35 USC 100 Definitions
(g) The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
(h) The term ‘joint research agreement’ means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
(i)(1) The term ‘effective filing date’ of a claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
(2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
(j) The term ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.
35 USC 102 Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint
research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for
patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
35 USC 103. Conditions for patentability; nonobvious subject matter
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
35 USC 291. Derived patents
(a) IN GENERAL.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section
(b) FILING LIMITATION.—An action under this section may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier applicant’s claimed invention.
35 USC 135. Derivation proceedings
(a) INSTITUTION OF PROCEEDING.—An applicant for patent may file a petition to institute a derivation proceeding. The petition shall set forth with particularity the basis for finding that an earlier applicant derived the claimed invention from the petitioner and, without authorization, filed an application claiming such invention. Any such petition may only be filed within 1 year after the first publication of a claim to an invention that is the same or substantially the same as the earlier applicant’s claimed invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether the earlier applicant derived the claimed invention from the petitioner and, without authorization, filed an application claiming such invention. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings.
(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until 3 months after the date on which the Director issues to the earlier applicant a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.—The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation
(e) SETTLEMENT.—Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause.
(f) ARBITRATION.—Parties to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.
Ron, I am in your debt. Your response this morning, to my outburst of late yesterday, evening is very gracious. I am a drafter and prosecutor, more than a litigator. If one of my “cases” is well drafted, it is less likely, years later, to get into litigation. I see now that my choice of the word “case” was not helpful, and I apologize.
Fact is though, that it has taken drafters in Europe a generation of adjustment to get in tune with the provisions of the EPC, as interpreted by the EPO and the various courts around Europe handling infringement and validity. Over the same period, all those courts have been hard at work, trying to understand the point of view of each of the brother (seldom sister) patent judges in the other EPC countries. They are doing a conscientious job, and making good progress, so I tend to spring to their defence. It is hard to point to any one of these cases you quote, and show in any one of them (except perhaps the EPO-TBA in DSS, while it was still an application) a decision that is palpably “wrong”. On tough cases, delicately balanced, it is inevitable that reasonable minds will differ (specially when some of those minds have observed key witnesses being cross-examined while others, elsewhere in Europe, are getting to their decision without the benefit of witness evidence).
I agree, let’s move on. And I do hope we have more chances for civilised debate.
But what about the patent backlog and the fact that the USPTO over the past decade has become antiquated and anemic? And we, the United State of America, are a world power? (See Obama’s illuminating observation about the USPTO at link to inventorinsights.com ). I see a lot of complaining, jawboning and pontificating in blogs but is anyone actually doing anything about this? Is anyone weighing on this? Is anyone stepping forward with some policy solutions?
Cranky,
I read the proposed statute with considerable unease.
I was talking about Section 135(a), which provides “An applicant for patent may file a petition to institute a derivation proceeding.” You were talking about Section 291, which I read in the same way you do – cause of civil action is only available to patent owners on issued claims.
MaxDrei,
You said: Ron Katznelson’s parade of European horrors goes back to cases written more than 30 years ago.
The European patent law or any proven changes and improvements in its interpretation was at issue. I read your comments very well. Every reader of your comments would understand you to have meant that “cases written” meant case law written by courts. Did you mean to say that the drafters of the patent applications are the ones writing the law and not the European courts?
Max, it is you who should drop it. Move on. Your point about European patent law in comparison with U.S. patent law is not compelling.
That, however, does not mean that you are wrong about S. 515’s inferiority. I agree with you that S. 515’s FTF provisions are far worse and that they do not have the internal consistency of European FTF. The one-year “springing disclosure” feature will not serve, as you surmise, as inventors’ safe-harbor for subject matter later filed in an application. This is because disclosures early in the invention process are unlikely to be enabling disclosures for supporting the desired claims, but are more likely to be sufficiently enabled to anticipate claims or provide a good obviousness reference under KSR to bar desired claims. Thus, I see very troubling perverse scenarios afoot: Companies will use preemptive disclosures describing results and motivation of inventions based on partial information and leaks, only to bar patents of other parties.
You did not respond to the question about the basis for such an “entitlement.” My point was that this “entitlement” is in fact a property right…
Sorry, Ron. I disagree with you, but not strongly enough to get into a big fight about it. In my view, the “entitlement” you refer to only comes into being when the derivation proceeding is concluded. It’s just a procedural posture. You can have your pre-existing “property right” if you like, but it’s certainly not a vested right and isn’t very secure, so I’m not sure what good it does you.
Do you read this “general” preamble as limiting the derivation proceeding only to patent owners and not to application owners?
My research on this is limited to reading Dennis’ post, but I don’t see any other way to read Section 291. I read it as providing a civil action for owners of granted patents, while Section 135 provides a PTO procedure for dealing with competing applications. The catch on 135 appears to be the provision that says that the PTO’s decisions are final and non-appealable.
Do you read it differently?
And, it is also quite obvious who IPMan really is as well.
Cranky: “Actually, the civil cause of action is limited to an “owner of a patent,” so this section of the proposed statute does not support your contention.”
My contention was not dependent on the proposed statute in all its terms. I simply contend that some entitlement or property right in an invention exists prior to filing. You argued that no such right exists, but did acknowledge that a first inventor from whom another derived his application is “entitled” to pursue the patent – that is the purpose of the derivation proceeding. You did not respond to the question about the basis for such an “entitlement.” My point was that this “entitlement” is in fact a property right, citing the fact that the first inventor can pursue a trade secret misappropriation action (even in state court) as evidence that it is a right. Do you still believe that inventors will have no rights to their invention prior to filing?
As to the proposed derivation statute being limited to an “owner of a patent,” I find this narrow preamble rather curious. Do you read this “general” preamble as limiting the derivation proceeding only to patent owners and not to application owners?
MaxDrei, agreed. I would rather adhere to the EPC than craft new a new statute sui generis with entirely new terms, such as “subject matter,” that have no clear definitions in US case law.
FYI, I saw the original draft of the current legislation some years ago. It is the work of one Bob Armitage, as if most of us did not know that already.
apocalyptic changes
[eye roll]
The facts Ron? Yes please, by all means. I wrote “written”. When was the Improver app “written”? You obligingly tell us that the patent issued 24 years ago but that’s no answer to my assertion when the f-ing priority document was actually “written”. Are you willfully ignoring what I wrote, or just not reading it?
Actually, to tell the truth, I don’t actually know when the Improver prio doc was written and, you know, I can’t be arsed to find out, It’s about 30 years ago plus or minus a year or two, right?
The EPC came into force in June 1978, that’s less than 32 years ago, right? How much EPC jurisprudence do you think had been laid down, at Supreme court level, when the Improver app was written. So, is the Improver case any indication at all how a mature EPC is currently functioning. I ask you.
If I understand you right, you are now asserting that I claim that out of the 1978 egg sprang a fully formed European law of patent validity, over which nobody had any questions. Ned Heller will put you straight on that issue. Do me a favour, will you. Quote in full the words of mine on which you rely.
Anything else?
Ned, a personal “right of continued use” is part of the coherent corpus of European patent law. As to apocalyptic changes, the one you could seriously contemplate is into the EPC, lock, stock and barrel because, there, you have 30+ years of jurisprudence to clarify what the EPC means.
Malcolm, interferences are reserved for two applicants (or patents) claiming the same invention, a rare situation — so rare as to not to be a problem.
In contrast, IPMan complains about prior invention being prior art. Indeed, there is no good reason prior invention should be prior art as interferences and lost count obviousness could be pegged to section 101 instead of section 102/103 as a statutory basis for denying two patents on the same invention.
I would favor a “mini” reform to the address the problem rather than a total revolution that uproots the entire system.
We also have a problem with public use, IMHO. I think something should not be in public use unless it can, within reason, be reverse engineered. Rather that being prior art, I would grant prior users a personal right to continue using the patented invention.
We have minor problems like these two in the current system that we should address. Each change should be done in isolation and only after full debate and agreement among all stakeholders. If the change remains controversial, then don’t do it at all is my recommendation.
Wholesale, apocalyptic changes are normally to be avoided as they can and normally do lead to unexpected collateral effects that can be disastrous.
Caution is the bye-word.
MaxDrei said: “Ron Katznelson’s parade of European horrors goes back to cases written more than 30 years ago.”
Max, you are wrong. I confined my list to the date range for which you asserted a “proven substantive law of validity” in Europe (“past 30+ years”):
Angiotech EP0706376 patent litigation: 2005
Document Security System EP0455750 patent litigation: 2005
Sara Lee EP0904717 patent litigation: 2001
Epilady EP0101656 patent litigation: 1989
The top three were litigated in the last decade. The oldest patent in the list (Epilady) was issued in 1986, some 24 years ago, litigated only 21 years ago.
Just the facts Max, just the facts.
“It might depend on whether anybody in the involved industry bothers to monitor the flow of publications issuing from the PTO.”
Step by step, like you’re into new kid.
Inch by inch with the new solution.
IPman hits, with no delusion.
The feeling’s irresistible and that’s how we movin’.
Everybody, everybody, let’s get into it.
Get the Quo.
I’m often very happy for my EP divisionals to pend for a long time. But the EPO calls that “abusive” or “gaming the system” (their words, not mine) because of the uncertainty for third parties. Hence their new rules.
The point they miss is that if they examined them more quickly, I wouldn’t be able to keep them pending for a long time.
People criticise the USPTO’s count system, which can lead to the superficial examination I referred to (yes, I know that Kappos is trying to address that).
However, the EPO’s equivalent system is also open to criticism, in my view. Things either happen very quickly (if the Examiner is able to meet his deadline and get his points). Otherwise, if the Examiner has missed his deadline, they fall into a black hole and are not seen again for years. It makes more sense for the Examiner to get his points on something else.
Thus, search reports on new direct EP applications are often done quickly. Supplementary EP searches on PCT applications entering the European phase, where the EPO was not the International Searching Authority, commonly fall into the black hole. So does the examination of divisional applications.
Ha! Now I must jump to the defence of the EPO, Man.
If you ask for expedition (PACE) you should get it (though, admittedly, in some art units they can’t find enough Examiners).
At the EPO, their working supposition is that people file divisionals in order to “have something pending”. The EPO sees that these filers do it at the last moment and are content for the precautionary divisionals they have filed to languish, at least till after the end of the 9 month post-issue opposition period on the parent case. That’s what these filers really really want.
The public doesn’t really need an EPO search on a divisional because the published EPO search report on the parent has already revealed the closest art anyway.
The public good is better served, thinks the EPO, by devoting precious search resources instead to all those brand new apps, so that on them the search report can issue with their A publications and readers in industry can quickly decide whether their optimistically wide claims really do represent any threat.
But tell me, do, how your divisionals have been hurt by the EPO.
“IPman….. Faster than a speeding bullet. More powerful than a locomotive…….”
Slower than the EPO’s examination of a divisional (but it’s still our fault that divisionals drag on for years and years, not theirs, so they have to introduce rules to stop us doing it)……
More superficial than a FAOM from a US examiner, who doesn’t even read the specification until the second RCE…….
Yes, that’s what I meant. Pegging the deadline to issuance makes sense, if the proceeding is limited to disputes between patent owners.
Cranky, do you mean that one year from publication isn’t enough time? If you do, then I agree. This is a provision which is unworkable, from the get go. But wait. Perhaps that is the plan, to keep the number of derivation proceedings low. in that case, it will work just fine.
In the UK, the cut-off date is two years after the patent issues. Derivation actions are rare but, even then, the two year period is sometimes missed. It might depend on whether anybody in the involved industry bothers to monitor the flow of publications issuing from the PTO. In Europe, many industries do watch PTO output. There are lots of good data and good ideas, in some of those A publications.
That said, regardless of the Director’s decision whether to institute a derivation proceeding, first-inventor petitioners will have a cause of civil action challenging an alleged deriver for misappropriating trade secrets that were invented and developed prior to either parties’ filing dates. If these inventor’s rights aren’t rights that existed prior to any filing, what are they?
Actually, the civil cause of action is limited to an “owner of a patent,” so this section of the proposed statute does not support your contention. But, having revisited the proposed statute, I’m curious about Section 291(b). That’s not going to work, is it?
Even I know who IP man is. Think! He’s the best man for this out of control Train. The very same Train that Dennis has been told he has no control of! He is SUPERMAN Faster than a speeding bullet. More powerful than a locomotive…….
owe
there–their– very existence“Malcolm notes, correctly, “Patents are irrelevant to the vast majority of businesses.””
With all due respect Mr. Boundy, I would say that not only do nearly 100% of businesses make use of patented products, but a significant percentage of businesses owe there very existence in some way shape or form to the success of a patented product – even if its shining the shoes of a recently minted technology billionaire.
Readers, I should add that Ron Katznelson’s parade of European horrors goes back to cases written more than 30 years ago. Improver (Remington/EPILADY) European patent has barely a six figure serial number. It was hot once, but that was twenty years ago. By now we are well above two million.
Nobody disputes that there is still today no Supreme Court that resolves differences between the courts of England and those of Germany, on infringement issues. That’s the problem with the sovereign States of Europe: they tend to disagree. But the specialist patents judges sit together every two years, to iron out differences. If you don’t believe me, read the successive Protocols of these biennial meetings, available from the EPO, and appreciate that, for any given matrix of fact, the likelihood of opposing judgements is as likely between different courts of the same European country as between courts of different countries.
I defy anybody to show me that progress in Europe is in any direction other than increasing legal certainty as to the meaning of the provisions of the EPC.
I’m suggesting that the US might gain something if it were to make use of all that 30+ years of experience.
Change one card in the house of cards, and the repercussive effects change every other card. Ned, your worry about “full” 112 disclosure in the provisional doesn’t impress me much because that is one of the things that wouldn’t stay the same, if ever FtF were to arrive.
Ron, I’m glad you mentioned Improver, DSS, Angiotech and Sara Lee. You forgot the famous Spannschraube case, the best of the lot for comparing jurisdictions in Europe. You think they are evidence of deficiencies in Europe but I think the opposite. Each one of these cases is one where two courts in the same country could reasonably have taken opposite positions. The ensuing debate on each has enriched Europe and reduced the amount of disconfomity between sovereign States (By the way, your comparing independent European countries with States of the American Union is ridiculous, as Mooney points out. For you to resort to that argument reveals the paucity of your position).
For a patent practitioner, the cases you quote are all delicious in their fine balance. The truly 50:50 cases are those that help to develop the law. So it is here. Take the most recent, Angiotech, and how it went in England. England’s Court of Appeal robustly confirms the Patents Court, revealing no doubts about Pumfrey’s fact-finding and application of European law on obviousness. Observers like me thought the case done and dusted. But no. Hoffmann in the House of Lords (our Supreme Court) takes it up (like KSR) and re-sets the law of obviousness. Shock, horror, on my part. it took me a long time to get used to his logic. Not so my Dutch friend, vindicated all along. Now, in Angiotech, England is in harmony with The Netherlands, which had tried the case strictly in line with EPO jurisprudence on obviousness. Chaos? I think not. Increasing harmony? I think so.
So, where are we now? The UK much closer to harmony with mainland Europe on obviousness. And a lot of disgruntled, whingeing Pom patent lawyers, running round the USA complaining to anybody who wants to sup up stories of the horror of modern Europe.
Ron, give it a rest, will you. The European caselaw does not support your propsition, OK?
And as to trademarks, I’m surprised you accuse me of not getting it. I see from other contributors that they do, and I do, but you don’t.
But Ron I’m grateful to you nonetheless, for prompting me to think about what would be a rational response to the Exceptions part of 102 in the Bill. It seems to me that as an inventor one would “publish” a year before filing, but as unobtrusively as possible, hoping that nobody notices, until such time as you need to produce that publication, like a rabbit out of a hat, to wipe out everybody else’s patent application but not your own.
Could this be what happens? In whose interests is it, to put in place a system which encourages everybody to “publish” in a way that nobody notices, and then years later pull that publication out of its hidey hole to bring down patents that, up to that point, everybody had presumed to be valid?
Or have I got that wrong too (I don’t have time to follow these threads properly).
Somebody wrote above that an offer for sale prior to filing destroys novelty under FtF. Not so. at least, not under the EPC. Under EPC law, you could have been selling commercial quatities for ten years or more, prior to filing, with no taint to validity. You see, in Europe, the “state of the art” is confined to that which, before the filing date, had been “made available” to the public. We in Europe by now have a very clear idea what the law means by “made available” and “public”.
Ron That said, regardless of the Director’s decision whether to institute a derivation proceeding, first-inventor petitioners will have a cause of civil action challenging an alleged deriver for misappropriating trade secrets that were invented and developed prior to either parties’ filing dates. If these inventor’s rights aren’t rights that existed prior to any filing, what are they?
I believe they are called “trade secrets.”
Ned 1) What compelling reason is there to move away from the present system that has served us so well for so long.
Meet Ned Heller, proud member of the patent interference bar.
Ned, I agree.
Cranky: “the derivation proceeding is simply a procedural mechanism to determine who is entitled to pursue the patent right. Did you notice the part where the Director’s decision is final and nonappealable?”
The Director’s decision to institute a derivation proceeding would be based on a statutory direction in Section 135 for finding whether an earlier applicant derived the claimed invention from the petitioner. As you point out, it is a procedural mechanism (called by statute) to determine who is “entitled” to pursue the patent. What is this “entitlement” that the Director is told to protect in a derivation proceeding? Is it not a “right”? Is it not the inventor’s property that existed prior to both parties’ application date that is secured from misappropriation by a deriver? Indeed, the entitlement of an inventor is based on Section 102(a) “A person shall be entitled to a patent unless—“ and on the inventor’s oath under Section 115(b) declaring himself or herself to be the original inventor.
As to the Director’s decision, S. 515 does not say that once instituted, derivation proceeding determinations are non-appealable. As I understand, these fact-finding agency decisions would be subject to judicial review under the arbitrary and capricious standards of the APA.
However, you have just alerted me to a change made in the last two weeks in S. 515, which had previously provided that upon proper showing by the petitioner, the Director shall institute a derivation proceeding. The Managers’ Amendment now provides that the Director may institute such proceeding and indeed weakens first-inventors’ rights by providing that “determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.” (This is a further example of how the proponents of S. 515 use the “salami” method for cutting down first inventors’ rights and why it should be rejected).
That said, regardless of the Director’s decision whether to institute a derivation proceeding, first-inventor petitioners will have a cause of civil action challenging an alleged deriver for misappropriating trade secrets that were invented and developed prior to either parties’ filing dates. If these inventor’s rights aren’t rights that existed prior to any filing, what are they?
IP man has it mostly right, but ignores two problems:
1) What compelling reason is there to move away from the present system that has served us so well for so long.
2) In a pure FTF system, we have to have FULL section 112, p. 1 support in the priority document. If a later reference appears showing only what we disclose in the priority document, it may still be good prior art against a later-filed claim if the claim concerned, even a dependent claim, adds or relies upon any new disclosure. The reference does not need full Section 112, p. 1 support and need not show the entire claim to be effective prior art. But the application’s claim does.
Today, in our “old fashioned” first-to-invent systems, we can still use a Section 131 declaration to swear behind a reference REGARDLESS of whether the priority document is sufficiently polished. All we have to show is that we invented what the reference shows first. That should be simple, as our own priority document describes what the reference discloses.
It is little details like this that no one is talking about. In the brave new world of FTF, we lose the ability to show prior invention. Obviously, this should be unacceptable to all, but seemingly, it is not.
Compared to FTF systems, we Americans have it really really good now. Our system, for all it faults, is relatively patent and inventor friendly. Why should we abandon such a good system? Why?
No one argues any compelling need to abandon our system; yet the patent bill is labelled “reform.” This is the kind of reform we do not need.
“shouldn’t the true inventor be given a way to complain”
That’s what we need – more ways to complain.
Ron, by “derivation” we have been referring loosely to the situation where an inventor has filed an application or been granted a patent, and some piece of prior art is applied against it. If that prior art was published within the grace period and is actually derived from the inventor himself, it won’t count.
So a patent application has been filed, and possibly granted. No rights exist before an application has been filed that could be protected by any proceedings relating to such “derivation”.
Strictly speaking, however, those are not the “derivation proceedings” referred to in S.515. The latter only apply where both parties have filed patent applications. They are the replacement for interference proceedings under the current law.
Under first-to-invent, interference proceedings are primarily intended to determine priority between two inventors who independently invented the same thing. But they can also be instituted where it is alleged that one “inventor” didn’t really invent anything at all, but derived it from the other, and then wrongly filed an application.
If you abolish first-to-invent, the primary purpose of interference proceedings no longer exists. But it is still desirable to have a procedure for determining if someone has wrongly filed on an invention derived from someone else.
Indeed, shouldn’t the true inventor be given a way to complain even if he hasn’t filed an application of his own? He can in the UK, for example.
If the rights of inventors to their invention do not arise before they file their application, what rights does S. 515’s derivation proceeding intended to protect?
Who says that S. 515’s derivation proceeding is intended to protect a “right” at all? In fact, the derivation proceeding is simply a procedural mechanism to determine who is entitled to pursue the patent right. Did you notice the part where the Director’s decision is “final and nonappealable”?
IANAE, “Trademarks confer rights at common law based on use, and the registration process is only a mechanism to formalize and extend those rights… A patent right is only created by the fact of registration.
There is a flaw in your reasoning. If the rights of inventors to their invention do not arise before they file their application, what rights does S. 515’s derivation proceeding intended to protect?
In pure FtF, prefiling offer for sale secures your trademark rights, while destroying your patent rights. Inconsistent? Asymmetrical?
Are trademarks even patentable subject matter under 101?
MaxDrei, I never cease to be amazed by calls such yours for Americans to align aspects of U.S. patent law, which are fully harmonized across 50 states, with those which are harmonized across none.
Ron, you could make this argument 62.8 times more compelling by noting that US patent law is fully harmonized across 3,140 counties.
In pure FtF, prefiling offer for sale secures your trademark rights, while destroying your patent rights. Inconsistent? Asymmetrical?
if a country is to extend protection of IP rights based only on the earliest filing date,
There’s the flaw in your reasoning. Trademark rights are not based only on filing. Trademarks confer rights at common law based on use, and the registration process is only a mechanism to formalize and extend those rights. The registrant should be the party entitled to use the mark, and not the first to file. A patent right is only created by the fact of registration, and its scope determined by the contents of the registration, and that registration theoretically applied for prior to public disclosure, so a race to the patent office is entirely appropriate.
If you truly want to be consistent between patents and trademarks, you should give the right to the first person who positively asserts the right – by using a mark or filing before others have used it, or by applying for a patent.
MaxDrei,
In response to my trademark comment you argue that patent law and trademark law protect different rights. This is irrelevant and nonresponsive to the point of my comment. I’ll try again:
Regardless of the right being protected, if a country is to extend protection of IP rights based only on the earliest filing date, why should rights of A, the first to use a mark be protected despite the fact that B has filed for the mark before A? Under what legal or public policy theory should first-use development and commercial investments made by trademark applicant A prior to filing an application be protected under law while not extending such protection to development and commercial investments made by a first-inventor patent applicant?
You say:
Europe has it sorted, at least up to issue…let a re-invigorated CAFC reform patent litigation on the shoulders of the substantive law of validity proven in Europe these past 30+ years?
Here are some examples from various EPC contracting states of the “substantive law of validity proven in Europe these past 30+ years”:
Angiotech EP0706376 patent’s validity was revoked by a British court but was upheld by a Dutch court and the EPO; Document Security System EP0455750 patent’s validity was revoked by British and French courts but was upheld by German and Dutch courts; Sara Lee EP0904717 patent’s validity was revoked by EPO but upheld by a Belgian court; and Remington’s shaving product marketed across Europe was found to infringe the Epilady EP0101656 patent by Belgian, German, Italian and Dutch courts but found non-infringing by Austrian, British and French courts.
Patent law “up to issue” cannot be divorced from its construction after issue. Claim construction is central and is inextricably connected to validity determinations pre and post issue and for infringement determinations post issue. European patent law across contracting states is far from “proven.”
MaxDrei, I never cease to be amazed by calls such yours for Americans to align aspects of U.S. patent law, which are fully harmonized across 50 states, with those which are harmonized across none.
MaxDrei: My curiosity as to the identity of IPMan continues to grow. Could it be that he is a patents judge? Or is it, I wonder, our blogmaster himself, in person?
No. Who are you, Max?
OK Ping, let’s do EBay again.
Inherent in the grant of a claim that turns out to be valid is that injunctive relief from infringement will follow. Deprive inventors of that and the incentive to make the enabling disclosure is blunted.
EBay is a reaction to the impossibility in the USA for a competitor to “do” FTO, clearance, and meaningful validity opinions. It doesn’t have to be like that. The new Rules packages at the USPTO and the EPO are worthy attempts to prune back some of the burgeoning legal uncertainty, whether a new product will infringe anything.
The “clear and convincing” standard is an obscenity. The use of juries to decide the facts in a high tech patents action is another obscenity. The different scope of claims in the PTO and in the courts is a third obscenity.
Sub-contract your patent litigation to England, where validity is done properly.
Don’t waste time with “patent reform” till the problems with civil litigation of patent rights have been fixed.
There, off my chest, thanks.
pssst (MaxDrie):
EBay.
My curiosity as to the identity of IPMan continues to grow. He apparently has no vested interest, no axe to grind, and is driven purely by the US Constitutional “general welfare” (or whatever the words are) appertaining equally to inventors and those in fear of their monopoly rights.
So refreshing. These days, such a contribution could only happen on a blog, under a pseudonym, because everybody else is sponsored by a biassed paymaster.
Could it be that he is a patents judge, well aware of the deficiencies of the system as it is today, and trying to steer reform in the direction of sanity and common sense, but also well aware of the impossibility of outing himself?
Or is it, I wonder, our blogmaster himself, in person?
DB: You point out the problem with the bill – any disclosure by a third party bars a patent, unless the inventor can trace the disclosure back.
Well, that’s what it should say, if it were a true first-inventor-to-file system. If they are not derived from the inventor, then third party disclosures are prior art. But the Bill isn’t true FITF, because of the proposed 102(b)(1)(B) “first-to-disclose” provision.
Here are several possible patent systems:
System 1. You could say that the patent applicant has an absolute 1 year grace period. Nothing disclosed by a third party in the 12 months before his application can hurt him. Doesn’t matter whether the third party derived it from the applicant or invented it independently himself – and most such disclosures, of course, are the result of independent work.
That would be the situation under present section 102(b), if taken by itself. But it would be manifestly unfair to the third party. He invents something independently, before the date of the patent application, but then finds that he is deprived of it by someone who came along later.
So here’s System 2. The present law ameliorates the above problem by having a second hurdle. Under section 102(a), the grace period doesn’t apply if the third party publication occurred before the applicant’s date of invention.
So at present, if a third party publication occurs within the 12 month grace period, the applicant/patentee needs evidence to support his date of invention. Note that while the inventor should have the information available, it’s quite a bit more onerous than proving a date of publication, and he won’t always be able to fulfil the requirements set by the courts.
Unfortunately, assuming the USPTO didn’t find the publication, the situation for the independent third party remains uncertain. He knows he has an intervening publication that might render the patent invalid. But he won’t know for certain until he gets sued and the patentee’s invention date comes out in discovery. He might still find that he is deprived of his idea, years later, and has to stop using it and pay damages.
Thus, the difficulties of proving a date of invention, and the fact that the public don’t know what that date will turn out to be, give rise to uncertainties that are inherent in first-to-invent.
So then there’s System 3. First-inventor-to-file, as implemented in most of the world. Ignore dates of invention. Ignore grace periods. Just compare the filing or priority date of the application with the date of the publication.
That’s a simple test, and everyone knows where they stand.
But the USA is firmly wedded to the idea that some inventors need a grace period, which standard FITF doesn’t provide.
That gives rise to System 4. Bolt a grace period onto FITF. But to avoid the need to determine dates of invention, and the problems inherent with Systems 1 and 2, the grace period is only available for the inventor’s own work.
This is the grace period implemented by proposed section 102(b)(1)(A), if taken alone. The majority of cases covered by this will be where the disclosure was made by the inventor himself, or by someone who had his permission. That’s easy to establish.
But there will be a few rare cases according to DB’s scenario, where A told B, B told C,D,E and F, and something was published without A’s permission. Yes, there may be occasional difficulties proving that. Are they any more problematic than the difficulties which arise from determining dates of invention at present?
The solution to such difficulties adopted by most of the world, of course, is to go for pure FITF – System 3. In Europe, there is a backstop for “evident abuse” – DB’s scenario where something is published without the applicant’s permission. But it’s rarely used because it rarely happens.
Finally, there is System 5, which is what the Bill actually proposes. In addition to 102(b)(1)(A), add the “first-to-disclose” provision of 102(b)(1)(B). The applicant gets a grace period for all disclosures, irrespective of whether they were derived from himself. But only if he himself publicly discloses the invention first – perhaps in some obscure publication or website that most of the world doesn’t know about.
To me, that just adds more problems than it solves. Yes, the applicant doesn’t need to establish that the disclosure was derived from him. But he does need to make a disclosure, which can be disadvantageous for reasons stated by DB and Ron K.
And since the applicant may have disclosed the invention somewhere relatively obscure, then third parties are still uncertain about their position. Years later, they can find themselves deprived of something they developed and made public independently before the date of the patent application, just as with today’s System 2 when they don’t know the applicant’s date of invention.
Thus, the Bill replaces the uncertainties of first-to-invent with new uncertainties instead.
The reason it does so is because it attempts to provide a grace period for all third party disclosures, not just those that are derived from the inventor himself. Realising that that’s manifestly unfair (System 1 above), it then tries to limit it by saying that the inventor has to make a disclosure himself first.
DB: I agree with both IPMan and MaxDrei that European law has an internal coherence that S.515 does not. The bill is a great step into the unknown, that harmonizes with no one.
Right. So why not go for the tried and tested, internally coherent model instead?
Your reason for not doing so is based on a fear about a situation where A tells B, B tells C,D,E and F, and something is published without A’s permission. Under the tried and tested system, that rarely arises in practice.
Well David, I’m a bit peeved that you write that I “overlook” the investment angle. I had supposed that everybody took that as read, without having to read it from me.
The “incentive”, the “price”, to get the all that early, progress-fostering publication of enabling disclosures is of course the 20 year monopoly. Why would anybody otherwise disclose anything? The patent monopoly, inherent in any patent system, is the incentive for the investors. It’s simply the other side of the coin, isn’t it. “One hand washes the other”, as one says in Germany. Both sides of the coin need a good wash, brush and polish.
Please, please, nobody mention EBay. We’ve well flogged that three times dead horse already.
We need to ban all racists. Forward. Onward and upward.
Four more years!!!!!!
JAOI,
We have these things in the US called elections. The majority of the people voted for Obama and his vision.
Surprisingly and disappointingly he has done quite a lot to accommodate the right wing rather than follow through on his campaign promises. He is at best a centrist.
You should try reading the Declaration of Independence, the Federalist Papers, and the Declaration of Independence some time. You might learn something about the way our government works.
IPMan –
You point out the problem with the bill – any disclosure by a third party bars a patent, unless the inventor can trace the disclosure back.
I agree with both IPMan and MaxDrei that European law has an internal coherence that S.515 does not. The bill is a great step into the unknown, that harmonizes with no one.
One crucial point that MaxDrei overlooks – disclosure is indeed a worthy public policy goal, but it’s a distant second. The key benefit of the patent system is getting investment capital behind disruptive new ideas, to get those ideas off the blackboard and out of the lab into real products. Initial R&D is almost always far more expensive than reverse engineering by second-comers. Then the profits disappear. Until an investor sees some barrier to entry to keep competitors at bay and some rationale that shows sustainable profits, investors don’t invest in new radical R&D. In many markets, the patent system is the only barrier to entry available.
Don’t let the disclosure tail wag the investment dog.
Cranky’s right – the Commerce Clause is just so much more powerful than the Patent Clause.
See what happens when you live on a diet of breadcrumbs – your mind cannot function.
…shouldn’t the (US) public policy considerations be similar for trademarks as for patents, as both come from the same Constitutional place?
Except that they don’t.
MaxDrei,
At the risk of invoking the Constitutional debate, shouldn’t the (US) public policy considerations be similar for trademarks as for patents, as both come from the same Constitutional place?
Isn’t the palming that you refer to no less “bad” when what is palmed is either the indicator of the source of the product or the product itself?
No name calling yet. Can we keep it up?
Hey, where did IPM man come from? Great contributions.
Ron, good point about trademarks, but easy to answer, I would say, by looking at public policy considerations. What is the point of trademark law, and what is the point of patent law. Why is a right in perpetuity good for the public when it’s a TM right but bad for the public when it’s a patent monopoly? Why should a trader with a distinctive mark enjoy some protection against palming off, even when he has failed to register that mark?
For me, a good patent system is one that gets enabling disclosures (A publications as opposed to non-enabling teasers to whip up interest) out in the open in the minimum amount of time from reduction to practice, thereby to stimulate further technological progress, as fast as possible. Of course, to be fair to the inventors, they must be able to get to issue and to the service of proceedings for infringement, just as soon as infringement starts. For the Applicant who wants the patent to issue immediately after A publication, because of infringement, that’s possible, at least in Europe. Hardly any Applicant wants that though. They all prefer to keep their apps pending as long as possible, to retain amendment flexibility. That’s OK too, provided the laws on adding subject matter in a prosecution amendment are strict. Then, meaningful clearance opinions can be rendered, on the basis of the A1 publication, even before any examination on the merits starts.
Europe has it sorted, at least up to issue. America, why not take Europe’s pre-issue regime, as is, lock, stock and barrel (but with suitable transitional provisions, like the UK did, when joining Europe), and let a re-invigorated CAFC reform patent litigation on the shoulders of the substantive law of validity proven in Europe these past 30+ years?
In other words, just sign up to the EPC. As you know, post-issue, EPC Member States are still free to do just as they please.
DB –
You misunderstand my point. I’m not saying that US law on confidentiality is the same as the EPC’s “evident abuse” provision. For example, in English law, the mere expectation of non-disclosure is likely to create a legal obligation of confidentiality; see Coco v. A.N. Clark (Engineers) Ltd. I’m not surprised if that doesn’t apply in the US.
What I am saying is that such situations where the inventor’s information is abused are as rare as hens’ teeth. That’s true even in Europe, where there is a legal mechanism for handling such situations. You would expect inventors to make lots of use of that mechanism if such abuse was a big problem. They don’t; it isn’t.
You are making out that such abusive situations will happen every five minutes, so you are scaremongering that the new section 102 won’t cope with it easily. Relax. Take heart in the European experience. It’s not a big problem.
DB, Ron –
Actually I think that the 102(b)(1)(B) “first-to-disclose” provision is a terrible idea. If you are going to do first-inventor-to-file, you should do it properly, as in the rest of the world. I merely point out that that’s the way the Bill’s proponents are trying to allay your fears.
Since the abusive situation where a third party wrongly publishes your invention is as rare as hens’ teeth, I wouldn’t worry about it. Go with 102(b)(1)(A) if you must for those rare occasions, and scrap 102(b)(1)(B).
If there is a non-abusive third party publication, not derived from the inventor, then that’s legitimate prior art in a true first-inventor-to-file regime. First-to-disclose according to 102(b)(1)(B) just doesn’t fit.
IPMan,
Look at proposed Sections 102(b)(1)(A),(B) providing for exceptions to disclosures as prior art if:
“(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
How do you think an inventor would be able to prove how the subject matter was “obtained” by another? I think this is what DB referred to.
Your suggestion that inventors have control over publication priority by preemptively publishing before any third parties, is utterly divorced from reality. How many startups have you seen survive their publication of their inventions in detail to support patent claims right after they made them? Unfortunately, I have seen too many instances where information on a hot new technology developed by startups who do not desire publicity, finds its way into the public domain by trade news publications. These often appear as descriptions of the results and speculations as to how the new invention might be working. I have encountered this myself when reports of my first startup’s technology surfaced after we have had made our roadshows for potential investors and potential strategic partners. This is understandable and perhaps inevitable considering how investors perform their due diligence. They cannot keep it to themselves. They must ask experts and industry gurus.
Remember that in the U.S., standards for enablement of a prior art reference for purposes of anticipation of a claim are much lower than those required to support the allowance of such a claim. [In re Hafner, 410 F.2d 1403, 1405 (C.C.P.A.1969)]. Trade publications based on rumors and leaks that describe results and motivation can be excellent 103 references under KSR obviousness for barring a whole chain of patents by the inventor whose invention was the source of such leaks. Even if one files a provisional application prior to private disclosures, substantial patent prosecution expenses and many improvements and developments that are disclosed in chains of subsequent non-provisionals can come about only after investments in the startup.
Today, we can assume the risks of private disclosure to potential investors and strategic partners because we (and the disclosure recipients) know that corroborated evidence of our development records can protect our priority date. No springing publication can undermine such a record. In contrast, under the proposed legislation, our records would be irrelevant and we would likely be unable to risk any disclosure. We may not be able to obtain startup funding.
Of course, large firms who fund their R&D internally would have no such problem.
“let’s not pretend”
Dave, why that would ruin all the fun. Pretending is one of our top skills here.
There’s no Butt’s about it.
It’s time to Face the music,
Trademark battles just don’t spin you around like Patent battles.
North, South, East or West, everywhere you look, trademarks just don’t compare to the power of patents.
IPMan –
And if no appropriate document exists to make public?
What if A discloses to B under circumstances where he doesn’t expect B to blab to C D E F and G? That is, B is a colleague with some expectation of non-disclosure but not a legal obligation? Typically this arises when the invention is brand new, and A is getting vetting from others.
In a big company, A usually as a colleague B within the same firm. So F2F isn’t a big deal. But for small companies and individual inventors, A often has to discuss the invention with others who are not under obligations of confidentiality, mere expectation. It works under today’s law, it’s fatal under the new bill.
For these small firms, your solution works great at no extra cost if every inventor A has an IP guardian angel with perfect foresight and who writes up and publishes disclosures for no cost living in his back pocket, and the disclosure and complete loss of confidentiality puts the inventor in no worse position than under today’s law.
Yes, every problem under the new law has some kind of workaround. They are almost always very low cost for big firms, because all the conversations take place within the firm. But let’s not pretend they’re cost free for smalls who need financing and contract resources outside the firm.
IPman: Section 291 has the only “derivation proceedings” specified in the Bill. They do not relate to DB’s scenario, but only to the case where B files an application.
Correction: I meant to say sections 291 and 135. Both relate to the case where B files an application, not to DB’s scenario.
To all those who favor a first-to-file priority system due to its administrative and judicial efficiency: How come we do not see you advocate the same thing for trademark law?
Should we not also move to the first-to file in trademark protection and do away with any inquiry as to who was the first to use the mark in commerce?
Trademark legal disputes outnumber patent disputes by more than an order of magnitude. The total costs of discovering and resolving evidence in “first-use in commerce” priority disputes far exceed those of patent first-inventor priority disputes. The savings would be staggering if we move to first-to-file in trademark law. Yet, this apparently concerns no one.
Apparently, those who push for the first-to-file system have agendas other than improving judicial efficiency and reduction of priority-date uncertainty. If that were their agenda, they would have supported alternatives to first-to-file that do not “throw the baby with the bathwater,” such as a requirement that inventors file a declaration identifying their invention date – in a manner similar to that provided by “first-use in commerce” declarations in trademark law.
The best indicators of their real agenda are the size and incumbency position of the corporations that make the first-to-file provisions their leading goal for patent reform. I know this because before starting up my own companies, I used to work for large corporations who looked to reduce the “annoyance” from small entity patentees by disproportionately elevating their patenting costs.
Warning – off-topic subject matter below – Warning.
Below is one of the best “sum-up” links I’ve seen.
Please take time to watch it.
It’s not very long,
and it’s very well done.
However, it definitely is not for pinheads.
link to patriotsforamerica.ning.com
How do you spell “I m p e a c h”?
Ned Heller: …there is some question, even from the beginning, of whether a US provisional can provide a proper basis for a Paris Convention priority claim…
Is the UK provisional materially different?
As Max says, UK provisionals have been providing a good basis for Paris priority claims for a long time (actually over a century). There’s no reason why US provisionals shouldn’t also.
However, note the earlier discussion about “same invention”. The way the case law has gone, your provisional (UK or US) needs to support the full breadth of the claim you will eventually make. An informal disclosure in a provisional might not do that.
Provisionals don’t need claims, but for this reason UK patent attorneys usually draft them the same way they draft non-provisionals. That would include statement(s) of invention that reflect the likely eventual claim wording, even if there are no formal claims.
On a minor matter, when the US first introduced provisionals, it was indeed impossible for them to issue as a patent. That led some to speculate that they weren’t a regular patent application as required by the Paris Convention. To clean this up, US law was subsequently amended. It is now possible to convert a US provisional into a regular application, rather than file a separate regular application and claim priority, though I can’t think of any sensible reason to do so.
David Boundy: Derivation also arises under new 102 of S.515 where A invents, tells B, B tells C D E F G, none of B C D E F or G file, and A files within a year of telling B.
Now B C D E F and G are all presumptively prior art to A, until A carries the burden of showing derivation by each and every one.
New section 102 gives the inventor a very easy way round this problem. When he tells B, make a public disclosure at the same time. Then he gets the grace period under 102(b)(1)(B) instead of (A). All he needs to prove is what he made public. Dead easy.
That’s why it’s being called “first to disclose” rather than “first to file”.
Even in DB’s scenario, you don’t need an expensive and uncertain interference-style derivation procedure, with the need to prove conception, reduction to practice, diligence etc. In fact, it’s not clear to me that that would be required even under new section 291. (Section 291 has the only “derivation proceedings” specified in the Bill. They do not relate to DB’s scenario, but only to the case where B files an application).
DB: Under current U.S. law and current EP law, derivations are rare as hens teeth, because both require that the later deriver file an application. Under S.515, they’ll be common, because an inventor needs to show derivation for every blog, Popular Mechanics article, and tweet.
Not true. Where A discloses to B in confidence, but B then discloses in public before A files, the EPC has a 6 month grace period for so-called “evident abuse”. A can claim the benefit of this irrespective of whether B also files an application.
The situations where this grace period is used are indeed rarer than hens’ teeth, and I predict that the same will be true in the USA. The reason is simply that the vast majority of blogs, Popular Mechanics articles and tweets are not derived from the patent applicant A, but are the result of B’s own independent work.
Even where B files an application, then in the UK the true inventor A can launch proceedings claiming B is not entitled to the patent, without A having his own patent application.
Ned, not that I can see. I had supposed that the US got the idea of the “provisional” from the UK. It borrowed a good idea, didn’t it?
UK pro’s are at least 60 years old. as far as i know, nobody has ever suggested they do not constitute a valid basis for Paris priority claims.
Max, well, the reason I ask is that there is some question, even from the beginning, of whether a US provisional can provide a proper basis for a Paris Convention priority claim. I know that other patent offices will recognize the claim, but the matter has never been litigated and decided by a court of law.
A US provisional is informal, does not have claims, is not published and can never issue as a patent.
Is the UK provisional materially different?
Ned sorry, I don’t really understand the question. A UK provisional is an application for protection of an invention in a Convention country. Provided it is the FIRST such application (or, if not the first, then earlier ones were withdrawn before it was filed and did not deliver any priority rights) then it is a perfectly good deposit for founding a priority date valid under Paris. Also in the USA, I believe. The Brits have been relying on that, continuously, since at least as long ago as 1949.
In the reverse direction, you could claim prio 1 on the application form for a UK provisional (prio 2) then declare both priorities in a PCT filed within one year of prio 1.
Come again, if I haven’t answered your question.
Max, could one claim Paris Convention priority to a British provisional application?
Thanks Ned. I think you and I are not far away from each other. Somewhere up-thread I mentioned the old provision in the UK Patents Act of 1949 (supplanted in 1978 by the EPC) that lifts out of the prior art such disclosures made by the inventor during the Paris year that follows filing of the provisional application, that go no further than what is in the pro. The thinking was that inventors need to publicise their pro, the moment they have filed it, and that the full application they will be filing at the end of the Paris year will contain a lot of obvious developments, modifications and improvements to the content of the provisional. It was always thought simply not fair (and not conducive to quick exploitation of the invention in the provisional) to apply those Paris year disclosures by the inventor as prior art against claims of the full application not entitled to the filing date of the pro.
And, yes, the EPC swept that saving provision away.
So that, since 1978, skimpy provisionals are not such a good idea, and nor is open publication during the Paris year.
However, Europe is quick to reject inventor disclosures during the Paris year as not being public enough to get into the “state of the art” available to attack the validity of a claim not entitled to the pro filing date. See somewhere above, the Palmaz case. the receiver has to be a member of “the public”. It doesn’t take much to persuade the EPO that those who have received details of your invention are not properly to be regarded as members of “the public” to whom the invention has been “made available”.
Of course, Europe is civil law territory, except for the British Isles. There are many, many areas where supplanting the UK Patents Act 1949 with the EPC has caused distress in England.
Then again, patent litigation in England, these days, takes about one third of the time it used to, under the ’49 Act.
Thanks for reminding me about G3/93.
Max, there are earlier decisions on point, some going both ways on the issue. See, G 0003/93, for example. I will quote extensively:
From paragraph 3:
The following facts are assumed:
– On 1 January 1990, an applicant files an application P1 containing the elements A + B;
– On 1 February 1990, a document D is published containing the elements A + B;
– On 1 March 1990, the same applicant files an application P2 containing the elements A + B + C;
– On 1 June 1990, the same applicant files a European patent application with claim 1 containing the elements A + B, and claim 2 containing the elements A + B + C; priority is claimed from P1 and P2;
– Claim 1 contains the same invention as disclosed in P1; claim 2 contains the same invention as disclosed in P2; the invention disclosed in P1 is not the same as the one disclosed in P2 (although there is unity of invention within the meaning of Article 82 EPC).
…
According to decision T 301/87 the answer must be no, although claim 2 cannot derive priority from application P1; according to decision T 441/91 the answer must be yes, because claim 2 cannot derive priority from application P1. This means that, according to decision T 301/87, document D is not citable against claim 2, whereas, according to decision T 441/91, document D is citable against claim 2.
From paragraph 8-10:
8. Pursuant to Article 87 EPC, the coming into existence of a right of priority depends on the fulfilment of certain requirements, one of these being that the European patent application claiming the right of priority from an earlier application in a State party to the Paris Convention must be “in respect of the same invention” disclosed in the said earlier application. Article 89 deals with the effect of possessing a right to priority on the premise that the conditions precedent to having that right have been satisfied, including the requirement that the inventions be the same. If these preconditions are not met, no right to priority exists, consequently, in such case a claim to priority from a previous application has no effect, either under Article 87 EPC or under the Paris Convention.
9. Where priority is claimed but cannot be allowed because the essential condition precedent, that the inventions are the same, is not met, there is no right to priority. In consequence, any publication of the contents of the priority document in the interval between the filing thereof as a patent application, and the filing of the European application claiming priority therefrom, constitutes prior art citable against elements of the European application which are not entitled to priority.
The United States Court of Appeals for the Federal Circuit decided likewise (in re Gosteli, 10 USPQ 2d 1614 (1989); GRUR Int. 1990, p. 994).
10. As to the example given in point 2, it follows from the above that document D forms part of the state of the art in respect of claim 2 and is citable against claim 2.
Ned, go to http://www.epo.org and find your way to searching the caselaw of the Boards of Appeal. Input G_0001/98 (“same invention”) and see where in that Decision is any reference to any US case. Perhaps it is indirect. I’m curious.
Ned now you have aroused my curiosity. Can you name that seminal mid 90’s US case that “Europe” followed? Which “Europe” do you mean? I suppose the Enlarged Board of Appeal of the EPO. So it must be a G Decision on “same invention”. I will take a look at the EPO’s “white book” of caselaw.
Insider, I was imagining that US inventors, attorneys and applicants would come, over the next 20 years, dimly to perceive that blowing all rights, everywhere in the world except the USA, by publishing before filing at the PTO, is not necessarily a good business idea.
“but I have a hunch that this is going to change, over the next 20 years.”
The EPO is going to copy the USPTO law regarding First to Invent…?
MaxDrei, I can elaborate more on the development of European law on priority, but let me just say this:
Since the 1800’s, the effect of a priority document was thought to be that of a publication under the proposed legislation. It knocked out a subsequent publication of the same subject matter. Then in the mid ’90s, Europe adopted the US approach, citing a US case, just as I said. For many, this was highly unexpected and made the quick and dirty provisional a thing of the past.
Since that time, Europe does seek to apply the law in a uniform manner, but runs into absurdities and inconsistent rulings on exactly the same facts. In bio, a priority document to substantially the same sequence, but not identical, is one day good for priority and the next not. In mechanical, the absurdity of giving priority to claim 1 to the car, but not to claim to the car + fender is recognized.
I think many in Europe realize that adopting the US law on this topic without understanding why the US law is the way it is was a mistake.
Now back to the US, as witnessed by this discussion, many in the US do not understand US law — else they would have amended the statutes to allow Section 119 priority claim to operate in much the same way as the proposed “publication” knock outs. But they did not, making publications far more effective at protecting one’s rights against future disclosures than a provisional application, which is nonsense.
But however we fix US law to make it reasonable, we will also have to fix Europe, Japan and everyone else who have adopted the US nonsense on 119 (Paris Convention) priority. It is simply wrongheaded and nonsensical.
Having sat here and defended it, I do believe this modified grace period is weak. I believe the US should adopt either (1) an absolute bar, or (2) an unqualified one year grace period. Either would be preferable.
“Litigation over FTI would disappear.”
Lionel,
Ah, but litigation over the sloppy and ambiguous wording of modified S.515 will more than make up for it. Modidied S.515 still involves significant upheavel for no contervailing value to American small business and especially American small business innovation, in my opinion.
The only potential problems I see with FTF are for patent attorneys/agents. All retention letters and/or jobs are going to have to require specific agreements on turnaround times.
“Can anybody here in favor of S. 515’s first-to-file system and its weak grace period (including the unique “springing disclosure” feature) identify its actual advantages to American firms over the current system?”
Litigation over FTI would disappear.
Boundy writes:
“Under S.515, the patent attorney becomes a roadblock, not an asset. The patent attorney has to repeatedly tell the business “NO. You cannot move, you cannot act, until I get a patent application filed.”
which I suppose means that up to now the asset does refrain from acting as a roadblock and does let his client publish before filing at the PTO.
Oh I do hope Boundy and pals keep up the good work of fostering innovation in the USA, so that, for the foreseeable future, there are in direct consequence of their helpful actions a steady stream of invalid patents being issued to Americans by the EPO, which my clients will pay me to defend, or to revoke.
And yes, I know, the importance of ROW up to now has been zilch, but I have a hunch that this is going to change, over the next 20 years.
“It worked “so well” relative to what?’
…relative to wearing Birkenstocks, holding hands and dancing around mud huts, singing Kumbayah…
Relative to the number of people that want to use the system, warts and all?
Even with a humungous backlog and the worst economy in arguably a century or two, the number of patent filers still lining up and wanting to share their innovation says something.
RK In other words, shouldn’t the burden of proof be on those who want to change a system that worked so well to protect American innovation?
It worked “so well” relative to what?
“Can anybody here in favor of S. 515’s first-to-file system and its weak grace period (including the unique “springing disclosure” feature) identify its actual advantages to American firms over the current system?”
Ron,
Thanks for stating clearly the “$64k” question that nobody in favor of modified S.515 has yet to answer in my opinion. As a “skeptical American” I remain skeptical of the value of modified S.515 to American innovation and businesses, and remain concerned that it will be an American innovation and jobs “killer.” For that reason alone, I’m still can’t and won’t support modified S.515.
I’m also very concerned at the sheer upheavel modified S.515 will cause in terms of how novelty and obviousness will be determined. The language in modified S.515 is frankly “sloppy” in many areas, especially the one relatig to the residual “grace period” which is completely unclear as to whether it would cover, for example, traditional “on sale” situations. That a significant amount of litigation to just clarify what the language in modified S.515 means, which is itself extremely unsettling. For this amount of upheavel, there should be corresponding benefit to American innovation and American jobs creation, and I just don’t see that in modified S.515.
Or maybe this is a tool for lawyers to say to business people:
“You must put us first, it is no longer an option to think about your rights down the road. These intellectual property rights are the currency of the new economy and the law recognizes this by placing a higher premium on actions you must take to preserve your rights.
Sure, this makes the process more expensive for you, but you get what you pay for. Don’t worry, this affects your competition at the same level and they also have to pay more. If it helps you to adjust, you can think of it as the government has stepped in and announced ‘We are the government and we are here to help, and in order to pay for this help, there is a small patent tax.’ ”
Business should be thankful that they have our services to help them in the new economy.
Inviting Body Punches | Mar 10, 2010 at 03:33 PM writes that he advises clients to “keep an absolute lid on it.”
And that’s good legal advice, so long as the client has options. Under current law, patents are one factor among many that have to be considered by the business folks, but seldom an absolute barrier to business action. The lawyer tells the business folks what the risks are, and then the business folks balance the various opportunities, costs, and risks.
Under S.515, the patent attorney becomes a roadblock, not an asset. The patent attorney has to repeatedly tell the business “NO. You cannot move, you cannot act, until I get a patent application filed.”
Lawyers (and the law) should help the business function efficiently, they shouldn’t be roadblocks. S.515 puts the patent attorney in the position of obstructive business adversary, not the asset and advisor that good lawyers try to be.
MaxDrei,
The issue is sharper than asserting a negative – that the transition “ought not to be, in itself, harmful.” The burden on those who propose the shift is an affirmative burden to show advantages of the shift and to show that those outweigh any harm. Asserting “Ought not to be harmful” does not cut it.
You are correct, however, that S. 515 FTF provisions have no counterpart in FTF provisions of the EPC, thus making this move even more uncertain, playing Russian roulette with American innovation.