Federal Circuit Extends the Scope of 102(e) “Secret Prior Art”

In an important case, the Federal Circuit has expanded the scope of so-called 102(e) “secret prior art.” Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application.  The case is important because of the large number of provisional patent applications being filed each year.

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In re Giacomini (Fed. Cir. 2010)

Giacomini’s patent application was filed on November 29, 2000.  In his search, the examiner found U.S. patent 7,039,683 (the “Tran patent”) and asserted that patent as prior art over Giacomini.  The Tran patent application was filed in December 2000 (after Giacomini) and issued in 2006. However, the USPTO asserted that the patent should be considered 102(e) prior art because it claims priority to a U.S. provisional application that was filed in September 2000.

35 U.S.C. 102(e)(2) bars patentability if

the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed . . . shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of [the PCT] in the English language.

The question in this case is whether the 102(e) priority date for prior art reaches-back to the filing date of the provisional application. On appeal, the Federal Circuit agreed with the USPTO that the provisional filing date is the 102(e) priority date.

In the 1968 case of In re Klesper, the Federal Circuit predecessor court (the CCPA) held that the 102(e) follows the prior precedent of treating a prior art disclosure found in an issued patent as being disclosed as of the “filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”  The Federal Circuit agreed that this provision applies equally to provisional patent applications “ so long as the provisional application [provides] written description support for the claimed invention . . . in accordance with Section 119(e).”  Giacomini never argued that the provisional failed to describe the invention found in the prior art.

Therefore, the Tran patent “shall have the same effect,” [Citing 119(e)] including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

This decision follows the BPAI’s 2008 precedential of Ex parte Yamaguchi, 61 U.S.P.Q.2d 1043 (BPAI 2008). However, the decision is in tension with the Hilmer doctrine. In re Hilmer, 359 F.2d 859 (CCPA 1966) (a U.S. application’s 102(e) priority date does not extend to its Section 119 foreign filing date). Giacomini had argued that provisional applications should be treated like foreign filings rather than like non-provisionals because the priority statute for provisional applications is also found in Section 119 and becaues provisional applications lack the formality of non-provisionals. 

Note: US Court interpretations of 103(a)/102(e) offer a major difference between US practice and European practice. Namely, in the US secret 102(e) prior art is available to be combined as part of an argument for obviousness while in most European countries, the filing date of prior art is only important for novelty purposes.

205 thoughts on “Federal Circuit Extends the Scope of 102(e) “Secret Prior Art”

  1. Perhaps a little advice for a layman…
    1)I invented product X…filed the provisional, it has lots of claims but missed a few new design features
    2) I am now filing the Utility Patent…I want the provisional date…but also want the improvements

    What should I do…hypothetically

    Any advice is appreciated…..Ciao!

  2. Ned,

    Homey don’t do answers – especially after I just got done telling you that htis thread isn’t about foreign apps.

    You seem stuck in some bygone foreign app battle and cannot seem to focus on the here and now.

  3. ping, alright, clever boy, give me the answers:

    D1 US 111(a) appl. filed in English;

    D2 PCT appl. filed w/i year, priority claimed to D1;

    D3 US National Stage filed;

    D4 Patent issues on US national stage.

    Now, give me the 102(e) date of the issued patent (assuming all appls. fully support the claims)

    – if the PCT is filed before Nov. 29, 2000;

    – if the PCT is filed after that date in English; and

    – if the PCT is filed after that date in German?

    Failure to answer any question correctly will be referred to the PTO for review.

  4. ignore his position on international applications

    Pssst, Ned – international applications are not part of the subject here.

  5. Just quick, ah, but you ignore his position on international applications filed Nov. 29, 2000. See C(3). The only 102(e) date is the national stage date. Nothing earlier — even if the PCT claims priority to an earlier filed US 111 (a) or (b) application.

    As to applications filed after Nov. 29, 2000, note the weird situation involving applications not published English. They too do not have the benefit of the filing date of priority US 111 (a) or (b) applications. Note, that a 111(b) application does NOT have to be filed in English to have a US filing date. The issue never came up in Giacomini as to whether the provisional had to be in English to provide support for benefit claim. They certainly do not for foreign applications in general.

  6. Sorry to arrive so late to this thread…

    Ned Heller | Jul 10, 2010 at 02:43 PM, wrote: “I will ask for the fourth time, what is the prior art date of subject matter disclosure in a patent issuing on an international application that claims the benefit of the filing date of an earlier filed US patent application (provisional or non provisional) when the subject matter is fully supported in the earlier-filed case under Section 112, p. 1? Add, even, that the subject matter is claimed.

    “The commissioner has long maintained that it is the national stage date, or other dates provided from time to time by 102(e). See, 35 USC 375. Is he right? Seems flatly inconsistent with ALL judicial precedent and is a result not mandated by the statutory framework.”

    Maybe I am misreading Ned’s post, but I don’t believe that Ned correctly summarizes the Commissioner’s position, at least as of the 1999 AIPA amendments. According to MPEP, under the facts posed here, assuming the international application (IA) was published in English (probable, given the priority claim from a US application), and given the automatic designation of all States when an international application is filed, then the IA publication itself has a 102(e) date, and its 102(e) date is the international filing date.

    Furthermore, if the IA claims benefit to an earlier US application, as posed by Ned in this scenario, then the 102(e) date of the IA publication is the date of the earlier US application.

    Under these facts, the national stage date (i.e., the 371(c) date) is irrelevant.

    The issued US patent, and all other USPTO publications of the various applications, all share all of these 102(e) dates of the IA publication.

    See MPEP 706.02(f)(1), example 7, pages 700-36 and 700-37: link to uspto.gov :
    “All references, whether the WIPO publication, the U.S. patent application publication or the U.S. patent of, or claiming the benefit of, an international application (IA) that was filed on or after November 29, 2000, designated the U.S., and was published in English under PCT Article 21(2) have the 35 U.S.C. 102(e) prior art date of the international filing date or earlier effective U.S. filing date.”

  7. Not looking to be “right” or “wrong” Ned,

    I be looking for an answer to my (still unanswered) question.

    What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?

  8. well, ping, I think you are wrong about 135. Let’s see you raise that issue the next time you file a motion in an interference. Report back your results.

  9. my poor sarah – you once again have the wrong ping in mind.

    I don’t spoon feed anybody, much less spoon feed crap.

    Try to remember – I be on your side.

  10. When I think back on all the crap I have been spoon fed by you both, I wonder PING you were an Academic? I am glad you are out of that racket. And I hope you never get a chance to go back. Maybe that won’t even be a problem with what has gone on here, blog or not.

  11. but, really you seem to ignore the point that the claims involved in the priority contest are not from the provisional.

    Not at all Ned, sure the claims are “involved”, but more to the point, the early date is what is being “involved”, so it is not a stretch, but rather a direct question – one which remains unanswered:

    What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?

    is it not reasonable to say on a prima facie basis (i.e., subject to rebuttal) that subject matter in a regular is supported by a provisional to which it claims priority?

    Oh boy – even IANAE has been bitten by the two wrongs make a right bug.

    The answer, quite simply, is “No.” Let’s try to obey the law people.

    Once he has found a disclosure with the information he needs” can only be ascertained upon inspection – the very inspection necessary that properly establishes entitlement. Merely saying “Oh look a provisional was filed, therefore let’s go with that date” does not establish a prima facie case and cannot shift the burden.

    After all, examiners almost never even check whether your own claims are supported by your own provisional.

    and

    I would say he’s entitled to assume that any patent document claiming a priority date is prima facie entitled to that date.

    Both be flat out wrong. You cannot assume such facts in the attempt to satisfy your burden, cause assumptions don’t carry the necessary legal weight. Being lazy is not an appropriate answer. Sure, it be OK on a blog, but then again, a blog aint affecting my client’s legal rights.

  12. Well, IANAE, what if I simply appeal and the examiner has not demonstrated support. Who wins?

    Well, Ned, if you have any sense, you will point out the absence of support in your brief. If you’re right about it, you should win.

    The Board doesn’t decide based on the standard of a prima facie case, but if you don’t raise the issue of support in the provisional (or if the entirety of your pleading is “the examiner has not shown detailed support in his rejection”) you shouldn’t expect to win on that basis.

  13. Well, IANAE, what if I simply appeal and the examiner has not demonstrated support. Who wins?

    I suggest that I do, that is, unless there is a presumption operating here that I do not understand.

    Now, with continuations, there is a presumption that the disclosure was carried over. But, given the loosey-goosey nature of provisionals, I am not so sure there is the same presumption. I think the courts would agree.

  14. But, we should never forget that it is the examiner’s burden to show support.

    That’s not his burden, though. His burden is to make out a prima facie case that your claim is unpatentable. Once he has found a disclosure with the information he needs, claiming a sufficiently early priority date, that’s a prima facie case. Might not be clear and convincing, but he doesn’t need clear and convincing.

    Suppose the examiner cites against you the disclosure of an issued patent. Does he bear the burden of checking the file history of that patent to make sure the cited portion was not impermissible new matter added during prosecution? I would say he’s entitled to assume that any patent document claiming a priority date is prima facie entitled to that date.

  15. IANAE, on the first to file issue, yes — to the extent only of filed applications. But, the Feds have also held that prior invention is prior art as well for 103 purposes. That would be gone in the new system.

  16. IANAE, well, I agree, that I would check first and also argue the substance that the provisional does not support the claims in crafting my response. But, we should never forget that it is the examiner’s burden to show support. We do not have a burden to rebut until he has proved his prima facie case.

    The situation is quite different with respect to a priority claim. We have the burden. Now, just because the examiner does not object, does not mean he has not checked for support.

  17. they should have to demonstrate support for the claimed inventions in the provisional in order to present a prima facie case.

    Since we’re only talking about a prima facie case here, is it not reasonable to say on a prima facie basis (i.e., subject to rebuttal) that subject matter in a regular is supported by a provisional to which it claims priority?

    After all, examiners almost never even check whether your own claims are supported by your own provisional. They take your priority claim as prima facie evidence of that. Why should they bother checking for every prior art reference they cite?

  18. Since we have first to invent, these important rights are not lost by delays of one sort or another.

    Wouldn’t first to file give the same protection against surrounding a pre-existing patent of known importance with later-filed obvious variations?

  19. IANAE, more than that, I would suggest that, based on this decision, they should have to demonstrate support for the claimed inventions in the provisional in order to present a prima facie case. It is a required element of proof.

  20. dfab, unfairness is a two-way street. Think Japan. They can and have surrounded important patents with obvious variations forcing the patent owner into cross licensing. This is a sign of a weak and dysfunctional patent system.

    Now think of the US system. Our system grants the first inventor his patent and prevents others from obtain patents on obvious variations. Since we have first to invent, these important rights are not lost by delays of one sort or another.

    Once you understand these principles, you will see just how important they are.

  21. Regarding the use of the provisional filing date in 102e rejections, it is only fair that the USPTO provide the provisional application to the Applicant whose invention is rejected based on such provisional filing date.

    Provisionals are already made public when a published application claims priority to them. You can view them on PAIR.

  22. ping, I see your stretch, but, really you seem to ignore the point that the claims involved in the priority contest are not from the provisional.

  23. …For an exemplary case where the 103/102e combo is especially unfair, imagine the case where multiple 102e references are combined in a 103 obviousness rejection. If two 102e references with different inventors are secret and undisclosed to the public, including PHOSITAs, it seems unreasonable to expect that the combination would have been obvious to a PHOSITA at a time before the 102e references are published. Perhaps the invention may have been obvious to the two above-average inventors of the 102e references working in collaboration to combine their respective inventions, but not to a PHOSITA.

    Regarding the use of the provisional filing date in 102e rejections, it is only fair that the USPTO provide the provisional application to the Applicant whose invention is rejected based on such provisional filing date. The Applicant should be entitled to such access to defend his invention, considering the unlikeliness that examiners take the time to ensure that each application is fully supported by the provisional (especially since only the claims of the 102e non-provisional reference need be supported by the provisional, not the description which is usually used in 103 rejections).

  24. Ned,

    The phrase includes the word “involved”.
    The phrase does not include the word “placed”.

    So again,

    What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?

    In other words, “involvement” includes secondary effects.

  25. I fully understand the reasoning behind 102e prior art references as stand-alone references in anticipation rejections–somebody else invented it first, fair enough. However, I don’t understand the logic of the use of 102e references in 103 obviousness rejections. If the 102e prior art was secret before being published, then the reference was not known to PHOSITAs. Thus, it would not have been obvious to combine the 102e prior art with another reference until the 102e art was publicly available. This is esp. true if the inventor of the 102e reference has a higher-than-ordinary skill in the art (which is often the case if the inventor is creating ingeneous or truly inventive technology). In that case, the invention of the rejected application may have been obvious to the above-average inventor of the 102e prior art, but not a PHOSITA.

  26. Back to your provisional, the provisional application is not published. So it is inconsistent with the whole concept of publicly known. I would suggest that the examiner needs more evidence.

  27. An examiner, you raise a good point that I actually have been wrestling with — the tension in 102a between “use” and “known.” Over the years, the courts have required use to be a “public use.” However, as I have understood it, “known” only requires that some one other than the inventor know the invention and not have an obligation of confidentiality to the inventor. There seems to be no consideration of whether that other person is trying to keep it secret as well.

    It seems the only way to reconcile this is that “known” must also include some evidence of public use as well.

  28. 102e is pointless. All it is doing is codifying that a provisional or non-provisional application document suffices as proof for 102a “known by others”.

    You’re rejected under 102a for it being known by others, here’s my proof, bam slam down the provisional. You could make a “what if inventors are foreign, not in this country, lalalala, not 102a” argument.

    Which brings about a nice question that I have. What does “in this country” actually mean. Is a foreign national who invented the invention in a foreign country, then walks into the US prior to the invention thereof by applicant, a qualifying prior art under 102a? If so, then I’d argue it is inherent that a person must know the invention within this country in order to file it with the USPTO, (whether via internetz or in person).

  29. 6, perhaps we are not on the same page here. The 131 affidavit I speak of must be filed in the non provisional application of the same inventive entity. That 131 affidavit will identify the provisional and demonstrate why the invention is supported.

    Thereafter, when that application is published, the file wrapper will contain the 131 affidavit. That will effectively publish the provisional so that others my look at it.

    It may be cumbersome for examiners to have to review a file wrapper for 131 affidavits, so the PTO might be wise to publish the fact that a 131 affidavit was filed in an application and the date of invention it claims.

  30. “6, the provisional is identified in the 131 affidavit or in the interference.”

    Knowing the ID of a prov and knowing what is actually in the prov are two separate things I should think. Or is that in a 131 as well? If we’re talking about a 131, then are we really even talking about a provisional? The office can’t just send them a copy to verify what they’ve said, you’re going on the 131 alone. In which case, why don’t they just file a 131 as to having invented the invention previously and not even mention the prov?

    Ned, that situation should not be able to happen. The prov is not published for a reason.

  31. ping, I think the exclusion of 135 is clear. The provisional cannot be placed into an interference. It is not an application for that purpose.

    However it can form the basis of a priority claim.

  32. What part of “cannot be involved” stops the legal effect, even secondary legal effect, of being involved?

    prior art as of their dates of invention

    invention as defined by…

    cf “invention” with “matter”. There be a difference.

  33. 6, the provisional is identified in the 131 affidavit or in the interference.

    Claimed subject matter is prior art as of their dates of invention — or did you not know this?

  34. “I’ve been thinking about the situation where a non-provisional application does not claim priority to the previously filed provisional application, but where the invention disclosed in the patent is either the same as disclosed in the provisional or fully supports the inventions claimed. Regardless of the priority claim, the invention(s) disclosed in the provisional in the manner prescribed by section 112, paragraph 1, can still be good prior art as of the date of its filing if the provisional forms the basis of a claim of prior invention either in a rule 131 affidavit or in an interference. See In re Bass.”

    How did you find out about that prov? See In ur As s.

  35. ping, all 135 means is that a provisional application cannot be involved in an interference primarily because it has no claims, no oath, etc.

    However, it can be used to determine who is senior party and who wins the interference.

  36. Ned,

    I hope the new cites indidcate more than “and another application or patent” for which that other application or patent is not relying on a provisional for any type of 135 legal standin, since as I have now shown twice, provisionals cannot apply to such legal standing.

  37. Ping, the interference would be between a section 111(a) patent application and another application or patent. There the applicant would prove prior invention by showing the invention was described in the manner provided by section 112, p. 1, in the provisional. That would be a constructive reduction to practice which should allow the applicant to prevail if the other inventor cannot prove prior dates.

    Note, the prior provisional, not being relied upon to prove a filing date of the application in interference, would not be useful in determining who is senior party. Still, it could prove decisive in the interference.

  38. Needs a better cite, Ned, the only In re Bass google give me is CAFC 02-1046 In re Robert Bass and that case does not deal at all with non-provisionals.

    as to “in an interference”, Ned I already touched upon this (feeling scholarly):

    Swearing Momma, – doesn’t 35 USC 111(b)(8) trump your view, at least in the duel here of using a provisional to antedate the applicant?

    “provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.”

    Posted by: ping | Jul 09, 2010 at 04:42 PM

    Ned – 135 is interference, in case ya forgot.

  39. for an effective priority effect,

    We’re not talking about “effective priority effect”, we’re talking about “effective prior art effect”.

    When is an application prior art under 102(e)? When it was described in an application with a sufficiently early filing date.

    What is the filing date of an application under 119(e)? As to any invention disclosed in a provisional to which priority is claimed, the filing date is that of the provisional. That means everything in the provisional is entitled to the filing date of the provisional, as soon as priority is claimed.

    The filing date of the matter in the provisional does not depend on the contents of nonprovisional, except that part of the nonprovisional that contains a specific reference to the provisional for the purpose of claiming the priority. It is immaterial whether any of the claims in the nonprovisional are entitled to the earlier date.

  40. Note also, that under the principles of In re Bass, all that might be required to make the provisional prior art as of its filing date is a reference in the patent so that the provisional effectively becomes published on the date of publication of the patent.

  41. I’ve been thinking about the situation where a non-provisional application does not claim priority to the previously filed provisional application, but where the invention disclosed in the patent is either the same as disclosed in the provisional or fully supports the inventions claimed. Regardless of the priority claim, the invention(s) disclosed in the provisional in the manner prescribed by section 112, paragraph 1, can still be good prior art as of the date of its filing if the provisional forms the basis of a claim of prior invention either in a rule 131 affidavit or in an interference. See In re Bass.

  42. IANAE, I have no problem at all with the idea that, for an effective priority effect, a claim-free provisional has to be an application for protection, in a Convention country, for the “same” invention as that claimed in a later filing which declares the priority of the provisional.

    But then I come from the UK, where for a hundred years claims under the Paris Convention to the priority of a claim-free provisional were judged on a “prior claiming” as opposed to a “whole contents” approach. see Section 8 of the UK Patents Act of 1949. Since 1978, the UK has had to swallow a mainland European whole contents approach. But Germany is still today doing prior claiming in its national utility model/petty patent/Gebrauchsmuster law. Germany England and the EPC are all sensible, just different.

  43. there’s no sensible reason

    Except for when the law is written to make it so.

    But IANAE is right (still) – the writing of the law does not need to be sensible.

    Or to think about it another way – the provisional really doesn’t even “exist” in any legal sense until another, later-filed document properly references it. Such is the way of later documents breathing life into earlier documents.

  44. For me, building the American template seems to be a work still in progress.

    Doesn’t that presuppose that there is progress?

    Seriously though, there’s no sensible reason why the prior art status of a document that is not even required to contain claims at all should depend on the claims in another, later-filed document.

  45. Merits ping? I think we can easily agree that justice is done only when ALL relevant facts are taken into consideration.

    But where does that process stop? When do facts stop being relevant? We need a simple legal template or touchstone on which to measure what is patent-eligible, and patentable, which we can all accept as workman-like and fair. Only after we have fixed that can we decide whether something does or does not possess “merit”.

    For me, building the American template seems to be a work still in progress. Whole contents or prior claiming. B-gg-red if I know. Does the CAFC know? I’m not sure.

  46. Hard to say this, but 6 has a better grasp of this than even my idol IANAE. Some observations:

    Or, what 6 said, I guess.

    No, it is what 6 said.

    If the provisional was made public pursuant to an attempted priority claim, shouldn’t that be enough?

    No – the special date is dependent on the special condition being made. Sure, everything else in the provisional is indeed published on the date the provisional is made public, but the special date has to meet the law’s requirements and only those things meeting the law’s requirements get the special date.

    but is this not an absurd result?

    No. It is a difficult result, but not an absurd result. We have seen in CIP’s that multiple effective dates are possible (on a claim by claim basis). We have seen the Supremes repeatedly denying brightline rules that would make things easy. The patent world is not about making things easy. It be about taking each and every case on its own merits. Ya might even say it is an anti-widget philosophy.

  47. I just read the Director’s brief. It is consistent with the views I and IANAE express here. http://www.google.com/url?sa=t&source=web&cd=3&ved=0CBoQFjAC&url=http%3A%2F%2Fpatentlyo.com%2Fgiacomini—directors-brief-red-brief.pdf&ei=J5s7TKqeIoGesQPj6OicBg&usg=AFQjCNGjtl5BVi6JXP5rNdhjnlH6Kevwgg

    It is, however, inconsistent with Rader’s opinion, which largely adopts the position of the applicant (that only the subject matter claimed is entitled to prior art effect). What is a Director to do? How can the nominal victor appeal or recommend a rehearing — because that is what the Director has to do in this case, because his legal theory lost.

  48. IANAE, I agree TOTALLY with your post.

    6 and Malcolm, I quoted case law above were the Feds pointed out that the commonly disclosed subject matter of a CIP is entitled to the filing date of its parent REGARDLESS of whether any claim is entitled to the benefit of the filing date of the parent.

    See, Purdue Pharma v. Boehringer, 237 F.3d 1359 (Fed. Cir. 2000), discussed and quoted above.

    It would be a bizarre world where the prior art status of a parent could change depending upon claims presented later, in an subsequent continuation, or even in a reissue or reexamination.

    The patent office made this error, a very serious error which they later acknowledged in response to an editorial I wrote in the JPTOS, that the prior art status of a prior filed US or International application could “change” depending on whether the particular patent in question issued on an international application or upon a Section 111(a) application. The l u nacy of their position then was easily demonstrate just as you have so cleverly done in this instance, IANAE.

  49. Malcolm: In practice, this would mean that a provisional specification that is *in fact* published (e.g., by virtue of a priority claim in a PCT app) can have two different *effective* publication dates in the US, depending on what is recited in the claims.

    I understand your reasoning that a provisional should not be effective prior art based on the priority claim if the priority claim is not valid, but is this not an absurd result?

    On which claims would the date depend? The originally filed claims in the regular? The claims that ultimately issue? What if we can find even one claim that was presented at some point during prosecution of the regular that finds 112 support in the provisional – would that be enough? How do we deal with the ever-changing 102(e) dates as the regular undergoes amendments in the ordinary course of prosecution? Surely that affects only the priority dates of those particular claims in the regular, and not of the regular as a whole. Or, what 6 said, I guess.

    If the provisional was made public pursuant to an attempted priority claim, shouldn’t that be enough? Wouldn’t that make more sense?

  50. I can’t believe you guys continued to discuss this. And just for the record I’m pretty sure me, ping and MM are all saying the same thing. MM just happens to break down what we’re saying into the more technical aspects. I can’t be sure since he seems to have stated something a bit off the wall, but it could practically be a typo.

    What MM said was:

    “Rader “An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.”

    I think this makes sense but only if you recognize that a priority claim to a provisional that does not provide written description support for the claimed invention is a bogus priority claim. To the extent the priority claim to the provisional is bogus, the provisional will not be given the special status of being considered 102(e) art as of the provisional filing date.

    In practice, this would mean that a provisional specification that is *in fact* published (e.g., by virtue of a priority claim in a PCT app) can have two different *effective* publication dates in the US, depending on what is recited in the claims. Note that it makes no difference whether the claims issue or not.”

    What he said literally is not true, but it is very close. What subject matter gets the 102(e) date in a given provisional>nonprovisional relationship is not governed by what is claimed in the nonprovisional (or the provisional for that matter). It is governed simply by what specifically overlaps in the disclosure as a whole of both documents (including any claims and stuff in the spec). Don’t take that the wrong way, I’m not saying that if the later document had “at least three legs” then they would necessarily get a priority 102(e) date (from a validly referred to provisional validly disclosing) for the subject matter “4 legs”. That would likely not be proper overlap.

    So, to the extent that MM may have been referring to the “instantly claimed invention” in a case such as this where he is referring to the subject matter under consideration in the application at question, rather than the prov or non-prov under consideration as a reference, then he would be correct. It is difficult to know what specific claimed invention he was referring to. You guys keep throwing terms that are easily confused in this discussion leading to misunderstandings. You need to be clear.

    I note that indeed a priority claim in an application under examination or an issued patent to a prov may be proper even if the case currently has no claims to the subject matter that is properly supported by the prov. Indeed, they may want to file a CON or DIV later to submit some claims that would require the chain of priority to get back to the prov, but they have none in the non-prov now. Of course, the claims in that non-prov application under examination (or that has already issued) will not get the date of the prov if the prov does not provide them with WD support.

    Like I said, I simply cannot believe that you guys continue to discuss this. It’s as easy as babycakes. I also cannot believe that Max has such a poor understanding of the situation as to have misread the document also.

  51. My pal Hal got done saying what I said at Jul 09, 2010 at 05:43 PM:
    A whole lot of misconception about what Rader said.

    Here’s an observation to think about: Rader said that the issue wasn’t raised properly and that’s why it is moot. Rader was addressing a procedural technicality. Rader was not addressing the merits of the argument, cause he didn’t have to.

    Me so scholarly.

    Hal says:

    Now, several folks have questioned further possible holdings of the case.

    But, there is none: Appellants narrowly brought the issue of a patent-defeating date of a provisional with waiver of other issues. There also is no question concerning whether the provisional has a full disclosure of the invention.

  52. The effective prior art dates of patents issuing an international applications is perhaps the sole “significant” remaining prior art issue in US law that has not previously been addressed by US courts. The problem is that the US patent office is taking a very conservative position on this this issue is not asserting that US patents have an effective prior art date as of the earliest US patent application to which they claim benefit if they happened issue on international applications. As a practical matter therefore, a large number patents are issuing that potentially are invalid because the patent office is not citing the best available prior art against them. Secondly, by not raising the issue itself in the patent office, they are not giving the Federal Circuit or any other court an opportunity to opine on the issue. This is strongly contrary to the prior practice of other commissioners and other solicitors to take the most aggressive position on prior art possible and allow the courts to decide the issue. Rather, by not raising the issue, the Commissioner has short-circuited the natural development of the law.

    I hope the present director reads this post and reconsiders his duty to the American public in this matter.

  53. Yeah, ping, you are probably right.

    Rick Neifeld published this criticism of the commissioners views.

    link to neifeld.com

    It includes the follow footnote:

      10. In In re Lund, 376 F.2d 982, 988, 153 USPQ 625, 630-31 (CCPA 1967), the Court of Customs and Patent Appeals stated that “ it is also well settled that…all subject matter carried over into [the patent] from the parent application…[is] evidence to defeat another’s right to a patent.” (emphasis in the original). In In re Klesper, 397 F.2d 882, 885, 158 USPQ 256, 257 (CCPA 1968) the court unequivocally indicated that the 35 USC 102(e) prior art date of a patent is the filing date of the earliest United States filed application disclosing the invention from which the patent claims priority. More recently, the Federal Circuit has affirmed a long standing doctrine that prior art includes all inventions which were made in the United States and subsequently disclosed to the public in the United States. See E. I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1437, 7 USPQ2d 1129, 1134-35 (Fed. Cir. 1988) (quoting with approval from In re Bass, 474 F2.d 1276, 1292, 177 USPQ 178, 190 (CCPA 1973))(“[t]he term ’prior art’ as it is used in 35 U.S.C. §103 should include all inventions which were made in this country before an applicant or patentee made his invention, regardless of when those inventions are made public or patent applications on them are filed, so long as those inventions are found not to have been abandoned, suppressed, or concealed.”).
  54. I will ask for the fourth time, what is the prior art date of subject matter disclosure in a patent issuing on an international application that claims the benefit of the filing date of an earlier filed US patent application (provisional or non provisional) when the subject matter is fully supported in the earlier-filed case under Section 112, p. 1? Add, even, that the subject matter is claimed.

    The commissioner has long maintained that it is the national stage date, or other dates provided from time to time by 102(e). See, 35 USC 375. Is he right? Seems flatly inconsistent with ALL judicial precedent and is a result not mandated by the statutory framework.

  55. I would like to bring to our discussion prior binding precedent that is inconsistent with Rader’s opinion:

    In re Lund, 376 F.2d 982 (CCPA 1967)
    link to cases.justia.com

    and

    Purdue Pharma v. Boehringer, 237 F.3d 1359 (Fed. Cir. 2000)

    In Lund, the court held that “disclosure” carried forward into an issued patent is entitled to prior art status, but not disclosure not carried forward. But what is interesting is its discussion of the law:

      It is, of course, incontrovertible that a description of an invention of another in an application filed before an applicant’s date of invention, upon which application a patent is issued, constitutes a bar to the issuance of a valid patent for the same invention, Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), codified by § 102(e), or obvious variations thereof, Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304 (1965). It is also well settled that where a patent purports on its face to be a “continuation-in-part” of a prior application, the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent. 35 U.S.C. §§ 102(e), 120; Goodyear Tire & Rubber Co. v. Ladd, 121 U.S.App.D.C. 275, 349 F.2d 710 (1965), certiorari denied 382 U.S. 973, 86 S.Ct. 536, 15 L.Ed.2d 465; Asseff v. Marzall, 88 U.S.App.D.C. 358, 189 F.2d 660 (1951), certiorari denied 342 U.S. 828, 72 S.Ct. 51, 96 L.Ed. 626; In re Switzer, 166 F.2d 827, 35 CCPA 1013.7

      38
      The question is — what has been “carried over” from the Margerison ‘806 application to the application on which the Margerison patent issued? Although the board stated that “the subject matter” of the ‘806 application “has been carried forward” into the patent, it would seem that it was referring to the broad, generic disclosure of the compounds and perhaps the other disclosure common to the two applications which we have outlined earlier in this opinion. The examiner stated, and the board and solicitor do not disagree, that the patent “has not carried forward the disclosure that is being relied upon by the Examiner as the prior art.” We agree with this conclusion of the examiner. Thus it is apparent that the claimed subject matter has not literally or explicitly been “described” in the patent upon which the rejection is predicated.

      That is not the case here, however. It seems to us that the sine qua non of § 102(e) and the Milburn case is that, consistent with the gain to the public which the patent laws mean to secure, a patent must issue which contains, explicitly or implicitly, the description of an invention which is to be relied on to defeat a later inventor’s patent rights. It does not appear that the patentee here has done “all that he could do to make his description public,” Milburn, supra, for the language Margerison employs is not sufficient to incorporate the description of his earlier application into the patent and the description which the Patent Office relies upon appears only in the earlier application. Upon the facts here, we think it would require an unreasonable extension of the language of § 102 (e), and of the Milburn decision it codifies, to find that the subject matter of claim 3 is “described” in the patent issued to Margerison.

    In Boehringer, the issue was whether the patentee had committed fraud by claiming priority to an earlier application in an CIP where the claims were not supported. The Feds said this, and it is important:

      Because the specifications of the asserted patents and the ‘331 parent are largely identical, it was logical for Purdue to claim priority to the ‘331 parent, even if the claims of the asserted patents are not entitled to the earlier priority date of the ‘331 patent. As pointed out in In re Wertheim, 646 F.2d 527, 533, 209 USPQ 554, 561 (C.C.P.A. 1981) (discussing In re Lund, 376 F.2d 982, 988, 153 USPQ 625, 630-31) (C.C.P.A. 1967)), a claim to priority to an earlier patent strengthens the offensive value of a later patent, because, for disclosures common to both documents, the later patent will be effective as prior art as of the filing date of the earlier patent. We therefore decline to find inequitable conduct in the mere act of claiming priority to an earlier patent where the specifications, but not the claims, of the later patents are supported by the earlier patent.

    Both these prior cases are flatly inconsistent with Rader’s views on 102(e).

  56. Ned, I love your twist. I have noted over 30 years the difficulties US attorneys have, in comprehending the (to me)very simple and logical Article 54 novelty provisions of the EPC, under which A would be entitled to priority for a dependent claim but not for the wider claim from which it depends.

    When the multi-national team of patent experts in Europe put together the simple provisions of Article 54, they were standing on the shoulders of giants (including many from the USA) and making sure they did not carry forward into Europe’s new law of novelty any of the obscurities and uncertainties of the old “prior claiming” regimes that were used up to that point to decide priority between inventors.

    I think events since then have revealed that the team succeeded.

    I suspect that Rader J. has taken all this fully into account. As you say, he might well be “on a mission” here.

    Mr Sehgal, why isn’t A publication (and the attendant throwing open of the USPTO file wrapper) enough for your purposes. That’s all you get at the EPO.

  57. If there is no other prior art for provisional for example PCT,then how an applicant will know that such a prior art exists as provisional is not accessable. In such a scenario USPTO should have a provision to enable the potential applicants to have an access to database of provisional applications as it saves efforts on the part of applicant and also to some extent workload on USPTo as many double patenting cases can be avoided.

  58. BJ, good example.

    Let’s give it a twist:

    A has a dependent claim wherein he claims a chair with four legs. This claim is wholly supported in his earlier filed provisional. He should be able to rely on its filing date to remove the reference.

    Now, this is entirely contrary to normal practice in the US where the it is the dependent claims that are deemed patentable if the parent is patentable.

  59. MaxDrei, Rader is always on the warpath. He may be trying to change US law on 102(e) prior art. He did this once upon a time with regard to Means Plus Function claims when he was new to the court. He is doing it now with regard to the “entire market value” rule and damages.

    Ping, I think the only thing dicta about Rader’s opinion was whether the Tran claims were supported. He did not have to decide this issue because it was unnecessary. However, he did rest his opinion on the priority claim and the invention claimed by Tran. Here is the decisive passage:

      Therefore, the Tran patent “shall have the same effect,” including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

    The holding of the court is that the “claimed” invention (the Tran claims) is given patent defeating effect as of the filing date of the provisional.

    Now, as I have said, this is completely correct under 102(g); but is quite unexpected under 102(e).

  60. Thanks ping. I can go along with that. But what if the issue HAD been raised properly? Can we divine what he would have said, or must we, the PTO and its Applicant community, the BPAI, and the district courts meanwhile wait for a suitable case to reach the CAFC, at some indeterminate date in the future?

  61. A whole lot of misconception about what Rader said.

    Here’s an observation to think about: Rader said that the issue wasn’t raised properly and that’s why it is moot. Rader was addressing a procedural technicality. Rader was not addressing the merits of the argument, cause he didn’t have to.

  62. Help me BJ, with what you think Rader “implies”. Are you asserting that the statement:

    “wait, ‘at least three legs’ isn’t supported by B’s provisional, either!”

    is a bad basis for refuting the novelty attack, but that Rader says it is a good one?

    Interesting. We are back with the debate about whether “prior claiming” or “whole contents” is the better way to deal with prior art that is post-published yet prior-filed. Jurisdictions, throughout the FtF world, have chosen one or the other of these two approaches. Neither is devoid of merit. But patent attorneys do need to know which one is governing, in any particular jurisdiction.

    Does Rader know which one governs in the USA, I wonder.

  63. Regardless of the interpretation of Rader’s comments of what needs to be supported in the provisional application, he is wrong. Or at least, should be.

    Here’s the hypo to prove it:
    01/01/2005 – A files a provisional describing only a chair with four legs.
    03/01/2005 – B files a provisional describing only a chair with four legs.
    06/01/2005 – A files a non-provision describing and claiming a chair with at least three legs.
    01/01/2006 – B files a non-provisional describing and claiming the chair with four legs.

    The Examiner determines that A does not get the benefit of the provisional because his provisional only supports 4 legs, not 3 or more. Then the Examiner applies B as prior art by virtue of it’s provisional date. A can’t say “wait, ‘at least three legs’ isn’t supported by B’s provisional, either!”

    However, this is what Rader implies. What he should have said is that B is prior art for every “invention” it describes in accordance with 112, claimed or unclaimed. Thus, B’s described four anticipates A’s at least three even though B (or A) wouldn’t support the anticipated claim. Further, the results shouldn’t change if B claims a houseboat.

  64. Malcom:

      Also, if I expressly abandon a provisional 1 month after filing it, then file a utility application 11 months after the provisional filing date, can I still claim priority to that provisional application? Seems like a dicey proposition.

    There is no requirement of co-pendence in 119, which pertains to BOTH provisionals and to foreigh applicaitons as a basis for priority. The whole intent from the get go was to give Americans the same priority rights as foreign applicants in the new era of patent term being measured from the US (111(a)) filing date.

  65. Score one for Ned!

    Nice job old-timer.

    Swearing Momma, – doesn’t 35 USC 111(b)(8) trump your view, at least in the duel here of using a provisional to antedate the applicant?

    provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

  66. I will ask for the third time:

    What is the effective 102(g) date of a patent or the claimed subject matter of that patent issuing on an international application that claims the benefit of a prior US patent application disclosing the invention in the manner required by Section 112, p. 1.

  67. An obvious problem with provisionals is that there is no requirement of co-pendency, leaving only the priority link.

    There is a 1-year time limit from the provisional filing date for any priority claim to be made to the provisional, no?

    Also, if I expressly abandon a provisional 1 month after filing it, then file a utility application 11 months after the provisional filing date, can I still claim priority to that provisional application? Seems like a dicey proposition.

  68. Now, read the official position of PTO concerning abandoned patent applications and their use as 102(e) prior art, supra, and compare to my hypo and earlier posts suggesting that they too could be prior art under Rader’s rational concerning “prior invention.”

  69. Channeling, see

      2127 Domestic and Foreign Patent Applications as Prior Art [R-6]

      I. ABANDONED APPLICATIONS, INCLU-DING PROVISIONAL APPLICATIONS

      Abandoned Applications Disclosed to the Public Can Be Used as Prior Art

      “An abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent [application] is reference[d] in the disclosure of another patent, in a publication, or by voluntary disclosure under [former Defensive Publication rule] 37 CFR 1.139.” Lee Pharmaceutical v. Kreps, 577 F.2d 610, 613, 198 USPQ 601, 605 (9th Cir. 1978). An abandoned patent application becomes available as prior art only as of the date the public gains access to it. See 37 CFR 1.14(a)(1)(ii) and (iv). However, the subject matter of an abandoned application, including both provisional and nonprovisional applications, referred to in a prior art U.S. patent >or U.S. patent application publication< may be relied on in a 35 U.S.C. 102(e) rejection based on that patent >or patent application publication< if the disclosure of the abandoned application is actually included or incorporated by reference in the patent.

  70. Bruce, if you reference an abandoned application, it is deemed published on the date of publication of the referencing patent or published patent application. Its effective date is not on the date the abandoned application was filed.

    cite please.

  71. Mooney, you have yet to deal with Rader’s opinion, what he actually said, and not with your preconceived notions.

  72. Bruce, if you reference an abandoned application, it is deemed published on the date of publication of the referencing patent or published patent application. Its effective date is not on the date the abandoned application was filed.

    Let’s take Rader seriously for a moment. What Rader may be contending is that the only subject matter that is prior art as of the “filing” date of a parent is subject matter claimed and supported in the child. Everything else is deemed “published” on the date of publication of the patent or application.

    Now, as you and I both agree, this is contrary to long establish precedent that treats 102(e) as a quasi publication of subject matter described in a patent application as of the date it is first disclosed if the subject matter is published in a published patent or application that “claims” (regardless of merits of the claim) to be a continuation (CIP as well) or a division of the that application and if there was “co-pendency.”

    An obvious problem with provisionals is that there is no requirement of co-pendency, leaving only the priority link. Thus, Rader had to concoct a sui-generis theory that is very dangerous to established 102(e) precedent.

  73. Bruce The idea that a provisional application is only prior art as to what is claimed from it in its cited child applications seems nonsensical to me.

    It is nonsense. As far as I can tell, it’s mainly Ned’s idea.

  74. It seems to me that there must be thousands of provisional applications abandoned each year. Can it really be the case that all a poor abandoned provisional needs in order to become 102(e) prior art is for its inventor to claim priority in some subsequent utility patent, even if the priority claim is, to use Malcolm’s word, completely bogus?

    How can you really determine if it is completely bogus?

    Here is part of the problem, as I see it. It is totally irrelevant what a prior art utility application/patent claims when determining what it discloses for 102/103. The claims there are irrelevant, but not what is disclosed. I would estimate that 98+% of the prior art that I see cited against applications I am prosecuting have claims that are irrelevant to my applications. On very rare occasion, I have had claims cited against me as prior art, but in those cases, those claims were considered part of the disclosure because they were part of the application when it was originally filed.

    The idea that a provisional application is only prior art as to what is claimed from it in its cited child applications seems nonsensical to me. In all other cases, with anticipating references, what is important is what is disclosed, and not what is claimed. This is true no matter how many levels of parentage you have to go through, and how many of those were confidential until opened up through publication of a child application.

  75. ping said “requires” is a bit of an overstatement

    I think you need to read chapter 2300 again (assuming you’ve read it). It’s hypothetical anyway since the 131 dec would have been improper to begin with. But if the examiner knows for a fact there are patented claims that may overlap in scope, the examiner is indeed required to suggest an interference. See MPEP 2304.04 (a). Whether or not interference is declared is the decision of the director’s representative under section 135.

  76. Patentology (Mark Summerfield)

    My vote is that Joe’s provisional application is prior art in Scenarios II and III.

    In Scenario I, there was no claim of priority to the provisional, so it remained unpublished and confidential.

    In Scenario IV, there was no utility application to claim priority to the provisional, and it thus remained unpublished and confidential as it expired.

    In both Scenarios II and III, there was a claim of priority to the provisional, and at the point that the application claiming priority was published (either as an application or upon issue if non-publication had been requested), the provisional is effectively published.

    You can see this dynamic through PAIR. The only time that a provisional application is available in Public PAIR is when the file history for some utility application claiming priority to it is made available through Public Pair. I should note that this is also the case of abandoned utility applications that are also in the chain of priority.

    Scenario III would have been a much closer call if the utility application had merely claimed priority to the provisional application, instead of incorporating it by reference. My memory is that even with 102(e), material incorporated by reference is considered to be within the four corners of the utility application or patent being cited as a reference. It has been awhile since I ran into this, but think I remember losing on this a couple of years ago.

  77. Patentology, until Rader’s opinion in this case, I could have easily answered your questions. But since Rader has in his infinite wisdom (ha, that’s a laugh) seen fit to thrown the whole jurisprudence involving 102(e) into chaos, I have no clue.

    People have long laughed at Judge Newman for so often missing the point. I have, in turn, been highly critical of Judge Rader for being a loose cannon on the court. He needs help. A lot of help. The other judges on the court should keep this in mind when Rader says anything about the law.

  78. JCD, just counting votes, it seems the community here is voting with my interpretation of Rader’s opinion. I have sever times quoted what Rader said. There is no way that he can be misinterpreted in my view. He talks about Tran, the reference, and whether the Tran claims are supported in the provisional.

    Now, if he intended to say instead that the issue of whether the Giacomini claims are described in the provisional, he should correct his opinion. The word “support” is a very “odd” word to use in a prior art rejection.

    The PTO’s position here, largely endorsed by Rader, is chaotic. First it says that the provisional must support the claims in the non provisional. Then it issues an anticipation rejection! This would imply, would it not, that the claims in Tran and the claims in Giacomini are the same. But, another poster has actually looked at the claims and found them different, suggesting that a 102 rejection is not well taken. But if they are claiming the same subject matter, there should be an interference, not so?

    This whole issue of requiring support for the claimed subject matter in order to be prior art smacks of Section 102(g). The CCPA, in Hilmer, declined to find the foreign application to be 102(g) prior art ONLY because it was not filed in the US.

    But 102(g) prior art is limited to the claimed subject matter. So, if one were to “substitute” the issue of whether the provisional filed in the US as 102(g) prior art rather than whether it was 102(e) prior art, Rader’s opinion would make eminent sense.

    Which brings me back to the curious case of patents based international applications claiming the benefit of the filing date of prior-filed US provisional and non provisional applications. I contend they are prior art as of US filing date under 102(g) — even prior to the amendments to 102(e) that took place in the last 10 years.

    What say you?

  79. 6 SAID:

    “An important limitation is that the provisional application must provide written description support for the claimed invention.”

    I think this is what you’re misunderstanding Ned. He is talking about the instant claimed invention, not the claimed invention in the non-prov reference on which the rejection is based.

    —-

    I never expected to post these words, but: I agree with 6. I read it as far more likely that he did not clearly convey his reasoning than that he intended to craft new precedent without more explicative language.

    In this regard, I note that there are countless quotes out there in countless cases in every sphere of law that appear to support bizarre, weird positions. Such dicta, however, is just that, dicta. All this is not to say that I don’t understand where you are coming from, I just think that it would be a tough argument to sell based entirely on that quote.

  80. Damm Momma,

    requires the Office to suggest an interference anyway.

    I think the move is at the Director’s discretion. 35 USC 135(a): “in the opinion of the Director

    “requires” is a bit of an overstatement.

  81. I have really been trying to resist coming back to this, but it has been bugging me all day!

    I have come to the conclusions: that Ned is right about what Judge Rader is saying here; and that Malcolm’s suggestion – that it is possible to make sense of this by recognising that an assertion of priority from a provisional application that does not provide written description support for the claims in the nonprovisional is bogus – seems quite persuasive.

    Hypotheticals seem popular, so how about four for the price of one!

    Scenario I

    “Joe” (not his real name) invents widget X and associated gadget Y, and files a provisional application disclosing X and Y on 9 July 2010.

    During the subsequent 12 months, Joe invents X+, an even better widget. The provisional application is insufficient to support X+, and Joe is no longer interested in gadget Y, so Joe files a new utility application, on 9 July 2011, disclosing and claiming X+, and abandons his provisional.

    Joe’s claims for X+ subsequently issue, no continuations or other pending rights remain outstanding.

    Scenario II

    Again Joe invents widget X and associated gadget Y, and files a provisional application disclosing X and Y on 9 July 2010.

    Again Joe invents X+, and files a utility application on 9 July 2011. Even though the provisional application is insufficient to support X+, Joe wants to keep his options open, so he maintains the description of X and Y in his utility application, and claims priority from his provisional.

    In the end, however, Joe decides not to bother with X or Y, and his claims for X+ subsequently issue, no continuations or other pending rights remain outstanding.

    Scenario III

    Again Joe invents widget X and associated gadget Y, and files a provisional application disclosing X and Y on 9 July 2010.

    But this time Joe invents doodad Z, and drops the X line of products altogether. He files a utility application for Z on 9 July 2011, and even though it is almost completely irrelevent to Z, Joe absent-mindedly, and without deceptive intent, claims priority from his provisional application and incorporates its contents by reference in the utility application.

    Joe’s claims for Z subsequently issue, no continuations or other pending rights remain outstanding.

    Scenario IV

    Yet again Joe invents widget X and associated gadget Y, and files a provisional application disclosing X and Y on 9 July 2010.

    In December 2010 Joe retires, abandons his pending provisional application, and emigrates to Australia to live out his remaining years in the shadow of a giant fiberglass banana (no, seriously, link to bigbanana.com).

    Meanwhile…

    “Jane” (also not her real name) independently invents gadget Y, and files a utility application describing and claiming gadget Y on 8 July 2011.

    The Hypothetical Questions

    In each of the scenarios above, is Joe prior art to Jane under 102(e)?

    If the outcome is different in each case, why should that be so? Surely in all scenarios, Joe abandons X and Y at some point along the way?

    It seems to me that there must be thousands of provisional applications abandoned each year. Can it really be the case that all a poor abandoned provisional needs in order to become 102(e) prior art is for its inventor to claim priority in some subsequent utility patent, even if the priority claim is, to use Malcolm’s word, completely bogus?

    If I have understood the discussion here correctly (though I am not at all sure that I have): Judge Rader says that the outcome in all four scenarios is the same, and Joe is not 102(e) prior art to Jane; Ned agrees that this is what Judge Rader says, but finds it absurd; Malcolm also agrees that this is what Judge Rader says, but does not find it absurd; ping and 6 think that Judge Rader has said something else entirely; and MaxDrei thinks that the Paris Convention is somehow implicated, although I cannot see this myself anywhere in 119(e).

    Enquiring minds really want to know! :-)

  82. MaxDrei, you did not go on to explain to the dear folks that only that subject matter entitled to priority is also entitled to be “prior art.” This is the European system of preventing two patents on the same invention.

    Karen, if what Tran is claiming and what Giacomini is claiming are different, then logically under Rader’s theory of 102(e), the Tran claimed subject matter is available only as a 103 reference.

    But, as I noted before, Rader’s theory of the operation of 102(e) is far far afield of traditional 102(e) theory where priority has NOTHING to do with prior art. They are different animals altogether.

  83. Just because the terminology is different doesn’t mean that different inventions are claimed. It absolutely looks to me like both are drawn to the same claimed invention. Giacomini also did not argue that it was not the same, merely that the reference did not qualify under 102.

    Apart from that, merely accepting the USPTO’s assertion that the 102 (e) rejection is proper over Tran and filing a 131 dec. requires the Office to suggest an interference anyway.

  84. Didn’t mama tell you not to swear said “swearing behind is not applicable to this case. Rule 131 really isn’t that hard to read, so I am amazed at how many attorneys think they can swear behind a 102 (e) rejection, when the same patentable invention is claimed in the prior art.”

    I’m confused. Sure, swear-behind is unavailable when the invention claimed in the reference is the same invention claimed in the application. But that’s an unusual occurrence, and I’m not sure why you think it’s true here.

    Just to be sure, I reviewed the file history again. The Tran reference does not appear to claim the same invention as the Giacomini app claims. So as far as I can tell, swear behind is available.

  85. Looking in from outside, I am finding this thread good fun. I think Ned is right, that there is an ambiguity in Rader’s written opinion.

    Outside the USA (and Rader travels there quite a lot) there are two schools of throught about the scope of priority rights,”whole contents” as in the EPC and “prior claiming” as in UK till 1978 and still found in German national law.

    In the Hilmer Doctrine there are traces of both schools. I think that Rader knows and understands both lines of thgought and that these are informing his judgement.

    Look at the Paris Convention. You claim X in child B. To benefit from the priority date of the filing of earlier application A, you need:

    1. In B a declaration of the priority of A

    2. A is the “first” (Paris defines what that means) application in a Convention country to protect the same invention X, and is not more than 12 months earlier than the filing date of B

    3. A provides an enabling disclosure of invention X.

    So, 6, MM, you need to pay attention to BOTH the reservoir of disclosure in A (its whole contents) and whether it is directed to the protection of invention X (prior claiming). If you can’t jump all the prescribed hurdles, you do not get the Paris priority effect.

    Now I know that in Giacomini we are not interested in a non-US earlier application A but, all the same, the question whether a domestic priority is recognised is not so very different from the question whether or not to recognise a foreign priority date. Or is it?

    Logically, the question whether a 102(e) effect reaches back to A is different again, but not that different, eh? However, once again, one is bound by the language of the Statute, as noted in Hilmer. BTW, does not Hilmer breach GATT-TRIPS? Sigh.

    So, out of all that, I think Ned, MM and 6 are getting there, gradually, but Rader is well ahead. Thus far anyway.

  86. you do have to know that I am talking about unclaimed subject matter disclosed in both the parent and child

    Ned, in order to not be so dense (and clueless – both yummy words no doubt) tell me how the above statement of yours can be logically derived from:

    However, no claim in the continuation application is entitled to the benefit of the filing date of the parent because the claims are directed to “new matter.”

    And so, my dear Mr. ping, you would state that if the claims of CIP are
    not supported in its parent that the effective prior art date of its disclosure is the filing date of the CIP not the filing date of its parent? That is complete nonsense.

    Last I checked Ned, “new matter” and “not supported in its parent” (both your words), cannot by any stretch of real world logic (IMHO-Ned Law logic not included) be rationally equated to “I am talking about unclaimed subject matter in boththe parent and child”.

    I hope you be hungry Ned, thems some mighty dense words you be eatin. Are they yummy?

    Here’s a hint – do not assume that others “have to know” that what you mean is the opposite of what you actually say, unless you start your post with a proclamation of “It’s opposite day!”

  87. Malcolm, OK just to keep things separated if they need to be separated.

    But your requirement for separate discussion of provisionals-non provisional and continuations from one non provisional to another seems to suggest that 102(e) operates differently with each. (That was the subtle point I was also trying to make before, that they should not operate differently.)

    Now, just so that we understand each other, is there a difference, in your view, between the two (other than statutes, 119 vs. 120) in terms of how one determines the prior art date of some disclosure of an issued patent?

    1) Does the subject matter forming the basis of the prior art rejection have to be claimed in either case? (You have already agreed that it does not in the simple case of a patent with no continuation.)

    2) If the subject matter has to be claimed in the case of a provisional-non provisional and not in the case of a continuation involving two non provisionals, why the difference?

  88. 6, then perhaps Rader will issue a revised opinion to make what you think he intended clear. But I am glad you agree that if Rader said what I think he said that what he said is complete nonsense.

  89. Malcolm, even you now seem to agree that the claims in the continuation

    Ned, it’s almost impossible to discuss anything with you when you keep bouncing all over the place. Can you please use the terms “provisional” and “utility application”, unless we are talking specifically about a continuation of a utility application? This is a discussion about 102(e) and its relationship to provisional applications. Or it was. Thanks.

  90. “However, I honestly believe you are not reading Rader correctly. He is talking about support in the Tran provisional for the Tran claims as required by 119(e) for a valid claim for priority.”

    Nope, he’s talking about support in the Tran provisional for the subject matter for the INSTANT claims (support which is required by 119(e) for a valid claim for priority). Sorry dude. Rader just said it wacky, his point is not anything crazy like you’re coming up with.

    “However, that is exactly what Rader said could be done here.”

    Nope, he just said something different in a fashion that made you mistakenly believe that’s what he said. He just happened to be a bit clumsy with his words Ned, why is that so hard for you to recognize?

    I’m not discussing this with you any further and I should hope nobody else does either. Talk it over irl with someone who will humor you tomorrow if you absolutely must have someone tell you to your face that nothing earthshatteringly st upid was uttered in that paragraph.

  91. clueless, yes, I mean you ping, you do have to know that I am talking about unclaimed subject matter disclosed in both the parent and child. Assume the CIP claims are not supported in the parent, but all its disclosure is still set forth in the CIP. What is your view of the effective prior art date of the unclaimed subject matter disclosed in both the CIP and its putative parent?

    1) the filing date of the CIP; or

    2) the filing date of the putative parent?

  92. Malcolm, even you now seem to agree that the claims in the continuation must be supported in the parent in order for the unclaimed disclosure of both to have a prior art date of the parent. This, of course, has never been a requirement under 102(e). I cannot defeat the prior art effect of a reference by showing that its subject matter is not claimed, or that a claim is not supported in a parent.

    However, that is exactly what Rader said could be done here.

  93. 6, I am not pulling your leg. You should know by now that I value your opinion. (Ditto Malcolm) However, I honestly believe you are not reading Rader correctly. He is talking about support in the Tran provisional for the Tran claims as required by 119(e) for a valid claim for priority.

    Here is the entire paragraph:

      An important limitation is that the provisional appli-cation must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to pro-vide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below. See In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider arguments that the applicant failed to contest before the Board); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (same). Therefore, the Tran patent “shall have the same effect,” including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).
  94. Maybe this is a bit simplistic, but I see provisional applications as essentially CIPs, and apply essentially the same rules about disclosure. The reason for this is that in both cases, the “child” may, and often does, contain additional disclosure.

    What this means is that you cannot just look to the “child” application claiming priority to the “parent” application when you are dealing with CIPs and provisional applications. Rather, you may need to see if there is support in the “parent” application.

    I should note that I do this as a matter of course now with provisional applications, esp. when dealing with situations like this one. For a 20 page “child” application or patent, I have seen 200 page provisional applications, and I have seen 5 page ones (consisting of PowerPoint slides). And, not surprisingly, the 5 pages of PowerPoint slides had insufficient disclosure to support the rejection, while the 200 page provisional was more than sufficient. Of course, sometimes you find that your client’s provisional application won’t support the claims either, and in that case, you are stuck with your utility filing date for at least those elements unsupported by the provisional application.

  95. changes the facts,

    Sorry Ned – thems your words – don’t you remember?

    Malcolm, methinks ‘ol Ned don’t need to smoke no tea.

  96. Ned His opinion dangerous in its wrong headedness.

    Dangerous? Sounds like you’ve been smoking that tea again, Ned.

  97. Ned: “Would you agree that the disclosure of subject matter in a patent is prior art as of the patent’s filing date regardless of whether it is claimed.”

    6: I’m pretty sure MM would. As would I. As does everyone, including Rader.

    Indeed.

    Rader “An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.”

    I think this makes sense but only if you recognize that a priority claim to a provisional that does not provide written description support for the claimed invention is a bogus priority claim. To the extent the priority claim to the provisional is bogus, the provisional will not be given the special status of being considered 102(e) art as of the provisional filing date.

    In practice, this would mean that a provisional specification that is *in fact* published (e.g., by virtue of a priority claim in a PCT app) can have two different *effective* publication dates in the US, depending on what is recited in the claims. Note that it makes no difference whether the claims issue or not.

  98. Ned, are you intentionally trolling me? You know what I said was true and that his position makes perfect sense. Because Giacomini never argued before the board that the (reference) provisional failed to provide WD for the claimed subject matter (aka the subject matter claimed in GIACOMINI) in accordance with 119(e) (so as to have it’s priority for that subject matter go through the published reference back to the provisional), Giacomini waived the argument by failing to raise it below.

    If you take any other position you are out of your mind. Seriously out of your mind.

    Sorry if you have trouble understanding what Rader is saying, but it is nothing more or less than anyone of us would say. Because Giacomini didn’t say “hey the provisional doesn’t provide WD support for the stuff I’m claiming” he waived that argument.

  99. 6, nice try there. I have previously quoted the entire passage and there is no ambiguity in what Rader is saying:

    “An important limitation is that the provisional appli-cation must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to pro-vide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.”
    Slip opinion at 6.

    There is no getting around it. Rader’s opinion makes no sense whatsoever. Further, it may significantly undermine whether disclosure of unclaimed subject matter propagates to continuations absent their being claimed. His opinion dangerous in its wrong headedness.

  100. Also, Ned, that’s interesting about abandoning a provisional. I didn’t know there was a mechanism for doing that, much less a reason to. Thanks for the explanation.

  101. Agreed with 6 here. Perhaps a bit imprecise on Rader’s part, but that’s what he’s going for.

  102. “An important limitation is that the provisional appli-cation must provide written description support for the claimed invention.”

    I think this is what you’re misunderstanding Ned. He is talking about the instant claimed invention, not the claimed invention in the non-prov reference on which the rejection is based.

  103. “He required that the provisional support the claims in the non provisional. Presumably, therefor, the ONLY subject matter that qualifies as 102(e) prior art is that claimed and supported under Section 112, p. 1.”

    That is a non sequitur.

    “Malcolm, OK, then, why is it that the examiner has to show written description support for any claim in the parent? What relevance does that have to do with anything?”

    I doubt if it does, can you show us where Rader said something about this? I must have missed it on my quick-through.

    “Would you agree that the disclosure of subject matter in a patent is prior art as of the patent’s filing date regardless of whether it is claimed.”

    I’m pretty sure MM would. As would I. As does everyone, including Rader.

  104. Slowly now, Malcolm.

    Would you agree that the disclosure of subject matter in a patent is prior art as of the patent’s filing date regardless of whether it is claimed.

  105. Malcolm, OK, then, why is it that the examiner has to show written description support for any claim in the parent? What relevance does that have to do with anything?

  106. He required that the provisional support the claims in the non provisional. Presumably, therefor, the ONLY subject matter that qualifies as 102(e) prior art is that claimed and supported under Section 112, p. 1.

    Of course, this is crazy.

    Actually, your presumption is a bit far-fetched. Thanks for clarifying that is a presumption and not Rader’s own words.

  107. Bruce, in your hypo, not one word was said about whether the referenced patent’s claims had full Section 112, p. 1 support in the provisional. This of course SHOULD BE the law here, but that IS NOT what Randy Rader held.

    He required that the provisional support the claims in the non provisional. Presumably, therefor, the ONLY subject matter that qualifies as 102(e) prior art is that claimed and supported under Section 112, p. 1.

    Of course, this is crazy.

  108. ping the numbskull speaks, changes the facts, and thumps his chest while the rest of us laugh at him.

  109. Ned: “However, I now question this because it is well known that provisional applications can and often are abandoned prior to the filing of the non-provisional. There is no requirement for copendency in order for a section 119 benefit claim to be effective.”

    Are you sure about this? Provisional apps go abandoned automatically after a year, and nonprovisionals have to be filed within a year of the provisional filing date in order to directly claim benefit from them. Maybe you have something else in mind, though?

    Posted by: A plurality of thresholding units | Jul 08, 2010 at 03:23 PM

    Yes I am. Provisional applications can be abandoned at any time and still form the basis of a valid priority claim. In fact, their abandonment is required by the Paris Convention if a subsequent provisional disclosing the same subject matter (and perhaps a bit more) is to be relied upon as a basis for priority. The abandonment must occur before the filing of the subsequent application and it must not be used as a basis for any priority claim.

    So, a wise practitioner will set up a procedure to automatically abandon their provisional application once the filing formalities are complete.

  110. Now consider the same facts, but the referenced patent issued on a continuation. Does this change anything? The answer is — no. An emphatic no! The filament remains prior art as of the filing date of the parent of the referenced patent.

    Now we se why Ned’s earlier hypo was crrpy and even though I be dense, Ned still eats his words.

    Now consider the [Ned’s hypo] facts, but the referenced patent issued on a continuation[-in-part, since the specific material was the self-admitted “new matter”]. Does this change anything? The answer is — [yes]. An emphatic [yes]! The [new matter cannot be] prior art as of the filing date of the parent of the referenced patent [since it is new matter].

    Fixed per Ned’s actual hypo.

  111. I am not the least bit surprised at the decision. It is what we have been dealing with for awhile now.

    I have run into a lot of dueling priority dates recently (arguably there is some derivation going on, on the part of the senior party). So, their application’s non-provisional priority date is before ours, and I would cite our provisional priority date. The examiner would come back with their provisional priority date. But, thankfully, about half the time I could argue that their provisional did not disclose some of our claimed elements that it was being used to help reject. The priority dates are so close, that I have been using 1.131 declarations for the rest of them.

    This dueling priority date problem is the reason that I see this rule being required. Otherwise, the otherwise prior art could be invented before the claimed invention, but not relevant under 102(e) because the later invention was originally disclosed in a provisional application, even though the prior invention was also disclosed in such.

    Take an example:
    1/01/5 – provisional application A
    1/10/5 – provisional application B
    1/01/6 – utility application A claiming priority to provisional application A
    1/10/6 – utility application B claiming priority to provisional application B

    The examiner rejects claims for utility app B under 102(e) as being anticipated by utility app/patent A. If applicant B then traverses based on his claim to priority based on provisional app B, then the examiner can, and does, respond by referencing provisional app A.

    If this were not the result here, then patent law would be less deterministic, with second inventors being able to overcome references by previous inventors as long as the second inventor’s provisional application was filed in the (up to) year between when the first inventor filed his provisional and utility applications. And, thus, the potential for multiple patents issuing on essentially the same subject matter (looking at disclosed, not claimed material).

  112. Ned: “However, I now question this because it is well known that provisional applications can and often are abandoned prior to the filing of the non-provisional. There is no requirement for copendency in order for a section 119 benefit claim to be effective.”

    Are you sure about this? Provisional apps go abandoned automatically after a year, and nonprovisionals have to be filed within a year of the provisional filing date in order to directly claim benefit from them. Maybe you have something else in mind, though?

  113. Max, under traditional 102(e) thinking, the entire contents of a patent is prior art as of its filing date regardless of claims. Thus if the patent discloses, for example, a novel filament, but patent claims only its use in a light bulb, a second filer cannot claim the novel filament unless, that is, he can show the filament disclosed in the reference is his invention or that he invented the filament prior to the filing date of the reference patent.

    Now there well maybe very good reasons why the applicant of the reference patent did not claim the novel filament. If the failure to claim was intentional, the most likely reason is that the applicant knew that the filament was not invented by the named inventors. However, regardless of the status of the claims in the reference patent, that filament is effective prior art as of the filing date of the reference patent.

    Now consider the same facts, but the referenced patent issued on a continuation. Does this change anything? The answer is — no. An emphatic no! The filament remains prior art as of the filing date of the parent of the referenced patent.

    I hope you can see that whether or not disclose subject matter is claimed is irrelevant. Whether the claims in the reference patent are supported under section 112 paragraph 1 is therefore a red herring. The issue is simply whether the disclosure is carried forward by the applicant in the continuation.

    Now historically, if the parent was abandoned legally prior to the filing of the child application, the theory is that the disclosure is not carried forward. However, I now question this because it is well known that provisional applications can and often are abandoned prior to the filing of the non-provisional. There is no requirement for copendency in order for a section 119 benefit claim to be effective. So if the provisional application has section 102(e) effect, so should any abandoned non-provisional application to which there was an ineffective claim for priority under either section 119 or 120. What is important is that there was an attempt to carry the subject matter forward.

  114. Ned thanks for attempting to explain all this to me. I’m finding it hard going, following this thread.

    In my jurisdiction, the claims count as part of the disclosure of a document, and the way the disclosure content of any given document is assessed is identical, regardless whether the document under the microscope is:

    1. a priority document, that might give a claim an effective date earlier than the date it was filed

    2. a novelty attack, that might or might not be enabling

    3. an app as filed (and the issue is whether it is sufficient, or whether a prosecution amendment does or does not add matter)

    So, I can’t help conflating priority and prior art issues. I’ve got an excuse, but does R. Rader J.?

  115. Malcolm, case? It really had to do with a number of cases that had the same fact pattern. The PTO took the position that patents issuing on international application had an effective prior art date as of their national stage date regardless of whether the international application claimed the benefit of the filing date of an earlier-filed US application.

  116. If a utility application is filed with a priority claim to a provisional and then issues with claims that lack written description support in the provisional (although parts of the specifications of the provisional and utility application are identical), is it necessary for the priority claim to be expunged?

  117. The PTO got itself into this mess in a mini war with yours truly.

    Just out of curiosity, what were the independent claims in that case, Ned?

  118. Karen asked Why no swear behind? No idea, but sometimes there’s not enough evidence of diligence, even for two months.

    Most likely because the attorney knew that swearing behind is not applicable to this case. Rule 131 really isn’t that hard to read, so I am amazed at how many attorneys think they can swear behind a 102 (e) rejection, when the same patentable invention is claimed in the prior art. That is what interferences are for, as the rule also clearly states.

  119. Just to repeat, the holding in Milburn was that the whole contents of a patent application (published as a patent) is prior art regardless of claims. This is effectively an early publication under 102(a).

    For nearly a century, the whole contents carried forward in continuations is available as prior art as of its parent’s filing date. It also may be claimed, but claims are irrelevant for prior art purposes. What is important is that the subject matter is not abandoned. See, 102(g).

    The PTO got itself into this mess in a mini war with yours truly. It had to adopt a position that patent applications are not 102(g) prior art for their whole contents in order to avoid holding that patents issuing on international applications were not prior art as of the filing date of US parent applications. They then sought to amend 102(e) to make them prior art under certain conditions. They had to do it more than once just to get it right. And, in my opinion, they were and are wrong. Patents issuing on international applications are prior art under 102(g) as of the filing date of their US parents.

  120. if the claims of CIP are not supported in [the CIP’s] parent that the effective prior art date of [the CIP’s] disclosure is the filing date of the CIP not the filing date of its parent? That is complete nonsense.

    And you Ned are saying that the self-declared new matter should be awarded a date earlier than that which the new matter actually appeared?

    Really Ned – think this one over just a bit – Don’t forget to add some salty words, cause you be eating these shortly.

  121. And so, my dear Mr. ping, you would state that if the claims of CIP are not supported in its parent that the effective prior art date of its disclosure is the filing date of the CIP not the filing date of its parent?

    That is complete nonsense.

    However, I must agree with you that that is exactly what Randall Rader is saying in his opinion. And that is exactly why Rader’s opinion is loony. But I am pleased to see that you agree with Randall Rader. I can expect no more of you.

  122. JCD, nice try. However Randall Rader expressly refers to requirements for written description support for claimed invention under section 119. There is no ambiguity here. He is not referring to any written description requirement in section 102E.

  123. MaxDrei, I hope you understand that Randall Rader conflates priority and prior art. Section 119 is all about priority just as stated by Hilmer. Historically, determining the priority of a claim of an issued patent is quite a bit different from determining whether certain disclosure contained in the parent is carried forward. The whole contents of the disclosure (carried forward) is available to be cited as prior art regardless of whether it is claimed-that is the express holding in the Millburn case.

  124. Ned –

    Although I admit that Rader’s opinion is not as clear as it could be, I read his reference to the “claimed invention” as being a reference to to the fact that it is claimed in the application at issue, not in the prior art application. This is fully consistent (as is the holding) with the PTO’s traditional stance on provisionals and 102e (See MPEP 2136.03).

    Further, after reading the opinion, I now understand why you are presenting that hypo. However, I do not read Rader’s statement that the conclusion is consistent with the principle that “a patentee must be the first inventor” as anything other than dicta. I note that the principle asserted in Milburn to be “fundamental” is at odds with current precedent regarding foreign applications and events (e.g., Hilmer). Like one of the above posters, I too would be interested in any examples of a reference found to be prior art despite not falling into any 102 sub-section.

    That being said, in your hypo, although the abandoned application would clearly not qualify as 102e art, I think there is a good argument that it would effectively establish that “the invention was known by others in this country” under 102a, assuming the inventor(s) were in this country.

  125. Ned,

    Another crrrpy hypo.

    You do not have a continuation application. You have a Continuation-In-Part application.

    Appropriate dating for such are well-known.

    And well-remembered by most.

    Mark,

    My observation is in regards to your phrase “the precise extent of the prior art base has surely been fully codified“. The prior art base in the way you are attempting to use it translates to the base of knowledge that can be used as prior art. This base (the actual prior art) is ever expanding and not subject to codification. Now, the types of matter that may serve as prior art is altogether different. Perhaps that is the term you are aiming for.

  126. Ping, what the non-troll members of this blog were talking about here in terms of “written description requirement” is the written description requirement contained in section 112 paragraph 1 for the invention claimed in the issued patent which is cited as a reference. Please see this portion of Randall Rader’s opinion:

    “An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to pro-vide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below. ” Slip opinion at 6.

  127. David, I know that is the prevailing view, but is it right?

    What’s your opinion on the following:

    Patent application — abandoned and unpublished.

    Continuation application, issued as a patent — filed before the abandonment of the parent containing its disclosure. However, no claim in the continuation application is entitled to the benefit of the filing date of the parent because the claims are directed to “new matter.”

  128. Ping says I am “trying to use the term “prior art” to mean something it does not.”

    Could you clarify what you mean by this? I am aware that some of the subsections of s102 are more-properly considered “statutory bars” to the grant of a patent. I am also well-aware that in the US context we should perhaps be making more precise distinctions between dates of invention, priority dates and filing dates.

    But if we put this aside for the moment, and agree that we are really only discussing 102(a) and 102(e) references here, my questions would be:

    (1) Is there anything encompassed by 102(a) or (e) that you would not properly call “prior art”?

    (2) Is there anything that you would call “prior art” that is not embraced by 102(a) or (e)?

    I note that Judge Rader uses the term “prior art” in this context (although it is clear that some here think that he has got it wrong also).

    I am at a disadvantage here, given that out here in the “rest of the world” we simplify our lives by operating on a “first inventor to file” basis, so we only ever have to deal with “stuff made public before the priority date of the claim, plus copending applications with an earlier priority date” (which is all prior art) and all other “stuff”, which is just not relevant.

    I might therefore lack the capacity or language to draw the more subtle distinctions required for this discussion. If so, I apologise and thank you for your patience!

  129. Max –
    I don’t think Rader side stepped it. He acknowledged that in some cases it might be an issue. In this case it was not.

    I don’t follow the argument related to whether the provisional supports the claims of the utility. The issue is does the provisional support the rejection.

    If the provisional supports the rejection, then it shows that the invention or element there of was known or used by others prior to the apparent date of invention. Why would anything else matter?

    If the applicant can swear behind the provisional date, in our First to Invent system, he can and should swear behind the provisional date with a declaration under 37 CFR 1.131.

    My only complaint is that the burden is placed on the applicants to prove that the provisional does not support the cited portion of the cited document and the burden should not be placed there.

  130. On your point, Les, note how Rader side-steps the issue by finding that Applicant did not bother to dispute whether Tran’s declared priority date was good. See page 6 of Rader, first full para. Giacomini “waived the argument by failing to raise it below”.

    Why that failure? Up above, another poster tells us that the Tran provisional is “almost” identical to his non-pro. But what does “almost” embrace, I wonder? Suppose the non-pro has claims and the pro not. Suppose that you don’t know from the pro what invention it is trying to protect? How then do you lie, when Rader is checking to see if (pace Paris) it is or is not an application in a Convention country to protect the “same” invention as the one of the claim in view?

    Boundy, perhaps Crouch is bent on making his blog more exciting for non-domestic readers?

  131. Ned Heller | Jul 07, 2010 at 02:51 PM – the outcome of your hypo turns on whether the earlier application was published before abandonment, or sunk below the waves without a trace. If it was published, then it’s prior art under 102(a) (b) or (e).

    New poster to this blog | Jul 07, 2010 at 04:44 PM – your question turns on the difference between “title” and “chatper.” Title 35 goes from section 1 to section 376. Chapter subbreaks are irrelevant.

    Dennis – I don’t see the tension with Hilmer. Hilmer applies to foreign, Yamaguchi/Giacomini applies to U.S. provisional. Other than an accident of coincidence that the provisional priority statute got wedged into section 119, the two have very little to do with each other.

  132. Mark,

    Be aware of the terms that you use. You are trying to use the term “prior art” to mean something it does not.

  133. Dennis –

    Why are you calling this an extension? The PTO has been operating under this rule since provisionals were implemented.

    The absurdity of it is that the examiners cite the non-provisional application and rely on the provisional date without even looking at the provisional. It seems to me this is outrageous.

    If an examiner is relying on the provisional date, the examiner should be required to cite the provisonal, thereby ensuring that the cited subject matter is actually supported by the provisional and entitled to the date.

  134. I liked Rader’s reference to “same invention” because it is precisely the language used in the corresponding provision of the Paris Convention. As I have noted on several occasions, Rader does get around.

    I like his use of “written description” to harmonise US law with what the rest of the world thinks about the effectiveness of priority documents (regardless whether filed at the home Patent Office or one in another country). I like the way he just takes Hilmer in his stride. If the mark of a good Decision is that it helps everybody to see the ground rules more clearly, then this is a good Decision (and Bilski was a bad one).

  135. “Turns out that the provisional and the utility were almost identical.”

    Karen,

    Thanks for clearing up that mystery and confirming what I suspected. You also make an astute point about why the applicant didn’t try antedating under 37 CFR 1.131. That’s another mystery we may never know the answer to.

  136. Thank you, ping, for your effort to enlighten me. I am finding this discussion most informative.

    On its face, however, 35 USC 102 does appear to be a complete codification of the scope of the prior art. It commences “a person shall be entitled to a patent unless…”, and then proceeds to list the barriers to patentability, (a) to (g).

    To me this appears to mean that if, and only if, one or more of the listed conditions is satisfied (in respect of anticipation under 102, or obviousness under 103), then the patent must be granted.

    Can you direct me to any specific cases, decided after the enactment of the present section 102, that have found scope for additional sources of prior art, not falling into one of the categories identified in the code?

  137. the precise extent of the prior art base has surely been fully codified

    Interesting thought, but um, no not practical, and never will be.

    but the US patent code IS a codification of US Supreme Court decision

    No Ned, not quite correct – the patent code contains codification of some Supreme Court rulings. It also contains some codification to annul Supreme Court ruling and it also contains much other stuff. The nuance is much greater than the simple and errant picture you paint for our friend who is hoping to learn the US system.

  138. Ned,

    102 (e) starts: “the invention was described in…

    and concludes with two avenues, an application and a patent, which are both written items.

    Is it too nuanced to recognize that requiring the invention to be described in a written vehicle means written description requirement?

    Where’s them salty words like a s s and i d i o t?

  139. Malcolm, yes and no. The decision is flawed and really needs to be reviewed by the other judges en banc.

    There simply is no written description requirement for 102(e).

  140. Rader’s statutory construction is lightweight at best. Full of holes, actually

    And yet, he reached the right result.

    These judges amaze me sometimes.

  141. Patentology, but the US patent code IS a codification of US Supreme Court decision and the US Supreme Court will look to its own decisions to interpret what Congress intended when and it this case goes there.

    Congress can CHANGE the law. But since Congress has exhibited no clear intent to do so, 102(e) should be interpreted consistent with Milburn, not inconsistent.

    Now read the decision. The primary authority for the decision is the Milburn case. As others have pointed out here, Rader’s statutory construction is lightweight at best. Full of holes, actually.

  142. Is it not interesting that Judge Rader even feels compelled to argue that the current decision is consistent with Supreme Court precedent?

    Milburn was decided in 1926 when (I presume) the extent of the prior art base was largely a matter for the courts to decide. There was no s.102, nor any provisional applications.

    Since then, the precise extent of the prior art base has surely been fully codified, along with the statutory bars, in s.102. The effect of a provisional application is also set out the the patents act. Judge Rader is bound to follow the statutory scheme, even if this may be inconsistent with earlier precedent.

    If there are disturbing implications to this decision, perhaps it is Congress, not Judge Rader, that has got it wrong? This is what happens when you patch a statute with piecemeal amendments over an extended period of time: some of them may have unintended and/or undesirable consequences.

    Obviously US law is not my specialty, and I am happy to be educated further on this.

  143. Malcolm, this whole discussion with the Aussie illustrates the dramatic flaw in Rader’s opinion does it not. Milburn operated on a theory of immediate publication of a prior invention — a quasi 102(a) event. Rader somehow thinks inexplicably that full priority benefits are required for this publication — but that flies in the face of the hold in Milburn that claims are not even required.

  144. The one thing I find interesting here is that the court’s reasoning (which appears soundly-based on the wording of the statute) suggests that if the provisional does not provide 112 written description support for the claims ultimately granted in a nonprovisional application, then the claim to benefit of the provisional filing date is void. In this case, the patent is only 120(e) prior art from the nonprovisional filing date even if the disclosure in the provisional would anticipate the claims of an application against which the patent is cited, and the anticipating portion of the disclosure is fully carried over into the nonprovisional application.

    If this is true, then this case is a narrowing of the scope of 102(e), not an expansion.

  145. Ken, provisional applications were supposed to provide “foreign priority-like” benefits to US applicants under a 20 years from filing expiration date regime. When thinking provisional application, think Paris Convention priority, but the with the twist that the application is filed in the US.

    The US filing date should give the provisional application full 102(g) effect to the extent its contents are published. However, the PTO is and was at war with whether patent applications can have 102(g) effect. This position stems from a personal war I conducted with the commissioner some years ago about whether a US patent issuing on an international application could have a 102(g) or (e) date when it claimed the benefit of prior filed US application, provisional or non provisional. The commissioner insisted it could not; but to maintain a straight face, the commissioner had to take the position that US applications had no 102(g) effect at all.

    So, here we are. As the Reverend Wright said, “The commissioners chickens have come home to roost.”

  146. EG asked why the applicant didn’t challenge whether the provisional disclosure would have rendered unpatentable the claimed invention.

    I reviewed the file history for this case when I first heard it was going up to appeal. Turns out that the provisional and the utility were almost identical.

    Another weird thing is that the provisional date was only 2 months before Giacomini’s own filing date. Why no swear behind? No idea, but sometimes there’s not enough evidence of diligence, even for two months.

  147. Patentology — I have brought this up many times before and here as well. The thinking on this by Rader is unacceptable and plainly wrong.

  148. Obviously, given the present case and its “prior invention of another” rationale from Milburn, we are going to have to rethink whether a short discontinuity in copendency insufficient to imply abandonment (two years, I believe) should disqualify abandoned patent applications from being prior art as of their filing date if their contents is published in an issued patent (or published application). I see no reason why not.

    Recall that a provisional application never issues and may be abandoned prior to filing a non provisional. Still, it form the basis of priority. What if I claim 119(e) benefit of a prior-filed abandoned non provisional application? That claim may be denied on a technicality, but still the proof of prior invention is there.

    Again recall that all the law requires for prior invention to be prior art is 1) a reduction to practice and 2) disclosure. There is NO requirement of continuity, Section 112, p. 1 support or anything of the kind. This is where Rader’s opinion goes way, way off the tracks.

    Milburn expressly held that the entire contents of the patent application is prior art regardless of whether the subject matter was claimed. This is STRONGLY INCONSISTENT with Rader’s holding and with Rader’s rationale.

  149. This decision confirms what most of us already believed to be the case, and will not come as a surprise to any of my (Australian) clients who choose to file an initial US provisional application, rather than an Australian provisional, precisely to gain the benefit of 102(e) prior art effect against others’ later US applications.

    The one thing I find interesting here is that the court’s reasoning (which appears soundly-based on the wording of the statute) suggests that if the provisional does not provide 112 written description support for the claims ultimately granted in a nonprovisional application, then the claim to benefit of the provisional filing date is void. In this case, the patent is only 120(e) prior art from the nonprovisional filing date even if the disclosure in the provisional would anticipate the claims of an application against which the patent is cited, and the anticipating portion of the disclosure is fully carried over into the nonprovisional application.

    I almost dare not ask, given the inflammatory approach of many contributors, but — do others think I have this right, or am I missing something here?

  150. I think the court got this one right. The problem is that Congress codified provisional patent applications in the wrong code. I always thought provisional patent applications should have their own code, because they are between a 120 filing and a 119 filing. Specifically if one converts a provisional instead of claiming priority to it they look pretty much like an old streamlined continuation in which examination has never been done.

    However, if one claims priority to a provisional then they look to me more like a 120 continuation without incorporaton by reference. Of course if the subject matter is not incorporatied by reference in the regular U.S. filing then the subject matter that is in the provisional and not in the regular filing should be considered abandoned by the applicant and, therefore, not useful for purposes of 102(e).

  151. MM,

    102(g)2 I guess could work but the issue about the respective conception, reduction to practice, and reasonable diligence analysis is much more fact intensive that a simple 102(e) rejection.

    Addressing Giacomini’s arguments where a provisional application should be treated like a foreign application does not make any sense.

    Foreign applications and provisional applications are clearly treated differently under 119.

    Also, 119(e)(1), a 111(a) application (non-provisional) will have the same effect as the provisional to which the non-provisional claims priority to if properly claimed, etc. etc.

    Hence, 119(e)(1) states that a 111(a) application can extend all the way back to a provisional application. Although this case is an interesting one for 102(e), the outcome is not a surprise.

  152. Once the application that claims priority to the provisional application is published, the provisional is open to the public. You can usually access it on PAIR, through the “Continuity Data” tab of the published application.

  153. Malcolm, 6–
    Shame on me for trying to work while reading this blog. I didn’t read the hypo closely enough–it posited using the issued patent as prior art, not the abandoned application as I carelessly read. Thanks.

  154. evidence the claimed invention already exists/is possessed by another

    Maybe under 102(g). Not 102(e).

  155. Ned asked: US patent application filed. abandoned. Second US patent application filed, same disclosure. No co-pendency. The second refers to the first in its bogus claim for benefit. Is the patent that issues on the second good as prior art as the date of the abandoned application?

    Of course not. It’s not a valid priority claim.

  156. One rationale of Milburn that is left out of today’s decision was that but for the (necessary) delays of the patent examination process, the application at issue would have been publisehd as of its filing date:

    Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon as the Patent Office did its work, although, of course, amendments might be required of him before the end could be reached. We see no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact . . ..

    With provisonals, you can create secret prior art by taking delibrate steps to keep your application secret, e.g., by filing a provisional application instead of a non-provisional application.

    I’m not saying this is right or wrong, just a bit of a twist from aspects of Milburn.

    Also, someone said that this has alwasy been the rule, but I have a vague recollection that back in the early days of provisional applications it was different – U.S. applications might not have been cited as of their provisional dates, based on the theory that they never were intended to be published. Does anyone else remember this from the late 90s?

  157. The most interesting thing I see in this case is why the applicant didn’t challenge whether the provisional disclosure would have rendered unpatentable the claimed invention. Or did the applicant already know what was in the provisional and was thus forced to make a “Hail Mary” challenge of the Examiner’s ability to rely upon the provisional disclosure as 102(e) art?

  158. Sorry… earlier post should have included in the first paragraph, additional language from 35 USC 111(b)(8):

    “The provisions of this title relating to applications for patent shall apply to provisional applications for patent…”

  159. 6–
    Correct me if I’m wrong–the second application gives the examiner enough of a clue to find it.

  160. “I don’t think Ned’s hypo is at all “bogus.” If I understand the rationale here, the reason the earlier prior art date applies (when the issued patent claims priority to a provisional application, or the provisional application is published) is because the provisional complies with s112 p1 disclosure, and therefore is evidence the claimed invention already exists/is possessed by another, and so should count under 102(e). ”

    First, before going any further in your legal analysis, you should tell us how you found out about the contents of this provisional, it has never published.

  161. 35 U.S.C. § 111(b)(8)is cited for the rationale for why “applications for patent” under section 102 includes both provisional and non-provisional patent applications, leading to the conclusion that an applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional applica-tion or U.S. non-provisional application.

    However, 35 USC 111(b)(8) states “The provisions of this title relating to applications for patent…” Chapter 11 of Title 35 deals with “applications for patent”. This chapter includes sections 111-122. Section 102 is not within chapter 11 of Title 35, while section 119 is.

    Based on the statute, it makes sense that an application can get priority back to a provisional (119 within Ch. 11), but it also makes sense that a provisional can’t be used as prior art as of the filing date of the provisional (102 not within Ch. 11).

    What am I missing?

  162. I don’t think Ned’s hypo is at all “bogus.” If I understand the rationale here, the reason the earlier prior art date applies (when the issued patent claims priority to a provisional application, or the provisional application is published) is because the provisional complies with s112 p1 disclosure, and therefore is evidence the claimed invention already exists/is possessed by another, and so should count under 102(e). I think, however, the hypo suggests too purposive a reading of 102(e). The plain language of 102(e) would seem to exclude using the abandoned application as prior art, because it is neither a published application, nor can a patent be granted claiming priority to it. At least that’s my admittedly limited understanding. So flame away.

  163. Ned asked: US patent application filed. abandoned. Second US patent application filed, same disclosure. No co-pendency. The second refers to the first in its bogus claim for benefit. Is the patent that issues on the second good as prior art as the date of the abandoned application? If not, why not?

    faceman replies: The issued patent would have prior art effect under 102(e)(2) as of its filing date, not the filing date of the first application because there isn’t co-pendency. If there was co-pendency and the first application was abandoned prior to being published, then I believe under 102(e)(2) the effective prior art date would be the filing date of the first application (assuming written description compliance, etc.). Of course, if the first application was published it would be prior art as of its filing date under 102(e)(1).

  164. ping, Milburn specifically held that whether one claimed the invention or not was totally irrelevant. The disclosure of the patent was deemed published on the date the patent application was filed.

    Several CCPA and Fed. Cir. cases have also held that prior invention becomes prior art on publication in some form. This does NOT require a patent application directed to the invention.

    ping, all I am saying here is that IF the provisional qualifies as prior art under Milburn, it qualifies for its whole contents, not just what has written description support for subsequent claims.

  165. We’ve been through this before and at least Ned has changed his tune to a degree (nice to see Ned clamoring for the proper level of support and saves me the repetitious reminders of “invention – what invention – invention as claimed” – I’m sure that Ned noticed that the Court used the appropriate terminology – claimed invention).

    However, Ned hasn’t yet learned (remembered?) that provisionals CAN issue through the conversion process (in addition to the more typical path of relation by merely claiming priority and incorporating by reference).

    Red Monkey, We’ve also been through the published under section 122(b) discussion, noting the permissible exceptions to the exception and further noting that provisionals appropriately linked as to gather the required date are also appropriately “published” as the legality of that term demands.

    Ned, your hypo is bogus – you must have a live link to claim priority and since you state in your hypo that the original is abandoned, you get no benefit. Even 6 pointed this out to you. Why bother Malcolm to comment on a lame hypo? He’s got clients to fleece, er, um serve.

  166. allright, Mooney, since you have taken up the banner dropped by the fleeing faceman, answer the hypo above addressed to faceman concerning abandoned applications.

  167. “6, well, unless you do, I will traverse and not even respond substantively.”

    Then I will send you a non-compliant response 😉

  168. The scope hasn’t been expanded because this has always been the rule. I would’ve told the client they were s.o.l. Seems like a lot of money was unnecessarily wasted by appealing to BPAI and CAFC.

    Indeed. But the geniuses in corporate management probably managed to suck a few more bucks from our brilliant investor class while this thing was percolating.

  169. It doesn’t look like anyone raised 102(e)’s requirement that the cited application be “published under section 122(b)”. Further, 122(b) explicitly says that a provisional application shall not be published. Thus, it seems like Tran’s provisional should have been prior art under 102(a) rather than 102(e).

    Red, this is why they are making the non-provisional the “cited application.” That one is published. What the court is doing here is saying that the non-provisional’s effective date for priority purposes (under 119(e)) is also its effective date for prior art purposes.

    I personally don’t think that this was a slam dunk as some do. The court is ignoring the phrase “as to such invention” in 119(e). What does that mean, if the section actually means that it will have “the same effect” for all purposes? But, the Federal Circuit has spoken, so it is what it is.

  170. “Burkha, Flies & a Sheikh”
    Dirka. Dirka, dirka?
    Posted by: 6 | Jul 07, 2010 at 02:57 PM

    Que?

  171. Red Monkey: The issued patent arising from the nonprovisional application was cited in the rejection.

    I dunno – maybe there’s still something for the courts to suss out here about provisional priority vis-a-vis PGPubs (as opposed to issued patents), but that’s probably not a wise thing to hang your hat on in any case. If the reference application later issues, then you’ve definitely got a reference out there (1) that you are fully aware of, and (2) that you didn’t bother to overcome by way of amendment.

  172. This case really need en banc review as Rader is wrong in my view. He gets it wrong quite often.

  173. Paul, I’m not so sure about history, but, my God, you’ve hit on an interesting idea there.

  174. If my history is right, you could be refused a patent in the early days of the US if the invention had been made in England. Not that the US might be trying to put its own nationals in a more advantageous position than those of other countries! Or am I misunderestimating something?

  175. It doesn’t look like anyone raised 102(e)’s requirement that the cited application be “published under section 122(b)”. Further, 122(b) explicitly says that a provisional application shall not be published. Thus, it seems like Tran’s provisional should have been prior art under 102(a) rather than 102(e).

  176. Dennis, the answer should be that the full disclosure of the provisional application is available as prior art — as that was the holding of Milburn.

    But, since a provisional application can never issue, the holding of Milburn is not applicable.

    The Feds had to come up with a sui generis theory that really does not fit very well to provisionals. However, I will agree that under 102(g), an invention claimed in a US patent is effective as prior art as of the date of the provisional provided there is full Section 112, p. 1 support.

  177. “Otherwise, it seems, your rejection can easily be overcome.”

    Think I should copy/paste the OCR of the provisional and the application? Well, it is an idea to waste trees I suppose.

    Tree-ha ter.

    No Ned, I won’t. Unless by “demonstrate” you mean make a thoroughly “conclusory” (by certain lawlyers’ definition of “conclusory”) statement. Although I guess you could say that I offer the provisional itself as evidence.

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

    Is it just me or does this claim appaear to preempt the abstract idea that populating a cache with a resource only when at least i requests for said resource have been received;
    wherein i is an integer and is at least oc-casionally greater than one will lead to greater efficiency in populating a cache?

    Also, I note that this case could have been easily prior-arted by 102b references. It is rather pathetic that this 102e was the best the examiner could find. I could literally do better in 5 seconds on Google.

    “If not, why not?”

    “its bogus claim for benefit”

    You answered your own question Ned.

    “Burkha, Flies & a Sheikh”

    Dirka. Dirka, dirka?

  178. faceman,

    your opinion please:

    US patent application filed.

    abandoned.

    Second US patent application filed, same disclosure. No co-pendency.

    The second refers to the first in its bogus claim for benefit.

    Is the patent that issues on the second good as prior art as the date of the abandoned application?

    If not, why not?

  179. Ned asked: Dennis, since written description support for the claimed invention is required for prior art effect, why are you saying this holding automatically applies to published applications?

    Dennis replies: Great question Ned. I think that the court was a bit sloppy with its language of exactly what disclosure is necessary. If the issue arises again, I would suspect that the provisional would only be required to provide a written description sufficient to support the application/patent in its use as prior art.

  180. Dennis, since written description support for the claimed invention is required for prior art effect, why are you saying this holding automatically applies to published applications?

  181. I find it interesting that Rader relies on prior invention to justify the courts holding, but the principles announced in Milburn, IIRC, seem to rely instead on the implied publication of the disclosure but for patent office delays. The latter principle would place the whole disclosure in the public domain regardless of what invention was being claimed. Here, the Feds seemed to insist, incongruently I might add, that the claimed invention be supported in the provisional for it to have prior art effect. This is nonsense under Milburn.

    All this demonstrates is that Rader simply does not really get it.

  182. The scope hasn’t been expanded because this has always been the rule. I would’ve told the client they were s.o.l. Seems like a lot of money was unnecessarily wasted by appealing to BPAI and CAFC.

  183. The provisional application filing date is only important for 102(e) if a non-provisional application claims priority to the provisional application and that non-provisional is either published or issued as a patent.

  184. However, if no non-provisional application, claiming priority to the provisional application, is ever filed, and the provisional application is never referred to in any subsequent publication or application, the provisional application would have no prior art effect, correct?

  185. maybe he couldn’t convice yamaguchi that yamaguchi should be entitled to a patent even though “another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”

    What I wanna know is, how did Giacomini’s lawyer convince Giacomini that this is a winning argument?

  186. 6, you are, are you not, going to demonstrate full Section 112, p. 1 support for the invention claimed in the patent in the provisional application just as stated by the Feds in this opinion?

    Otherwise, it seems, your rejection can easily be overcome.

  187. I wonder whatever happened to this guy and his appeal in Yamaguchi?

    “I am appealing In re Yamaguchi at the CAFC, and taking the positions that:

    (1) a provisional application has an effective date as a reference under 102(e) not as its filing date, but either (i) as of the filing date of the non-provisional if the provisional is incorporated by reference, or (ii) as of the publication or issue date of the non-provisional if the provisional is not incorporated by reference.

    (2) if only the provisional has an effective date before my claim, that the PTO must compare the provisional to my claim — not the non-provisional and then “assert” that the limitations are “supported” by the non-provisional. In other words, if the provisional date beats my date, assert the provisional against me — not the non-provisional.

    If you would like to help me with this appeal or if you would like to file an Amicus brief, please call me at my office – 732-578-0103 x211.

    Jason Paul DeMont, Patent Attorney & Member
    DeMont & Breyer, LLC
    jpdemont@dblaw.com

    From the last thread.

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