America Invents Act – First to Invent and a Filing Date Focus

Earlier this week, the Senate overwhelmingly passed (95–5) the America Invents Act (S.23 or AIA) which represents a major patent reform initiative.  Many are saying this is the largest patent reform measure since the 1952 Patent Act.  I would argue that two reforms from the 1980’s are at least as important as the AIA: Federal Courts Improvement Act of 1982 (establishing the Court of Appeals for the Federal Circuit) and the 1984 Hatch-Waxman Act (establishing the modern generic drug system). 

Of course, neither of those 1980’s reforms rewrote the core patent law fundamentals of novelty and nonobviousness. In this post, I look at how the AIA re-defines these doctrines.

Filing Date Prior Art: Under the new law, Sections 102 and 103 of the patent act would be largely rewritten.  The new Section 102(a) defines novelty and eliminates invention-date rights (with the exceptions noted below).  The new focus a patent applicant’s “effective filing date” and whether prior art existed before that date. As a general matter, this shift expands the scope of potential prior art and therefore should make it more difficult to obtain patent protection.  In addition to the date change, the statute adds a new catch-all phrase to the scope of prior art. Courts will be asked to consider what it means to be “otherwise available to the public.”  Under the new provision classifies prior art as items “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public.”  Section 102(a)(1).  In addition, a third-party application on file at the PTO will count as prior art as of its effective filing date once that application is published or patented. Section 102(a)(2).  Of course, the effective filing date allows for priority claims

Narrow Grace Period: The new law would substantially narrow the current one-year pre-filing grace period so that that it only applies to negate pre-filing disclosures (1) by the inventor, (2) derived from the inventor, or (3) after the inventor had already publicly disclosed.  A technical problem with the new Section 102(b) provision is that the key term –  “disclosure” – is left undefined. The grace period provision is written as an exception to the filing-date prior art provision discussed above. However, it is unclear whether the exception applies to all types of prior art including “on sale” activities. 

Patent Races and First-to-File: In a patent race with two or more entities seeking protection for the same invention, the patent would be awarded to the first-to-file a patent application rather than the first-to-invent.  This eliminates current Section 102(g), interferences, and questions of conception, diligence, reduction to practice, abandonment, suppression, and concealment.  Except that the new law would allow for a derivation action (court) or proceeding (USPTO) when the first-filer “derived” their claimed invention from another. An oddity of the statute is that the derivation action may only be filed when the patent office issues two patents that claim the same invention. An important aspect of the derivation proceedings before the USPTO is that they allow the parties to settle their case.

One problem with the derivation provision that will be left to the PTO and courts is that the key term – “derived” – is not defined.  If given a broad meaning, the derivation proceedings could offer inventors something akin to the copyright doctrine of derivative works. 

This invention-date focus will likely drive more provisional patent application filings for US entities.  The prior-disclosure grace period limitation may drive a revival in formal invention disclosure publications.  However, because this narrowed grace period is still broader than that available in most countries, a pre-filing disclosure may negate foreign patent rights.

No Prior User Rights: The Senate Bill does not include any provision for prior user rights.  Although current law only has limited prior user rights, a prior user who is sued for infringement may be able to invalidate that patent by claiming prior invention under Section 102(g).  That option is eliminated in a first-to-file system leaving a prior user potentially liable for infringement.  

Nonobvious Subject Matter: The new law would rewrite Section 103 as follows

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

One shift in the nonobviousness statute merely codifies the current law’s focus on “claims” rather than the “subject matter sought to be patented.”   We’ll hope that courts will not interpret the phrase “the claimed invention as a whole” as requiring the courts to examine the entire claim-set as a whole.

The most important change is that the new provision considers obviousness as of the “effective filing date” of the patent claims being considered rather than “at the time the invention was made.” Of course, the courts already ignore the language of the statute and allow post-invention 102(b) prior art to be used for obviousness analysis.

41 thoughts on “America Invents Act – First to Invent and a Filing Date Focus

  1. 41

    Bob, may I as, politely, and with due regard to your obvious concerns about absolute right and wrong,

    –is private, commercial use of an invention prior art to third parties–?

  2. 39

    Dont forget bruce that kapos at ibm had the maximum number of high price litigation patents running many filers out of time and money in order to win them this is what can be expected from a democrat in the whitehouse I was the inventor of all their products back to the electric typewriter with my best friends mother of course never got paid though.

  3. 38

    Jeff, the statute requires the disclosure to knock out a second filer be “public.” However, it seems, the statute specifically and intentionally protects the inventor from purely private disclosures that are not public.

    But, the problem is that some think today that private “on sale” activity IS a form of public use because “on sale” appears in 102(b), and not where it should be, in 102(c). Since what constitutes “on sale” is not defined in the new statute, and since everything in the new 102(a) is deemed “prior art,” it is not all that clear that a private on sale is not enough to essentially preserve a filing date under the new regime.

    I would politely suggest this: anything in 102(a) that would be considered to be prior art so as to render unpatentable a later-filed patent is a sufficient disclosure to essentially preserve the filing date of a second filer.

    But, since the new statute has no provision for interferences, there is no way in the PTO or in court for the first filer to contest the sufficiency of the second filer’s disclosure so as to prevent the second filer from obtaining a patent, or for invalidating it after issuance.

  4. 37

    Ned, do I understand correctly that your suggestion under #6, that a patent issuing based upon a claim of prior disclosure does not necessarily invalidate a patent that issued subsequently to the prior disclosure, depends upon your proposition #8, that disclosure can be nonpublic and still constitute a disclosure? Because if the prior disclosure were public, it would inherently invalidate any interfering claims of the earlier issued patent / earlier published patent application.

    Given the vagueness if not absurdity, which you pointed out in earlier posts, of a confidential disclosure preserving a priority right for a year (where is the line to be drawn, e.g., should even disclosure to a corporate patent department count) AND the literal inconsistency between (A) the lack of a requirement that such prior disclosure be public and (B) the elimination of the interference provision, which you now point out, couldn’t one reasonably deduce that it was not actually Congress’ intent to count confidential disclosure? It wouldn’t be the first time Congress forgot to put the word “public” in the statute; cf. current section 102(a) “used by others” which of course has been universally interpreted to require a public use.

  5. 36

    Ned, that letter to the Senate I mentioned above. I remember now. It wasn’t from AIPLA. It was from IPO. But I still can’t find it. Sorry.

  6. 35

    The more I think about S.23, the more I see problems.

    Imagine you are first filer and the PTO rejects your claims over a second-filer’s patent to the same invention. The file wrapper discloses a 131 affidavit claiming prior disclosure, the public use kind where a widget embodies the claimed invention.

    You get a copy of the widget and demonstrate that the widget does not have a critical element of your claim. (What does this mean, in fact? Did the second filer lie or did the second filer’s claim not depend upon the missing element?)

    Does the PTO accept your affidavit as well and issue you a second patent on the same invention? If so, how does it “recall” the first patent if it too claims the missing critical element not found in the widget, but first disclosed in your own patent application?

    Remember, there are no interferences in S.23.

    It could invoke a reexamination, citing your patent application. I assume there will be problems with whether the “issue” is substantially new. But lets assume it is invoked, the resolution of the question again will be determined by what the widget actually discloses. That really should involve an interference, testimony and expert witnesses.

    But there are no interferences in S.23.


  7. 34

    Sorry Ned. I can’t find the letter. Can’t remember where I read it. But, if you go to the PatentDocs blog, you can find the substance of an AIPLA press release.

  8. 33

    What AIPLA letter is that? I just looked, and the last letter linked is dated April, 2009.

    That said, the AIPLA voted as a whole to go to first-to-file circa 1990. That has been the position of the AIPLA ever since.

    It was always my understanding as well that the AIPLA favored retaining a grace period. I believe that most of us understood this to mean a grace period equivalent to the current grace period whereby the first to invent within the grace period would obtain the patent and/or remove prior art. I believe what the AIPLA is offering us here in the current legislation is not what we expected, as it requires an active disclosure of some kind by the inventor, and does not protect the inventor who is continuing to develop his invention from actions by independent inventors. As such, the current legislation fundamentally undermines the bargain we agreed to.

  9. 32

    You are welcome, Ned. My pleasure. Don’t thank me though. We should both thank our Prof. Crouch. It is only because he allows anonymity that I feel able to contribute so indiscreetly.

    Who’s behind it? Well, have you read the AIPLA letter to Congress, commending this Bill to it? Makes me think that AIPLA members are sponsoring it.

    Presumably, in departing from the mild ROW form of FtF, and replacing it with some sort of turbo-charged, Winner Take All, new and aggressive variant of the FtF virus, Senator Leahy knows what he is doing? Come to think of it, we Europeans are always being told by ordinary American patent attorneys that we are not aggressive enough.

  10. 30

    Ar for that matter, let us assume that all that B discloses in his first application is the same species that A earlier disclosed.

    I think the legislation is clear that A can claim the species, but can he claim the genus?

    The potential problem I see is that if the “disclosure” must provide the equivalent of an effective filing date for the claimed subject matter, the answer would be no. But this obviously is absurd given that the intent, I presume, is that the early disclosure not only is supposed to not count against A, but it also is intended to operate on the assumption (categorical presumption?) that B’s disclosure originated with A.

  11. 29

    Max, that you for participating in this discussion. You have, time and again, made a very cogent point that what is being proposed here is not a codification of case law, not an implementation of first-to-file (for example by including “on sale” as former prior art), and has terms, such as “disclosure” which have no clear definition or understanding based upon prior case law. Even if I personally were in favor of first-to-file, I would oppose this bill for these reasons.

    United States patent system is an engine for progress and not a toy to be played with by arrogant schoolboys. Whoever is behind this monstrosity should be taken to the woodshed and spanked severely.

  12. 28

    Ah, my fluffy personal troll shows up and asks what was the question…

    Um, why dont youz listen or try reading – since ya like google so much, ya might try the Big D’s own search box above. Here’s a hint: it has ta do with why would someone want something to be made weaker when the idea is to improve the thing.

    Letz see ya figure it out Sunshine.

  13. 27

    pingaling Still no one has answered my question. Ned-O has come close (with his observation that weakening doesnt make the patent better), but no one advocating for the changes has stepped up and provided an answer. Not Sunshine or any other horsemen.

    Why is that?

    LOL. What’s your question, child?

  14. 26

    As long as external and internal forces keep on considering that “patenting is bad,” and keep on trying to make (US) patents weaker, then the observation is immutable, aint it Maxie?

    Still no one has answered my question. Ned-O has come close (with his observation that weakening doesnt make the patent better), but no one advocating for the changes has stepped up and provided an answer. Not Sunshine or any other horsemen.

    Why is that?

  15. 25

    Ned, this thread reminds me of those biological disaters that happen when a single alien species is introduced into an otherwise stable ecosystem, with good intentions but unforeseen consequences.

    The one I’m particularly thinking about is the tiny Hebridean island off the west coast of Scotland, that used to be a bird sanctuary for ground-nesting seabirds. It isn’t any more. That’s solely because of a breeding pair of hedgehogs that sombody released on the island. The island is now over-run with happy and obese egg-eating hedgehogs.

    How stable currently is the precious US patent law ecosystem?

    As to compromises, in the quest for international harmonisation of patent law, I suspect the moment has passed. It was there 20 years ago. But then came GATT-TRIPS and ROW then found out that it no longer needs to compromise with the USA on patent law. Looking into the future, are we going to see an uptick in the pressure on ROW to compromise with US patent law? I don’t think so. Do you?

  16. 24

    If you had any questions about what company was most instrumental in drafting and pushing the legislation, this should put your questions to rest: IBM in Essex Junction celebrates Leahy’s patent reform bill. Interestingly, while the article mentions that the company has some 350,000 employees worldwide, they fail to mention that some 3/4 of them are now located outside this country, with probably more in one other country (India) than in the U.S.

  17. 23

    Just for example: suppose A discloses a single species, B discloses and claims the genus, then A files on the genus.

    Who gets the patent to genus, if anybody?

  18. 22

    Indeed, can you imagine the weeping and gnassing of teeth that would occur if a “disclosure” is made that would constitute prior art to the inventor but not, at the same time, give him a waiver from the statutory bar?

    Imagine then what then happens if the first to disclose wins the patent when he was not the first to provide a fully enabled disclosure?

    We will live in the land of the bizarre and the uncertain until these issues are clarified.

    It would help, for example, if anyone would even say what the purpose of the requirement of a disclosure is? To allow the inventor to make disclosures that would be prior art to him and give him a year to file an application; or is it to give him an opportunity to obtain a year if he makes a sufficient disclosure?

    The two are not the same and are not even close to being the same.

  19. 21

    Max, as a first step, I think we have to address the issue of “on sale bar” in the prior art section of the statute. Today “on sale” is a form of abandonment, and is not a form of prior art. It was probably a mistake by the drafters the ’52 Act to have included “on sale” in anything else but 102(c).

    Second, I would define “disclose” in terms of whether the inventor has made a sufficient disclosure to constitute prior art against his own patent application. I would not define disclosure in terms of its sufficiency to support a filing date if it were filed as a patent application.

    Next we would have to consider whether placing the invention on sale is a disclosure even if the sale were not a disclosure sufficient to be prior art. For example, would a trade secret use of the invention by the inventor operate as a bar, or should the inventor still have one year file a patent application?

    Obviously, I think the intent of the drafters was to allow the inventor a one-year grace period for on sale bars regardless of whether those on sale bars amounted to prior art. If this was their intent, it is clear as mud.

  20. 20

    Ugh, there obviously is a typo above. “On sale” is not prior art against third parties today – under current law. Rather it is a form of abandonment – a personal bar. It is not prior art to third parties for this reason.

    However, since the new statute is not intended to codify current law, as the 1952 act was, and further because 102C is being removed from the statute, it is my conclusion that the authors of the act specifically intended to make any invention that is on sale prior art, regardless of its availability to the public. They do not intend to retain its status as just a personal bar.

    Thus a trade secret use of invention on the under the statute could become prior art. Today, it is not prior art to third parties because it is not public. Even so, it is a personal bar because it is a form of abandonment.

    If the drafters of the statute intended to make no change in this regard, they should retain 102C, and expand upon it by including in that section the “on sale bar” and by not including “on sale” in the section on prior art.

    For example, the new 102C could read “the inventor has placed the invention “on sale” or otherwise abandoned the invention.”

  21. 19

    Time ending patent awarding is the most accurate method of determining inventorship when no devulgment has occured. An inventor could select this method when he believes no secreys has been breached the invention is in his mind and nowhere else.In determining conception correctly then development can occur with the inventor being cut in on the deal promothing human advancement instead of out of the deal destroying the incentive to create. Live in person lockered public forum events may be nessary if the level of corruption cannot be kept in check. The use of videocams of the handeling of electronically mailed patent applications with time ending general topic calander day events are also possible if security is verifyable participation can be world wide.

  22. 18

    Indeed what “disclosure” means would end up being a major legal headache for all patent law practitioners.
    The more I think about what this Act proposes to do to 35 USC 102, the more I have images of a chain saw taking down an intricate and complex structure.

  23. 17

    Ned, I like your exploration of the topic of “disclosure”. How would you like it, if the Bill were to manage the concept of the “disclosure” of a document (giving “document” an expansive meaning) like the European Patent Convention does? The EPC has it that “disclosure” is exactly the same concept, for each of the following issues:

    1. whether that document takes away the novelty of a claim

    2. whether that document (being a provisional patent application) bestows its filing date on that claim

    3. whether that document delivers a written description good enough to support that claim

    4. whether a porosecution amendment to a pending patent application adds subject matter to that application.

    Or do you want “disclosure” to mean something different, under heads 1, 2, 3 and 4?

  24. 16

    Let’s provide a quick list:

    1. American companies who are prior inventors, but who enter production after the filing of a patent are no longer protected either as prior inventors or as prior users.

    2. In contrast, trade secret prior use of third parties which is not prior today might be prior art tomorrow because it is “on sale.”

    3. The Hilmer doctrine is erased.

    4. Prior use anywhere in the world is prior art.

    5. The patent office will be required to issue two patents on the same invention. (This will happen if the second filer proves “prior disclosure.”)

    6. That the new law has no procedure for interferences between interfering patents. It operates on the assumption that there will be no interfering patents or that one will be clearly invalid over the other. But this simply is not true when one of the patents issues based upon a claim of prior disclosure.

    7. The statute literally states that subject matter disclosed in the patent is prior art as of the effective date of the patent – not the effective date of the subject matter. This is dramatically different than current law.

    8. The statute does not define “disclose.” There is no requirement that the disclosure be public. This implies, and clearly implies, that the disclosure can be nonpublic and still constitute a disclosure.

    Further, while many believe the disclosure will have to be enabling, there is no requirement in the statute that the disclosure be enabling. For example, was the disclosure in Pfaff v. Wells enabling? The Supreme Court did not say so – all that was required was that the disclosure be “ready for patenting,” whatever that means.

    And then I bring up the golf ball case. The golf ball is made by process and it has a particular composition. Neither the process nor the composition can be determined from the golf ball. Does the disclosure of the golf ball count as a disclosure of the composition or of the process by which is made? If the new statute would make all three, the golf ball, the composition and the process “on sale,” for prior art purposes, should not the disclosure of the golf ball also count as a disclosure of all three for the purposes of giving inventor a grace period?

    Obviously, the new statute has problems.

  25. 15

    Agreed, the Chinese patent application is not today prior art as a prior invention because that requires an actual reduction to practice – in the United States, which excludes the Chinese application on two grounds. But certainly, the new statue will make it prior art because the new statute will erase In re Hilmer.

  26. 14

    Oh, and lest I forget. Don’t WE Americans simply LOVE the demise of the Hilmer doctrine. US patents are now prior art as of their foreign filing dates for all purposes and regardless of whether they were filed in English.

    An then let us not forget public use — anywhere in the fricken world and regardless of whether it is searchable. This is a joke.

    I have noted here and in other thread a sea change in US law being wrought here by this statute. This is more than first to file. This is a revolution — it changes so many fundamental of US law at once.

  27. 13

    Thanks for the enlightening comments about the swear behind based on a prior disclosure, and I would speculate that the prior disclosure would need to be an enabling disclosure, and it would be interesting proving that in the case of something like an oral presentation at a conference.
    My understanding of 35 USC 102 g)(perhaps it is wrong) is that so called secret prior invention invalidity attacks really only work where the invention was ACTUALLY and not constructively reduced to practice. This comes from the statute language “…the invention was MADE…” So my earlier example of the application filed in the Chinese Patent Office one month earlier seems to still make sense because the filing in the Chinese Patent Office is a constructive and not an actual reduction to practice. Currently that wouldn’t be 102 g) art.

  28. 12

    “Disclosure” is undefined in the new statute. Note that nothing requires that the disclosure be “public.”

    Under current law, an invention can be “on sale” and yet not be publicly disclosed so as to be prior art against third parties. It is not so clear under the new statute will remain the case.

    I bring this up because “disclosures” made by the inventor for purposes of giving one a grace period is undefined. There is no requirement that the disclosure be public. If a private commercial use places the invention “on sale,” and this is deemed to be prior art under the new statute simply by virtue of the activity being on sale, would not this activity also count as a “disclosure” within the meaning of the grace period.

    Would a confidential disclosure to third party count? Again, there is no requirement that the disclosure be public. It seems, in my opinion, that it would.

    If a confidential disclosure counts, why wouldn’t the disclosure of an inventor to a corporate patent department?

    Where do we draw the line?

  29. 11

    Did I hear the word “certainly?”

    Doing away with first-to-invent makes the prior art more certain, and the rights in public thereby more certain – it is said. But as is the case in fact?

    Imagine you are drafting an opinion. You come across a reference less than a year old that anticipates the claims. Can you, with any reliability, give your opinion that the patent is invalid when the inventor can swear behind the reference by showing prior disclosure? How are we in a different situation under the new statute than today in a first-to-invent world. We can never know with any reliability whether the inventor disclosed the claimed subject matter prior to the date of the reference until we force him to, such as by filing a re-examination or by filing a declaratory judgment action.

  30. 10

    Max, given the extensive discussions we had with otherwise knowledgeable person such as IANAE the other day on the nuances between “public use” and “on sale,” it is quite clear that many in the US do not fully understand even US law. I suggest to you that putting “on sale” in a prior art section illustrates that the illuminati who drafted this statute suffer in the same way as IANAE.

    You are purfectly right. ON SALE is NOT PRIOR art. It has never been prior art. It is a personal bar. There are no cases, ever, in the history United States, that has held third-party on sale activity to be prior art under circumstances where it is not a public use. Our dear IANAE, believing what the statute said but not understanding its history and without understanding its case law, argued extensively that third-party, secret commercial use, was prior art because it was on sale even though it was not a public use. The case law holds exactly the opposite. But he was unaware of the case law. And so it seems are the drafters of this statute.

    But the new statute will make it prior art!!!!!!!!!!!

    Wow. Good catch there Max.

  31. 9

    What does this mean? From new 102(a)(2)

    “‘‘(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

    The reference has to describe the invention. That is understood. But what is does “effectively filed” mean?

    A patent can have an effective filing date today far different from the date of introduction of the subject matter used as the basis of the rejection. Today we understand from cases like In re Wertheim and in re Giacomini that the subject matter forming the basis of the rejection must be supported in an earlier application to the extent required by section 112 paragraph 1; and, further, that subject matter must be claimed. (How this applies with respect to published applications as never been defined by the Federal Circuit. The Board of Patent Appeals and Interferences sidesteps the issue by ignoring the requirement that the subject matter must be claimed. See In re May)

    I am not so sure that the statute is consistent with this.

  32. 8

    John, nothing really is going to change with the new statute in terms of obviousness. Today we have no exclusion of secret prior – even prior invention of another can be used to invalidate a patent based upon obviousness.

    What will change is the ability of the inventor/patent owner to swear behind the reference by showing a prior date of invention. That will be gone.

    What is new, is the ability to swear behind a reference based upon prior disclosure (whatever that means). While this prior disclosure may kill your patent everywhere but in jurisdictions that recognize a personal grace period, it will be effective in the United States the square behind references less than a year old.

    But then we have the problem of whether the reference itself has an earlier effective date based upon prior disclosure. Imagine if a reference has in its file wrapper and affidavit of prior disclosure. What is the effective date of that reference?

  33. 7

    I’m very opposed to the “America Invents Act.”
    The idea of letting interference proceedings take place before the patent is issued opens to the door to corruption on large scale. I envsion powerful corporations challenging smaller inventors before their patents have
    issues. If they have much bigger legal resources they will be able to sucessfully challenge meritorious patents by wearing down the smaller party with technicalities and legal procedures. Even worse there will be a lot of bribery from corporations getting into the examiner’s office.

  34. 5

    Old McDonald,

    The ravages of the omniscient PHOSITA, with its extremely sharp sword honed on KSR, cuts through all things “common,” and leaves “sense” behind.

    As has been posted on another thread – I be way to lazy to find it – even at the expense of losing a chance to quote myself (O the pain of the new tapestry format) – The 1952 legislative admonition has been overwritten (in practice) by the application of what the Supremes have let loose in a Flash.

    Might as well head back to the farm, my friend.

  35. 4

    Obviousness Nightmare? – Maybe I am reading it wrong, but it could be the implications from the obviousness standpoint are not being fully understood. In Europe and various asian countries so called “secret prior art” (i.e. patent applications filed earlier but not yet published) can only be use be used for a novelty attack. Will there be more profound attacks to US patents if the new 102/103 provisions are made law? Say someone in China files an application one month before me in the Chinese language, and he eventually does a PCT national phase filing in the US, could several years down the road I run into an attack based on the combination of that “secret prior art” with some other reference? If that could be the case, the implications could be quite profound.

  36. 3

    Small entities have been given far too little voice on this bill when one considers that they rely far more heavily on the patent system than do large firms who can control their markets by their size alone. The smaller the firm, the more they rely on patents -especially startups and individual inventors. Yet small entities create the lion’s share of new jobs. According to recent studies by the Kauffman Foundation and economists at the U.S. Census Bureau, “startups aren’t everything when it comes to job growth. They’re the only thing.” Congress is rushing headlong into disaster. This bill will be a wholesale slaughter of US jobs.

    “Patent reform”

    Just because they call it “reform” doesn’t mean it is. Patent reform is a fraud on America.

    Please see link to for a different/opposing view on patent reform.
    link to

  37. 2

    102/”made available”/on sale bar. That combination is a dog’s breakfast of jumbled provisions from different cultures. Europe has no on sale bar but it does have “made available”.

    See the other thread for Ned Heller’s “golf ball” hypothetical. Does sale of an improved performance golfball made by a secret process, not discernable by any form of examination of the golfball, make the process invention “available”. Not in Europe. But under the Senate Bill? Does anybody know? Should you keep your process a trade secret. You have a right of continued use in Europe. What do you have, under the Senate Bill?

  38. 1

    There are only two reasons why a company will be sued for false marking on the basis of expired patents: (1) either they intentionally falsely marked their product for purposes of deceiving the public or (2) a registered patent attorney whose responsibility it was to advise his client of the approach of the patent’s expiration and the need to proactively plan for the cessation of product marking on the expiration date committed malpractice by failing to so act.

    We need a qui tam statute that allows any person to sue such malpracticing patent attorneys and split the recovery with their clients when those clients are just too blind to see who is responsible for their legal woes.

    Hats off to Sen. McKaskle for her attempt to amend the retroactive aspect of the proposed change to the false marking statute–at least there is somebody in the Senate that these criminals can’t buy!!

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