someone is kicking the crap out of Malcolm or 6? Why does it appear that you are as one-sided in your angst about what appears on the boards as Malcolm and 6 are with their (in)ability to apply logic and reason?

    Much to Malcolm’s consternation, my assailing has borne fruit with MaxDrei. MaxDrei has alternate viewpoints that are indeed based in a degree of legal reasoning (just not the US’s). His posts have gotten better since I pounded on him when he would post in the MM/6 manner. MaxDrei does care about his viewpoints holding a semblance of respectability and he his putting forth the effort. Kudos to him and jeers to those who would drag him back down.

    Of course, no matter what I say, if your fingers are already in your ears, the Trainwreck will continue. So will my posts as I choose.

  44. 113

    Mr Heller, thanks. What you report from your GB friends is accurate. There always was an explicit provision in UK law to protect inventors publishing during the Paris year. That has been swept away, in deference to legal certainty and “same invention” in the Paris Convention. Outside the USA, the only safe behaviour (Rule #1) is to tell the PTO before you tell anybody else. So, those who say FtF will produce more filing events are thinking logically. Those who say FtF will rid the world of interferences are also thinking logically. Those who say FtF creates a new monster “derivation proceedings” are wrong, in 100 years of experience in ROW. As to the USA, I suspect they may be right. so, if Rule #1 is out of the question, in the USA, better stay with FtI.

    And thanks for your answer on interferences. I wasn’t expecting that A would be the senior party. Sometimes one gets a nice surprise.

  45. 112

    Mooney, did you lose a bunch of money in the tech bubble, or get sued for patent infringement at some point? Why do your sympathies lie so strongly with those who want to freely, and without fear, merely copy other people’s innovations? There must be something driving you, like a lost family fortune.

  46. 110

    MaxDrei: Below is Paris Convention, Article 4B. Now what it literally says that a subsequent filing shall not be invalidated by “public disclosures” by anyone, including the inventor, during the priority period of what was in the priority document. But, case law seems to the contrary. For example, an American files a provisional application, publishes, then files in the EPO claiming Paris Convention priority. That publication can be used against any claims in EPO case not fully supported in the provisional. This seems more like US law regarding “effective filing dates” than what the Paris Convention states. Indeed, the EPO case deciding the issue relied upon a Federal Circuit decision regarding effective filing dates.

    As I said earlier, such public disclosure is of little concern to Americans and their US patent applications due to our grace period or In re Stempel. However, it is a trap for non US filings that most Americans do not understand. I also understand from some of our British friends that the holding of the EPO was an unexpected shock as it was contrary to more than a century of British law and practice.

    B. – Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union.

  47. 109

    sucambite: “So you’re the self-declared patent attorney policeman now?????”

    suca, that particular troll has been pretending to “police” this blog from the moment it donned its sock. Be careful or it might start “assailing” you (for your own good, of course).

  48. 108

    Ned: “I saw your quotes that it ended in 2003 with a “directive.” 1) Who issued the “directive.”

    I need to see the entire quote you’re referring to.

    “2) What or who caused the bubble in the first place?”

    The bubble was caused by a scramble to “get rich off the Internet” (you remember the tech bubble, don’t you? — it preceded the real estate bubble) and was aided by the PTO’s inability or refusal to follow its own rules for examining “high tech” applications.

    Btw, I predict that Kappos will try to inflate another patent bubble. I also predict that if he succeeds it will pop very quickly and when it does it will smell even worse than the first one.

  49. 107

    “So you’re the self-declared patent attorney policeman now?????”

    Now? Noise annointed herself chief patent demagogue quite some time ago. Her pulpit-pounding posts are getting even more tiresome than Malcolm’s “those claims are cr@p” missives. In my humble opinion, that is.

    For what it’s worth, Noise, suggesting that the law should be changed is not displaying a “wanton disregard” for the law. It might be a wanton disregard of your contrary opinion, but not of the law. You should know better. Especially if you’re going to lecture others.

  50. 106

    MaxDrei: “Mr Heller, one more thing, if I may. In an interference, it’s not good to be junior party, right. Presumptions, prima facie, that sort of thing. Suppose that, over a 14 month period, the following sequence of apps is filed. A files pro in UK. B files pro in the USPTO. A files non-pro at the USPTO, declaring Paris priority. B files US non-pro, declaring his US pro priority. Who is senior party, and why?”

    A is senior. Why? Earliest filing date. Both parties have a right to prove earlier invention dates.

    Also, even if the A UK provisional were considered prior art, there still would have to be an interference as under US law two patents on essentially the same invention cannot exist. During ex parte examination, the later-filed is rejected over the earlier-filed under 102(g). The rejection can only be overcome through an interference or a showing that the claims do not in fact interfere.

    In practicality, there are issued patents that DO cover he same invention. A notorious example is the patent on the LZW algorithm and an earlier-issued IBM patent to Miller, IIRC. The owner of the LZW patent was active in licensing it, but never brought suit due to the prior Miller patent sitting there which effectively was prior art due to its earlier dates. I say “effectively” because the LZW inventors may have been able to win an interference.

    I hope Europeans know that they too can prove in their country’s invention dates just like Americans. The law on this was changed some time ago.

  51. 105

    “It’s one thing to not like the law. It’s another to post with such wanton disregard that you sound as ignorant as 6.”

    So you’re the self-declared patent attorney policeman now?????

  52. 104

    “If you don’t like that deal, keep it as a trade secret, if you can.”

    And if you can’t keep it a trade secret, simply refrain from any R&D, manufacture, or any other costly activity that will result in freeloading competitors stealing your hard earned market stream.

  53. 103

    Time to turn in your registration Alan.

    It’s one thing to not like the law. It’s another to post with such wanton disregard that you sound as ignorant as 6.

  54. 102

    We need a new “quid pro quo” definition.

    You disclose your idea to the public and the PTO/courts will determine if it is worthy of a patent and grant/uphold one if it is worthy.

    If you don’t like that deal, keep it as a trade secret, if you can.

  55. 101

    It’s the “ripping off” part that is the problem. If the USPTO and Courts weren’t packed with anti patent trolls then publication would not be a concern. The value of the information (novel and non-obvious) would cause it to mature into a patent. But these, days, the goal keepers have taken the stance that necessity is the mother of obviousness, and truly valuable disclosures are proving to be worse than a waste of time. What we have now is a recipe for motivating increased trade secrets, leading to less disclsoure of truly valuable ideas, which is the opposite of promoting the progress of science and the useful arts.

  56. 100

    early publication serving lofty goals vs what is left in the quid pro quo for the inventor – how lofty is ripping off the inventor by taking all the pro and giving no quid?

  57. 99

    “Congress isn’t able, to pass anything solid and game-changing.”

    Max, re our Capitol Hill: I do not jest when I say I do not underestimate a grown man capable of wearing a Batman costume in public (you may have to google that one, sorry). I agree in fairplay; everyone should have to show their cards at the same time, and U-boats scare people. I get all that. The early publication “serves lofty goals” crowd though …grrrr.

  58. 98

    Fisher, you jest. Congress isn’t able, to pass anything solid and game-changing.

    The publication bit: what I mean is that Americans can refrain from publishing until the PTO issues their A publication but, if Johnny Foreigner wants parity with that, he must publish on the same day as he files his Paris Convention priority application. Now an 18 month black hole, between prio date and A publication, which obtains all over the world, is a reasonable attempt to balance fair protection for the inventor with reasonable certainty for the public.

    But I’m sure you disagree. Never mind.

  59. 97

    Max: you have nothing to worry about. the patent reformers on our Capitol Hill are going to give the rest of the world everything they want to see in our patent laws, and we will get absolutely ZIPPY in return other than the satisfaction the comes with being a good citizen of the world. I feel better already.

  60. 96

    Fisher, your question, Europe, change of heart? Answer: No, and whatever gave you that idea. My theme is “Do as you would be done by” or “reciprocal treatment” or “Beggar my neighbour”. No need to explain my answer to anybody with a smidgeon of interest in seeing reason. Mr Heller you understand, right?

    Very ironic, Fisher, that you urge me to practise what I preach. Something biblical about motes and eyes springs to mind.

    But never mind. I’ve already got what I wanted out of this thread, thank you very much.

  61. 95

    max3: “As for your “but” am I to take it that foreigners have to publish the day after they file but Americans..not. I think you just made my point.”

    “have to publish”?, Oh dear. Has Europa experienced a change of heart about the universal blessings brought to society as a whole by early as possible publication of patents? Practice what you preach brother, that’s all I ask. Again, the US had bona fide misgivings about the early pub system. The “flooding” practices have abated somewhat since the gentlemen’s agreements, but let’s see what happens if this economic downturn stretches out. fisher –out.

  62. 94

    Mr Heller, one more thing, if I may. In an interference, it’s not good to be junior party, right. Presumptions, prima facie, that sort of thing. Suppose that, over a 14 month period, the following sequence of apps is filed. A files pro in UK. B files pro in the USPTO. A files non-pro at the USPTO, declaring Paris priority. B files US non-pro, declaring his US pro priority. Who is senior party, and why?

  63. 93

    Fisher Ames I take it you are American? Above, I said I was expecting shoulder shrugs to my 102(e) discrimination point. You just gave me one, when you wrote:

    “That’s true with respect to the foreign filing standing alone, but there is nothing stopping a foreign applicant from posting his/her application on the internet the same day that the foreign app is filed or otherwise publishing the app information to create 102(a)/(b) publication art that IS available for sword fighting in the US. Early publication enthusiasts should have no problem with this suggestion.”

    As your “That’s true”..thanks.

    As for your “but” am I to take it that foreigners have to publish the day after they file but Americans..not. I think you just made my point.

    As for you, Mr Ned Heller, you say the foreigners should be grateful that they have an opportunity under US law to initiate an interference, in order to get justice done. Another sort of shoulder shrug, I think.

    And what’s all this about the Rest of the World operating: “..contrary to the plain language of the Paris Convention.”. Really. If so, you remind me of the old man driving the German Autobahn, phoning his wife and declaring “On the news they said to watch out for somebody driving the wrong way up the autobahn.Well, there isn’t just one, there’s hundreds of them”. Will you tell me a bit more of this theory of yours?

    On second thoughts, don’t bother. We have the week-end ahead of us, and I’m at least 6 hours ahead of you.

  64. 92

    I have a framed picture of Jon Dudas on my wall. I feel that it nicely accentuates my John Doll chia pet.

  65. 91

    MM, re: Bubble.

    I saw your quotes that it ended in 2003 with a “directive.”

    1) Who issued the “directive.”
    2) What or who caused the bubble in the first place?

    Ned

  66. 89

    “Guess which government agency received the most U.S. patents through the year’s midpoint. If you had answered the U.S. Navy, you would have been right in 2008. But in the fiscal year that ended on June 30, the winner in terms of both the value of its patents and sheer volume wasn’t even an American entity. It was South Korea’s Electronics & Telecommunications Research Institute.”

    1. South Korea Electronics & Telecommunications Research Institute
    2. U.S. Navy
    3. U.S. Energy Dept.
    4. U.S. Army
    5. U.S. National Aeronautic & Space Administration
    6. Japan Ministry of Education, Culture, Sports, Science & Technology
    7. U.S. Health & Human Services Dept.
    8. Singapore Agency for Science Technology & Research
    9. Japan Ministry of Economic Trade & Industry
    10. France National Center of Scientific Research

    link to businessweek.com

  67. 88

    “The U.S. Patent & Trade Office just showed me preliminary data for fiscal 2009, and it shows that 93,725 patents were issued to U.S. residents. While that’s 49% of the total 190,121, it’s up from 91,843 a year earlier. The rise might continue next year. Americans filed 264,197 patent applications in the fiscal year that ended Sept. 30, according to the office’s preliminary data. That’s 55% of the total, and up from 256,887 in fiscal 2008.”

    link to businessweek.com

  68. 87

    Alan,

    Respectfully, then, show your acuumulated 35 years of wisdom and refrain from wanton and clearly incorrect attacks, then I won’t have to call you out on legitimate actions that attorneys can (and should) do for their clients including protecting their work before a patent issues. Leave your scares from troll battles on the sidelines where they belong.

    Besides, you know your in trouble if you have Malcolm and 6 taking your side.

  69. 85

    Dam I was looking pretty good till that last one, if I have a framed picture of Newman, but I also believe all of the above, can I still be in with the cool anti-patenters?

  70. 84

    Alan: ” I am not anti-patent. I am anti-what the US patent system has become.”

    And here’s to you, Alan! The “anti-patent” epithet is quickly hurled at any attorney or agent who dares to question the vapid “more patents = more better!” position of the patent bulls who lurk here.

    For those keeping track, you are “anti-patent” if you:

    *believe that some attorneys engage in inequitable conduct before the PTO

    *believe that some applications are filed that lack non-obvious subject matter

    *believe that 35 U.S.C. 101 has teeth capable of shredding some things “under the sun made by man”

    *believe that Beauregard claims are invalid per se

    *believe that the presumption of validity should be easily rebutted if a substantial Examiner error can be demonstrated

    *believe that applicants routinely file claims under oath that they know are invalid

    *don’t have a framed picture of Judge Newman on your wall

  71. 83

    “Please direct me to a post where you unequivocally state that you are a patent attorney.”

    MM: >>LOL. Are you sure don’t want me to bake you a >>cake first?

    Okay, Malcolm. It is pretty clear that you are not a patent attorney otherwise why not just say yes I am a patent attorney. Let me show you how easy it is. I am a patent attorney.

    It sure is fun chasing you.

  72. 82

    “Please direct me to a post where you unequivocally state that you are a patent attorney.”

    LOL. Are you sure don’t want me to bake you a cake first?

  73. 81

    I have always gotten the impression you were anti-patent Alan McDonald. For years, and especially after reading your latest post.

  74. 80

    Noise above Law:

    Before you call me ignorant about patent law, you may want to look up my registration number and realize that I’ve been in this business for over 35 years. I am not anti-patent. I am anti-what the US patent system has become. And as long as there is an ED Texas, I have to do everything possible to avoid it.

    Just because I seek to protect corporate clients from trolls and their overbroad claims does not mean I don’t know what my proposals would do. Level the playing field between trolls and their “infringers”.

    If you’re an individual inventor or NPE coming with a non-disclosure agreement you won’t make it past the receptionist’s desk if I have anything to do with it.

  75. 79

    MM: >>You either have early-stage Alzheimers or >>reading comprehension problems.

    Please direct me to a post where you unequivocally state that you are a patent attorney.

  76. 78

    As I said earlier, I think the larger problem is the lack of priority if any element is not fully supported.

    Example: priority document discloses A, B and genus of A and B.

    PCT, US, or EPO case further discloses C and claims genus of A, B and C.

    Intervening art discloses A, B and A + B.

    The Paris Convention suggests that the intervening art disclosing the same subject matter should not be effective prior art against a later application claiming priority to that application. However, case interpretation will deny priority to a claim to C and a claim to the genus A, B and C, essentially rendering those claims unpatentable.

    This does not affect US applicants now as one can distinguish an intervening reference not a statutory bar by showing prior invention of the subject matter of the disclosure. In re Stempel. But in first-to-file countries, as the US soon will be, the intervening art is good and effective, contrary to the plain language of the Paris Convention.

  77. 77

    “I am thinking of swords and shields”

    That’s true with respect to the foreign filing standing alone, but there is nothing stopping a foreign applicant from posting his/her application on the internet the same day that the foreign app is filed or otherwise publishing the app information to create 102(a)/(b) publication art that IS available for sword fighting in the US. Early publication enthusiasts should have no problem with this suggestion.

  78. 76

    MaxDrei — in a way you are right and in a way you are wrong. The late comer claiming the essentially the same thing will be thrown into or can be thrown into an interference where he will lose due to being the junior party.

  79. 75

    Ned, I am thinking of swords and shields. You can rely on your non-US prio to defend the validity of your own claim , but not to assail any claims of your US competitor. So, even if you get your own claim through to issue, you can’t use your earlier prio to stop your later-filing US competitor getting his own US patent as well. It ain’t like that, anywhere else on Earth.

  80. 74

    MaxDrei, please educate us about the evidence problems of unpublished prior art in Europe. I would be very interested. For example, what corroboration is needed?

  81. 72

    NWPA: “Well, you never affirmatively assert that you are a patent lawyer. Do you?”

    You either have early-stage Alzheimers or reading comprehension problems.

  82. 70

    broje: “However, I don’t know of a single case in which provisional rights have been enforced at trial. Maybe they have played a role in amounts of settlements. Does anyone know of a case in which provisional rights were successfully enforced?”

    What about this one?

    link to patentlyo.com

    And I expect there have been others. As you noted, they also surely play a role in settelements. No litigator worth his/her salt is going to omit provisional rights from the calculation of damages if there is a remote damage of collecting them.

  83. 69

    >>appealho: “NWPA, he’s either an examiner or >>some other anti-patent dude. But, I do agree >>with NAL that MM most definitely is not a >>patent lawyer.”
    >>Here we go again. Get your tinfoil hats ready.

    Well, you never affirmatively assert that you are a patent lawyer. Do you? I think you are trying to hide behind a bit of tinfoil, but we can see you MM.

    Don’t be ashamed. I have very good friends that are examiners and enjoy thier company and think they are smart people. It’s ok to come out of the closet MM.

  84. 68

    Ned tell us about your experience of 30 years of absolute novelty in Europe, throughout the tens of thousands of corp-on-corp mega-oppositions at the EPO, over blockbuster patents with no expense spared fighting. Tell us if you will how often it happens that this “unpublished” art of yours plays a role, and what evidential weight it pulls. Then tell us about how searching is done these days. It’s by a little man, all on his own, looking at a PC and searching the net, isn’t it?

    Back in the 19th Century, the UK gave out patents for “communication inventions” brought back to the UK from the deep dark world outside. In Europe, that sort of thing went out with the Ark.

  85. 66

    MaxDrei, how is Section 102(e) incompatible with the Paris Convention. One still has priority to one’s foreign filing date, provided, of course, the foreign document fully supports the claimed invention. (I know that this latter aspect of US and now European law (fully support) is highly controversial.)

  86. 65

    “It’s hard to believe that before 2003, 102(e) rejections were almost unheard of.”

    Why? Prior to 2003, we were in Magical Bubble Land when patents were barely examined at all.

    appealho: “NWPA, he’s either an examiner or some other anti-patent dude. But, I do agree with NAL that MM most definitely is not a patent lawyer.”

    Here we go again. Get your tinfoil hats ready.

    Troll: “it is probably your biggest weakness, but one I see you willing to acknowledge and that is why I place you in a different class than the usual crap posting crowd. My assailing you is indeed meant to make you better.”

    Ewww, MD, I’m sorry you had to read that. P.U.

    [sprays thread with air freshener]

  87. 64

    Thanks Fisher. I still don’t understand how the USA seriously comes to the idea that its 102(e) domestic patent law is compatible with the Paris Convention. Tell me, does the USA advocate that all the other members are free to copy 102(e) into their patent law, so that, if valuable rights are not to be misappropriated, priority filings will need to be made simultaneously in CN, JP, KR, EPO and any other market of importance?

    Much shrugging of shoulders, no doubt, and “Please yourself” mutterings, as people read this.

    Heller, thanks for the gracious note. I hope I don’t spoil the mood, with my latest rant.

  88. 63

    fisher ames, speaking of “invention in the United States,” the last time I checked, the pending patent bill will make “known or used,” which is now limited to the United States, universal. Imagine that!

    Now couple this proposal with a reduction in the “clear and convincing evidence” standard being advocated by the big infringers and their fellow travelers in academia, and we have a vision of the future: the big company can afford to scour the world for unpublished prior art and present it in court. The little guy may not have the resources to investigate the credibility the unpublished foreign art and will no long have the benefit of the “clear and convincing” evidence standard.

    Now we see one more page in the plan being promoted by the various anti-patent coalitions — a plan to severely undermine US patents.

  89. 61

    MaxDrei, I was just offering you some insight into US law. I also appreciate your kind explanation of European law from time to time. All of us should view this forum as a learning tool.

  90. 60

    “Who knows about that guy Hilmer?”

    Max, a little context may shed some light on the CCPA’s Hilmer decision. Section 102(e) is a codification of Milburn v. Davis-Bournonville; a SCOTUS decision written by Justice Holmes way back in 1926. Among other things, this case says that the earlier filing date of the reference US patent is prima facie evidence that the current applicant is not the “first inventor” in the United States as required by US statute. Thus, an earlier priority filing date under Section 119 based on your filing date at the Vatican patent office would not constitute prima facie evidence of a different first inventor in the US than the current applicant (under the “Milburn Rule” or 102(e)).

  91. 59

    If you are having trouble word searching the PDF just call up the patent in Google & do the word search. It highlights the search terms within the PDF of the patent so it is clear where it can be found. Amazing how behind some people are ;)

    MVS

  92. 58

    “If an inventor comes up with an idea and files a patent application on it, it is NOT protected. If he takes his invention to market (e.g. starts to sell it) and a competitor starts copying it, if the competitor stops the “infringement” the day before the patent issues THERE ARE NO DAMAGES TO COLLECT, yet the inventor may have lost out on the most valuable initial market. This is a huge problem with small inventors that take their ideas to large companies.”

    KD, there’s something called “provisional rights” that was added when the publication rules went into effect. Basically, if your claims issue as published, then you can start calculating damages from the date of publication forward. You just can’t enforce them until the patent issues. However, I don’t know of a single case in which provisional rights have been enforced at trial. Maybe they have played a role in amounts of settlements. Does anyone know of a case in which provisional rights were successfully enforced?

    IANYL. TINLA. SPORK.

  93. 57

    I’m not arguing with you Ned. Readers should factor into my comments that I know the patent law of Europe much better than the patent law of the USA and that I’m using this blog to improve my knowledge of US patent law. Also, I assume that US patent law can sometimes change. So, I argue what the law might be, after such amendment, rather than what it is today.

    Still a worthwhile exercise, I like to think.

  94. 56

    Evil Dave: have your PDF program do OCR text recognition on the PDF patent. Then you can word search and still have the column and line numbers. I know Adobe Acrobat Pro does a good job with this.

  95. 55

    MaxDrei, you suggested one could get RR from published applications upon issuance of the patent. This is true, but only under extreme circumstances.
    – The published claims have to issue; and
    – The infringer has to be given actual notice.

    As we all know, claims typically never issue as filed. Secondly, the requirement of actual notice is onerous, as with an issued patent all one has to do is mark his or her product if the claims are not directed to a process. If one does not have a product or the claims are to a process, marking is not required.

    Now if the law were the same with respect to damages and notice as they are with respect to issued patents, that would go a long way to leveling the playing field. But the problem of claims issuing unamended remains.

    Now the better proposal here would be like the default law in Europe: if a claim is narrowed, past damages are not lost. Think about that for a few moments. The default US law is the opposite. If the claims are narrowed, one loses past damages — which is a major reason for infringers to use reexaminations after being accused of infringement.

    Now if the law regarding published applications were that at least a RR would be allowed if the infringer infringed allowed claims from the date of an amendment, provided they also infringed a claim as filed, things would be a lot more fair to the inventor and not unfair to the infringer.

  96. 54

    35 USC 102(e). It is becoming more important is it, patent attorney? That’s the Henry Ford novelty provision, right. Any colour you like, as long as it’s black. Any language you like, as long as it’s English. Any Paris Convention country Patent Office you like, as long as it’s the USPTO.

    Or do I see it wrong?

    Who knows about that guy Hilmer? Who was he then?

  97. 52

    NWPA, he’s either an examiner or some other anti-patent dude. But, I do agree with NAL that MM most definitely is not a patent lawyer.

  98. 51

    “There’s this thing, you might have heard of it, it’s called a ‘joke’.”

    Oh! Jokes. I’ve heard of jokes. Usually they’re funny though. :-)

  99. 50

    “So you consider being called an examiner an insult?”

    Did you put 2 and 2 together to come up with that? Notice the winking face “;)” after my statement? There’s this thing, you might have heard of it, it’s called a “joke”.

    Noise, I suppose you’re right. I’ll try to keep it simple.

  100. 49

    >>Hindsight,

    >>I am surprised that you cannot see that >>Malcolm isn’t an actual lawyer, although he >>does like to pretend that he is one.

    I’d bet that he is an examiner.

  101. 48

    “You don’t have to insult me like that”

    So you consider being called an examiner an insult?

    “It’s not like I’m giving legal advice here.”

    Thank heavens for small favors.

  102. 47

    Alun,

    I must take issue with your ignorance and anti-patent bias. Preserving a client’s best interests in advancing a non-publication request where appropriate has absolutely nothing to do with submarine patents. Nothing.

    Your value-laden post falsely indicates otherwise. Preservation can be proper for both NPE and PE, for both trolls and for non-trolls, as the sets of terms are not synonymous – Practicing entities clearly can behave both like trolls and non-trolls. Your attempt at using language to color the debate simply rings false when one understand what a submarine patent is, or rather, was. The change in patent term tied to issue versus file date effectively ended the practice of submarine patents.

    Try to post when you know something about the topic, instead of being misleading and simply wrong.

    Hindsight,

    I am surprised that you cannot see that Malcolm isn’t an actual lawyer, although he does like to pretend that he is one.

    MaxDrei,

    You need to keep your history (of the US) in line – Jefferson came around to the notions of patents as promoted by most of the patent bar late in his life and would not be turning in his grave at the pro-US bent of comments here – quite the contrary, he would be turning in his grave at the thought of the US sacrificing its advantages just to be like the rest of the world. Yes, you do need to understand the fundamental differences in US patent mindset – it is probably your biggest weakness, but one I see you willing to acknowledge and that is why I place you in a different class than the usual crap posting crowd. My assailing you is indeed meant to make you better.

    Jules,

    You are being too complicated. If secrecy is that important to you, request non-publication. Generally, you then either keep the application sealed until it is a patent, or it stays sealed forever.

  103. 45

    “This is why you’re an examiner, and not a practitioner.”

    It’s not like I’m giving legal advice here. Good lord … where’s your creativity? I was just throwing a situation out there. You don’t have to insult me like that ;)

  104. 44

    Here Here Mr. Riley!

    One other comment for small inventors.

    If an inventor comes up with an idea and files a patent application on it, it is NOT protected. If he takes his invention to market (e.g. starts to sell it) and a competitor starts copying it, if the competitor stops the “infringement” the day before the patent issues THERE ARE NO DAMAGES TO COLLECT, yet the inventor may have lost out on the most valuable initial market. This is a huge problem with small inventors that take their ideas to large companies.

    If you add publication to the mix, even companies who have never been approached by the inventor will know about the invention. “Provisional rights” (why not call them publication rights since they stem from a published application, not a provisional application?) are almost meaningless because if the claims are amended they are no longer available unless the application is published again and then the clock starts over.

    If there is instant publication, this is the worst case scenario for small inventors who may never get a patent often because they simply can’t afford the process. Instant publication would mean that they dedicate their idea to the public and never get a dime.

    On the other hand, under the present system if an inventor keeps his idea secret (uses confidentiality agreements and non-compete agreements) and approaches a big company, the inventor at least has an ace in his hand. The company may be willing to sign an agreement in order to learn about the idea and the inventor may have contractual rights to punish bad behavior. What incentive would a company have to sign such a contract if they could just put a watch on the patent office publications? Further, if under the current system the patent never issues, the inventor does not have the added insult of having disclosed it to his competitors!

  105. 43

    Depends who you ask Jules. Most writers here say that filing anywhere in the world is a complete waste of money. The only jurisdiction worth bothering about, they say, is the USA. What is it that those investor advertisements always caution? Oh, I know: “Past performance is no guide to the future”. Those filing patent applications ought to be thinking about the future, not the past. Medical device manufacturers, for example, used to file only in the USA. Not any more These days, they can make good profits from innovative medical devices, even outside the USA. In fact, it is American manufacturers who make most of the money out of medical devices, in Europe. That’s because 1) American medical manufacturers are more entrepreneurial than Europeans and 2) they at least know they have to file before they publish.

  106. 42

    “For the little guy, here’s an idea…”

    This is why you’re an examiner, and not a practitioner.

  107. 41

    To account for my gross error in briefly misunderstanding 35 USC 122(b)(1 and 2) above, here is what I was getting consfused with:

    For the little guy, here’s an idea…

    Discretely publish your invention so that it is “public” for the purpose of art under 102(a), then file your patent application one year later to avoid your publication being 102(b) art against your application.

    By discretely, I mean something like put it on the internet but prevent it from being crawled by Google. Limit its searchability drastically, but not too much that it isn’t public.

    By doing so, you basically kept your invention secret for 30 months instead of 18. But was it worth all that effort?

  108. 40

    Ah, I see now, Mr Riley. The same old story. All the world’s ills will be solved, as soon as there’s one rule for me and a different one for everybody else.

    Because: I invent, he copies, they stifle.

    Therefore, simple justice demands:

    Give me (David) a patent, any time I ask for one.

    Categorize any patent application from the other fellow (Goliath) as a brake on the only sort of innovation that counts, and reject it.

  109. 39

    Early publication has been a disaster for small entities.

    1) It allows large entities to look at and start working on circumventing the invention long before the inventor has rights granted.
    2) This frequently costs the inventor the highest margin initial sales of product. Patent Pirating companies can rush the invention to market and use a small percentage of their ill gained profits to litigate the real inventor into bankruptcy.
    3) Publication is being used by some large companies to dump tons of alleged prior art on the inventor’s attorney which forces the attorney to formally address each even when they are not especially relevant. The cost of this is born by the patent applicant and it often dwarfs the normal cost of filing a patent.
    4) Publication greatly aids those companies who create false prior art. Two examples being Microsoft with Eolas and RIM with NPT.
    5) Published applications which do not result in issued patents become pseudo prior art. They often are not actually prior art but do become a weapon in the hands of patent pirating companies trying rationalize their theft of others inventions.

    Long pendency is another disaster for small entities. A better approach than early publication would be for the patent office to actually prosecute patents within eighteen months. No patent application should be published prior to rights being granted; thereby preserving the applicant’s right to choose trade secret protection as opposed to patenting the invention.

    There is no reason that the USPTO cannot manage pending patent applications to ensure that they are prosecuted within eighteen months.

    There is concern in the inventor community that Kappos has no entrepreneurial experience and that his long tenure with IBM has not equipped him to understand independent inventors or small company’s unique problems. His testimony about the nature of inventing demonstrated a profound ignorance and typical corporate arrogance.

    Corporate politics dictates spreading credit for inventions around. But reality is that most inventions start in one mind. They may be fleshed out by more than one person but that is not really the same thing as the original conception.

    There is no question that Kappos is making improvements in the functioning of the USPTO. It would be difficult for anyone to do worse than the previous two and the forth predecessors.

    It seems equally clear that IBM, Microsoft and other large companies have either bought and or duped the Obama Administration and that no consideration is being given to the adverse impact Patent Deform will have on small entities. Patent Deform is a bald faced attempt to turn the patent system into a king’s sport by increasing the cost of getting and holding onto patents by a hundred fold or more and at the same time decreasing recovery for infringement by ten to a hundred fold.

    America’s patent system has long been a significant part of making America the land of opportunity. The patent system has been a vehicle where an upstart startup could challenge vested interests. IBM personifies how as large companies age they compensate by filing hordes of minor incremental patents. They substitute quantity for quality, arrogantly misappropriate others inventions and then whine when they are held accountable.

    Over thirty percent of patents filed by domestic interests are small entities. Kappos has made it very clear that his agenda is to disadvantage inventors and small companies with patent Deform. The problem with doing this is that in the end large companies will stagnate even more than they have with having use nipping at their heals.

    Ronald J. Riley,

    I am speaking only on my own behalf.
    Affiliations:
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.PatentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (810) 597-0194 / (202) 318-1595 – 9 am to 8 pm EST.

  110. 38

    the reason for the decline in 102(e) art given by crouch does not wash. with the explosion in filings there is more not less available 102(e) art even with 18 month publication. a more likely reason is examiner laziness as a 102(b) takes less effort than a 102(e) and is less likely to be contested as Hierarchy above points out.

    sarah asking why the office does not do something logical will cause you endless frustration. the office is supposed to be the experts of what is out there including applications not published. only the office has eyes on and only the office can apply this art. yet as crouch shows, the use of this is dwindling. is there less art in this unpublished world? – likely not, and not even with the 18 month publish rule – just look at the pure numbers of aps will tell you this.

  111. 37

    Well you see Hindsight, I’m writing on the basis of my experience, which is different from your experience. My clients operate world-wide so it’s not enough for me to know about patent law in the world east of, and west of, the USA. I need also to know about patent law in the country in between. I admit, I find it hard to understand why the fundamentals of patent law in the USA are different from everywhere else. One would think that society ought to reward, with a temporary monopoly, the inventor who is the first to bring to the public contributions (progress) to the technological arts. But, alone in all the world, the USA rejects that scheme for its patent law. I’m sure Mr Jefferson has long been turning in his grave on that point.

    So, Hind, that’s why I’m active here. And you’re helping me to get inside the head of a typical US patent attorney, for which I must thank you. Thank you.

  112. 35

    MaxDrei – it is not a canard for US law. You are messed up and will likely confuse idiots in the states that think you know what you are talking about. there is no delay indefinitely at will. there is no chilling effect in the reject-reject-reject culture. Dont you get that the chilling effect would only come from an actually issued patent? Dont you get that this is exactly why your use of canard is just so wrong?

    No patent and published equals quid and no pro (actually, no quid for the inventor and all pro for the rest of the world who now has access to the unpatented, yet published work).

    it is standard advice to my clients to think long and hard about what they are giving up by not going for the no publish option. Will they really use any rights gained outside the US? if not, or even if the gain is small, the tradeoff to forego foreign filing can often be worth the preservation of knowledge. mooney is comitting malpractice by advising publication on filing date and is clearly not an attorney anyone should be listening to.

  113. 34

    Why not after security review, you record it in a different area. perhaps another building. then the examiner does his work sends it back to the recording area. and another set of examiners flag what is in process with claims that compete or outrule the claims that the examiner believes after his work are patentable. Then the secret remains secret. Then you go from there. That would cut through all the crap. And as far as how prior art is reviewed? Ebay does it every day with layers of new things every single day. Why can’t the PTO follow the same category and then sub category and so on the same way ebay does it? that is a spread sheet. and everyone uses spread sheets.

  114. 33

    Another great thread for a European reader. As the Wildebeast observes, for those still practising in ROW, first publication only after issue of the patent is nothing more than a historical curiosity (apart from in the USA). We know no system other than the A publication as the medium of publication for prior art purposes and the B publication useful only as the definition of the scope of the patent monopoly granted.

    Welcome to the world.

    Somebody above raises the canard (again) that pre-issue publication breaks the social contract between Government and inventor (monopoly in return for disclosure of an invention). Does s/he not realise that emergence of the A publication sets up a right for monetary compensation in respect of acts committed before issue that would constitute infringement if committed after issue? Does s/he not appreciate what a chilling effect on copying is achieved by the emergence of the fearsome A publication of an app marching towards issue, and under the control of an Applicant who can, at will, delay prosecution indefinitely to see what the competing products turn out to be, or pushes on through to issue, in double quick time, to enjoin the infringing blighters?

  115. 32

    another loss for the US (and its inventors) by trying too hard to be like the rest of the world without a decent rationale. What does the inventor get out of his work being published? In fact the Office loses its impetus to get the examination done – they already got the quid.

  116. 31

    Publication could more usefully be brought forward to 13 months – thus allowing time for the security review and to make any priroty applications under the PCT.

    And by the way if early publication is such an advantage of the US system why did it take until 2001 to do it – Europe has been doing it for at least two decades before

  117. 30

    The default rule should be non publication. If a patent application is filed abroad or PCT, it will be published there. That is enough.

  118. 29

    I agree with this:

    Publication broke the basic social contract between society and the inventor. Society gets the advantage of the disclosure, even if the applicant never receives a patent.

    Posted by: Dale B. Halling | Oct 14, 2009 at 06:10 PM

  119. 28

    …my bad

    18 mo from earliest priority…

    “It certainly is convenient to keep competitors in the dark but other than the “security check” (LOL) there is no reason that applications shouldn’t be publically available on their filing date.”

    This is pure hogwash…

  120. 27

    I have seen so many provisionals cobbled together at the last moment with minimal disclosure that I expect to see priority to that provisional being denied in the later-filed non-provisional because of enablement and best mode problems in the provisional.

  121. 26

    “Provisional applications on the other hand, ‘secretly’ cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.”

    “I’m not sure this is correct. Isn’t the 18 month to publish calculation made from the earliest priority date, rather than the filing date? I don’t think there is a 30 month availability. However, with a Do Not Publish request, the filing can stay secret until the patent process is complete (upwards to several years).”

    Yes; the 18 month pub is from the earliest priority date; in this case the provisional filing date.

    “(Also) if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication.”

    Though rare in my (admittedly limited) research, it does surprise to see the occasional non-provisonal relying on a provisional where the non differs sufficiently from the pro to warrant more accurately calling the non a CIP.

    Would be interesting to see a patent issued on such a foundation in an infringement action involving its priority date…

  122. 25

    Publication broke the basic social contract between society and the inventor. Society gets the advantage of the disclosure, even if the applicant never receives a patent. We should adequately fund the PTO, so 102(e) issues are rare and go back to not publishing patent applications.

  123. 24

    “I personally don’t want my competitors knowing what I am filing on until it is absolutely necessary”

    It certainly is convenient to keep competitors in the dark but other than the “security check” (LOL) there is no reason that applications shouldn’t be publically available on their filing date.

  124. 23

    “Also if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication.”

    Correct. Because you can bet that the examiner was too lazy to check the provisional. And the BPAI has endorsed such laziness (in whatever case that was).

  125. 22

    Prosecutors need to know 102(e) inside and out, and 103(c). Seen a lot of cases where the attorney wasted client money and created needless prosecution history to amend/argue against an ineligible reference. Also if the 102(e) ref requires a provisional date, make sure the provisional discloses what the examiner is relying on in the publication. The list goes on.

  126. 21

    “I don’t think you understand 35 USC 122(b)(1 and 2).”

    Oops, you’re correct. I got suckered in. That, and I was getting confused with something else. My bad.

  127. 20

    “The statement is hard to understand, but I get the point… yes, a provisional application can prolong non-publication (secrecy) by up to one year. That’s given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible.”

    Huh?

    I don’t think you understand 35 USC 122(b)(1 and 2).

  128. 19

    “the U.S. had to be dragged practically kicking and screaming to adopt the practice of “laying open” applications that patent authorities in other industrialized nations had been using for years.”

    yes, that’s accurate, but there were legitimate concerns at the time. Let’s hope that “flooding” tactics don’t make a come back in early publication countries.

  129. 18

    “Provisional applications on the other hand, ‘secretly’ cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.”

    I’m not sure this is correct. Isn’t the 18 month to publish calculation made fromteh earliest priority date, rather than the filing date? I don’t think there is a 30 month availability. However, with a Do Not Publish request, the filing can stay secret until the patent process is complete (upwards to several years).

  130. 17

    “Provisional applications on the other hand, ‘secretly’ cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.”

    The statement is hard to understand, but I get the point… yes, a provisional application can prolong non-publication (secrecy) by up to one year. That’s given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible.

  131. 16

    “Provisional applications on the other hand, ‘secretly’ cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.”

    The statement is hard to understand, but I get the point… yes, a provisional application can prolong non-publication (secrecy) by up to one year. That’s given in 35 USC 122(b)(2) as an exception to 122(b)(1). Some companies do this masterfully, perfectly timing each filing to prolong secrecy to the maximum possible.

  132. 15

    “Provisional applications on the other hand, ‘secretly’ cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.”

    Huh?

  133. 14

    curious wrote: “early publication of patent applications is another advantage of the US. patent system”

    I agree that it is (now) a good feature, but don’t forget that the U.S. had to be dragged practically kicking and screaming to adopt the practice of “laying open” applications that patent authorities in other industrialized nations had been using for years.

    How soon we forget the sordid history of submarine patents…

  134. 12

    NOIP wrote: “Is that before or after the Security Review? (A Security Review can take six months or more.)”

    My thoughts as well. But how about publication immediately after the security review is completed?

  135. 11

    In addition to No One in Particular’s note about the BIS-EAR protocol issue, there is the complication with the Do Not Publish availability.

    And aside from both of these, isn’t there an equity issue? When an applicant provides his work to the Office, the Quid Pro Quo is the divulging of information for a patent. With forced publication (if the applicant wants more than US rights), the Quid Pro Quo is not met, as pendency far outweighs the 18 month publication point in most circumstances. I recognize that if you want more than US rights, the Office asks you to make a sacrifice and one does not have to go for right outside the US, so the Non-publicaiton request “theoretically” preserves the Quid Pro Quo.

    But if you go down the path of instant publication, even if the export control issues could be allieviated, what equity is provided applicants for the publication of their work?

    btw, Love the ME.

  136. 10

    Platitudes of “transparency” notwithstanding, the “secrecy” of 102(e) art, is a small price to pay for confidentiality of the initial filing. I personally don’t want my competitors knowing what I am filing on until it is absolutely necessary – even if it means I don’t know what they are filing on until down the road.

    Provisional applications on the other hand, “secretly” cast the date farther back by as much as one year, so even matter contained in applications that are within 18 months from an applicant’s filing, may enjoy provisional priority that defeats the applicant’s date by as much as 30 months.

  137. 8

    “That’s a great argument for going the trade secret route.”

    Trying to think of a great argument for your opinions to go the trade secret route Mooney.

  138. 7

    ” Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.”

    Is that before or after the Security Review?

    (A Security Review can take six months or more.)

  139. 6

    I know our captain’s captain wants 10-month pendency, but this calls attention to one problem with that: applications abandoned at 16 months wouldn’t get published.

  140. 5

    Good, I much prefer having a published application cited against me than an issued patent. In fact, if you are citing a patent, please feel free to cite the published application of that patent.

    The reason is paragraph numbering as opposed to column and line numbering. It is far far easier to cite to a paragraph and search the PTO’s HTML version of the publication than it is to use a PDF. The PDF of the publication/patent is great for the drawings, but when finding out what those drawings mean, the raw text (in the HTML version of the file) is so much easier to use.
    When you switch to pure text you lose the column information. This means I have to find the text at the column cite, search for it in the HTML and then reserve the process when I want to quote something back to the PTO. With paragraph numbering I can skip that unpleasant step.

    I wish they would start paragraph numbering issued patents.

  141. 4

    “inventions in other fields (primarily mechanical) never become publicly available unless they are patented or their applications are published.”

    That’s a great argument for going the trade secret route.

  142. 3

    “Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.”

    Instant publication. I would really like to hear well thought-out objections to this.

    There is a benefit to 18-month publication. When the inventor wants to keep their invention as secret as possible, they can stretch out their timelines as long as possible.

    For example, a technical paper publishes but is not widely-read (although the authors are credited), one year later they file for patent application, 18 months after that the application publishes (in most cases again it is not widely-read), then the patent publishes (it finally gets read). In that case the inventor has kept their invention as secret as possible, where the benefit may be that the true inventors are the only ones able to work out all the variations instead of having other people design around them.

    Complicated yes… but maybe a system worth fighting for.

    On the other hand, instant publication seems more in line with current techonogies. Things publish instantly on the internet every day, so why not instant publication for patents? It seems like it would promote the progress more too, if you can get around the case for 18-month publication I provided above…

  143. 2

    How about this?

    Require all applications to be filed electronically and open up the electronic file so applications would become prior art on the date they are filed.

  144. 1

    The early publication of patent applications is another advantage of the US. patent system. It quickly adds to the library and knowledge of prior art. While inventions in some fields (such as biotech) become publicly available through published technical articles, inventions in other fields (primarily mechanical) never become publicly available unless they are patented or their applications are published.

    Competitors and others having access to the published applications can then build upon the technologies disclosed therein.

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