by Dennis Crouch
In strong bipartisan fashion, the Senate today passed the America Invents Act (S. 23). Attention now moves to the Judiciary Committee in the House of Representatives.
The Senate measure includes:
- The ability for the US Patent & Trademark office to set its own fees and to eliminate the practice of fee-diversion.
- A transition to a first-to-file system as discussed previously on Patently-O.
- Broader leeway for third-party submissions with explanations during ex parte patent prosecution.
- A new “first-window” post-grant patent opposition system with broader jurisdiction (but a shorter timeframe) than reexaminations.
- A provision that eliminates certain tax strategy patents.
- Although not entirely clear at this point, it looks like damages limitations were removed from the bill prior to passage.
Republican leadership in the House, including Judiciary Chairman Lamar Smith (Tx) and Majority Leader Eric Cantor (Va) appear ready to move forward with their own version of legislation. Six years ago, Representative Smith introduced the Patent Reform Act of 2005. Under the new Republican leadership, a revived and modified Subcommittee on Intellectual Property, Competition, and the Internet has jurisdiction over patent reform measures. The new Chairman of that Subcommittee is Representative Bob Goodlatte (Va) who co-sponsored prior patent reform measures as did the Vice-Chairman, Representative Howard Coble (NC).
On March 10, 2011, I will testify before the Judiciary Committee as members consider how to draft corresponding legislation. I have specifically been asked to address judicial changes to the patent law landscape since the reform process began in 2005. During that period, the Supreme Court has taken an active role in addressing patent policy concerns in cases such as KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (eliminating technical hurdles for proving an invention obvious and instead applying a “common sense” analysis for assessing patentability); MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (holding that declaratory judgment jurisdiction may exist even if the patent holder could not have sued for infringement and that the apprehension that patentee will sue for infringement is not a necessary element for Article III jurisdiction); Bilski v. Kappos, 130 S. Ct. 3218 (2010) (holding the claimed invention – a method of hedging – unpatentable as an abstract idea); and Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (holding that Microsoft could not be held liable for exporting software code because source code does not qualify as a “component” of a patented invention as required under 35 U.S.C. § 271(f)). During this time, the Federal Circuit has decided more than two thousand patent appeals (including a dozen en banc decisions), many of which address the exact concerns raised in the original 2005 patent reform bill. Of course, over this period, the PTO administrative nightmare has grown to a backlog of 1.2 million pending patent applications and the Board of Patent Appeals (BPAI) backlog of pending ex parte cases has grown from 742 in March 2005 to over 20,000 today.
The Deputy Solicitor General thought it worth mentioning that the Senate passed patent reform (1) without changing the standard, and (2) with post-grant reviews in place, despite responses that *might* be offered. Just because a point isn’t dispositive doesn’t mean it doesn’t have (strong) value.
What good news of your testimony before the Committee. Whatever one’s position on the patent reform legislation, adherents of patent law could not ask to have a better or more informed advocate for their concerns.
I had not realised any of that, Ned. Thanks.
Your suggestion is eminently reasonable, which is why it will not happen.
Too much money has been invested in lobbying for this, for Congress to go back and review this. At least the Senate committee testimony on FTF, etc. has been fairly well scripted from day 1 aimed at exactly the bill that passed the Senate. And, those testifying have been carefully selected by the Senators ramroding this (Sens. Leahy and Hatch). Sen. Leahy indicated earlier this year that this was probably going to be the last time that he pushes this legislation.
Similarly, if this were truly an attempt to harmonize, we would work this with other countries, asking them to give up something, while we give up something. Instead, the “harmonization” is ex parte, to a standard stricter than that of many of those we are supposedly harmonizing with.
My problem is a bit different, but not totally. I have a client who regularly sees patent applications filed weeks before their patent applications. The inside counsel told me that twice is coincidence, three times is enemy action, and he stopped counting at 40. I filed four sets of 1.131 declarations in one month, with the time period to overcome in all cases being less than a month, and several being about a week.
It is clear that the prior filed patent applications are at least somewhat derived. They invariably knew at least the assignees of those patent applications, and often knew approximately when and how the derivation occurred. But nailing that down, within the structures of the new law is going to be very difficult and expensive. And, we are not really talking public disclosure here, but rather accidental or inadvertent private disclosure.
I don’t think so. Rather, I would suggest that the proponents, typically large multinationals with large work forces outside this country, are already operating under a de facto first-to-file system with no grace periods. Their internal procedures already in place do a good job at making sure that their inventions are not prematurely disclosed, and they do not need to disclose them for funding.
Rather, they are much more likely to be the defendant than plaintiffs in patent infringement lawsuits. Instead of suing their competitors, they usually cross-license. But they are constantly getting sued by independent inventors and small companies – sometimes frivolously, sometimes meritoriously.
This is expensive, and they found that it was cheaper to lobby to change the current law, than to defend the lawsuits. So, they found a way to structure the law so that their patents are not weakened much at all, but everyone else’s are substantially weakened.
This is a big reason for the law – the companies pushing the legislation will not be harmed in a FTF environment with limited to no grace periods, but the independent inventors, small companies, and even large companies that are not patent savvy will be substantially hurt.
The reality is that companies with large patent portfolios tend to have strong patent and IP cultures and controls. Thus, in many of these companies, papers don’t publish, products don’t launch, press releases are not issued, etc. without the approval of the patent attorneys who have reviewed the disclosure for patentable subject matter before the disclosure is made public. They also typically do not have to disclose their single inventions for funding purposes. They are, in fact, pretty much already operating under a first-to-invent system.
Also, keep in mind that they tend not to offensively litigate their patents. Rather, they are much more likely to cross-license with their competitors. This is esp. true for the electronics companies pushing this legislation. At one time, IBM was making over a billion dollars a year in cross-licensing revenues. But, they are the object of patent suits on a regular basis. So, it is in their interest to weaken the patent system, making it easier to invalidate patents asserted against them.
No, Max I have long understood that there is a problem in the Federal Circuit to the extent that various panels have to follow the precedent of prior panels. That was a very bad idea from the get-go.
When patent law was developed by competing circuit courts, the Supreme Court was able to see the best thinking on a particular issue from both sides and make a choice. Today the Federal Circuit is not allowing full development of the patent law because of its rule that the first panel to decide an issue binds future panels until and unless that that issue is taken en banc. The problem is, when the next time a fact situation reaches the Federal Circuit and the Federal Circuit realizes that it made a mistake, it is hard to fix the mistake because it is bound by the holding of the first panel.
This creates a problem, and it is quite obvious. Because a panel opinion is precedent for subsequent panels, the illuminati of the Federal Circuit tend to write opinions far beyond the facts of a particular case for the very purpose of binding future panels. We all why this is a problem and why judges, good judges, have often cautioned that their opinions should be narrow.
The funny thing is that Europe (with a common text for patents and a different common text for trademarks) has one pan-European court for marks but no supra-national court for patents. Yet, there is more harmonisation and legal certainty in European patent law than there is in trademark law. I think that is because those national patents courts have been competing with each other, these past 30 years, to see which can lay down the clearest and cleanest jurisprudence on the basis of the common substantive law of the EPC text.
The 24 Technical Boards of Appeal at the EPO have been vying with each other, these past 30 years, to lay down the clearest and cleanest line. It is their consensus line, arrived at over tens of thousands of cases, that the national courts are now adopting. I suspect there is some spill-over of this EPO line into the Senate Bill.
You can now perhaps see why a single court sitting as an appeal instance can screw things up, rather than smooth the path.
Course, being unburdened by a Doctrine of Binding Precedent does help Europe to grow legal certainty in its patent law.
Funny old world isn’t it?
Um, yeah Ned, and we will have that “one common court” just as soon as every single nation in the world gives up its own autonomy and signs up to be controlled by something other than its own laws – for the good of humanity. Who is the first nation to step right up and take this leap?
Anyone?
Bueller?
Bueller?
Bueller?
Max, but we all should recognize that until we have one common text and one court of final resort, harmonization is only an ideal, a goal, that can never really be achieved.
A common text and a common court would lead if not require a common patent for all participating jurisdictions. Now that would be a step in the right direction, provided, of course, that we had some sort of first to invent system with a grace period.
Lionel, bright line because we are done with 131 affidavits and their equivalent in court?
What about the new affidavit? The affidavit that can appear at any time? You know the one of which I speak?
The one where it says,
“I disclosed it first. Here is my shinny photo(shopped) picture of me holding the patented widget and reading the Timbuktu times. See the date? It clearly shows a date earlier than your reference.
Where’s that widget now? Who knows? I sold it to a passing tourist that day. Here is a the photo-shopped receipt, a genuine recreation of the real article.”
One will never be able to tell, now or in the future, whether prior art less than a year old is good against a patent.
Have to agree with you there ping. Sorry Ned. Europe has had all the same substantive law of patent validity since 1973. Since long before then it has been striving for an international patent court all of its own.
The answer came last week. Guess what: NON!
Indeed, come this time next year we’ll be able to laugh at their wacky claims just like we laughed at the lolable appeal numbers they cooked up.
I know I for one support them making outrageous claims because it makes the lulz so much sweeter a year later.
“We might even adopt an international patent court”
That. will. never. happen.
Max, at best, I think Congress should call for a commission to study how best to implement FTF rather than this bill. Adopting the European law and decisions as a baseline would be vastly preferable to trying to do the almost, but not quite, the same thing as the Europeans.
For example, if harmonization were truly the goal, we should have a joint commission of all major patent countries, including Europe, the US, Japan, Korea and China. We could then sit down and agree on one law (including such things as prior user rights), and all mutually adopt it, verbatim, grandfathering decisions of the respective countries that apply to interpretation of the law, giving them full faith and credit.
We might even adopt an international patent court to hear appeals regarding patentability or validity to assure continued harmony.
I suspect that Ned’s warning is prophetic. It is one thing to perform a benchmarking exercise, and then write a coherent new business model that stands on the shoulders of all the others that came before. But it is quite another (and no good will come of it), to select a particular individual provision of an alien patent law that is perceived to have merit, while leaving behind the surrounding ROW context, and then cuckoo that selected provision, deprived of the context that breathes life and meaning into it, into the otherwise unchanged old business model. Tinkering with the complex machine in this way strikes me as a bad idea.
“He submits a photo(shopped) ”
Lulz, examiners sitting in their office going “looks shooped to me”.
If you’re blue and you don’t know where to go to, why don’t you go to where fashion sits?
link to youtube.com
I mentioned this above, indirectly, but I think we need a broader discussion of an apparent oversight. Under the new law, it seems,
1)the patent office has (for the first time in its history) no means to not issue two interfering patents; and
2)the statute provides interfering patent owners (or applicant vs. an issued patent) no remedy against the other.
IMHO, the problem of interfering patents is a major problem, not only for the two patent holders, but obviously, also for the public. Which of the two is entitled to the patent is not clear, as the first-to-file is not always entitled to the patent if the second to file is the first to “disclose” (whatever in the world that means, and we are all over the map on that issue).
The new “interference” proceedings are not interference proceedings, but derivation proceedings. This TOTALLY IGNORES that a major problem will exist when the patent office is forced to issue a second-filed patent because of a claim of first publication.
“We want the publication. Right? RIIIIGHT?”
Actually, pretty much stinkin to the Quid Pro Quo would be the ideal – somethin for both sides generally works best (that’s why the deal be made).
“Your example tells me what the future will bring. Derivation is fobidden, but prompting is not derivation. If a big company monitors the disclosures of the small fry (in their field), they will be “prompted” to publish themselves. This will kill the small fry’s patent.”
All the better right? We want the publication. Right? RIIIIGHT? Or are “we” really just advocating the having of patents for the sake of the having of patents?
Indeed it seems as if your hypo leads the scenario you propose small business. That part is not crystal clear, but it seems to be how it would go down. And indeed, he could sue A for infringement. That part is crystal clear. Whether he would prevail or not is anyone’s guess, but assuming the stars align then yes it would seem it could happen.
The case I am referring to, IANAE, is discussed in the MPEP 2133.03(a) as follows:
“If the details of an inventive process are not ascertainable from the product sold or displayed and the third party has kept the invention as a trade secret then that use is not a public use and will not bar a patent issuing to someone unconnected to the user. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). ”
OK, let's try it this way, for pity's sake.
What to you think of those cases where the court decided that a non public commercial use was not prior art?
IANAE, if private commercial uses were prior art (they trigger the on sale bar because they are commercial), the nominal exclusion of private uses from the prior art would be illusory.
It’s not illusory. One could have a private non-commercial use, which would not be prior art. It’s either the public nature or the commercial nature (whichever applies) of the activity that implicitly puts the invention in the public domain.
IANAE, find one case, just one, where a private use was deemed not to be prior art because it was NOT PUBLIC, but nevertheless was prior art to a third party because it was ON SALE. Â You will not find it.
Why would that ever come up in court? Nobody would assert a public use defense if the same facts supported an on-sale defense, especially if the public nature of the use was in question, because on-sale is so much easier to prove. Besides, it’s pretty rare for a first inventor’s claim to be anticipated by someone else’s prior sale. Ask me again after we go FTF.
The wording of 102(b) could not be clearer. It has none of the personal bar-type language that you see in 102(c) or 102(f), and none of the other 102(b) grounds are personal bars. Why do you keep fighting it?
I actually had a case several years ago where the manufacturing process that was the subject of the patent was in use long prior to the patent’s filing date. Just to clear this point up, products made from the process were sold.
At the time, we researched the issue very carefully. The secret process is not prior art, even though it is on sale by its commercial use which operated to bar the inventor of the process from obtaining a patent.
In the golf ball case, a real (CCPA?)decision, because the golf ball was in the public domain, it was a prior use even though it was nigh on impossible to reverse engineer. I personally disagree with this holding. I think reverse-engineerability should be the hallmark of being made available to the public.
Thinking about this, there is a Supreme Court case involving “lost” prior art. There was testimony that the prior art once existed (a safe, I believe). But it was lost and gone. The Supremes, iirc, held the safe not to be prior art, although I think they did provide an exception if someone could remember how it was constructed. (I don’t know if this is correct though.)
But it strikes me that this case is very much like the i4i case currently on appeal where the software that is alleged to be prior art no longer exists.
IANAE, if private commercial uses were prior art (they trigger the on sale bar because they are commercial), the nominal exclusion of private uses from the prior art would be illusory. Surely you can see this?
IANAE, find one case, just one, where a private use was deemed not to be prior art because it was NOT PUBLIC, but nevertheless was prior art to a third party because it was ON SALE. You will not find it.
If he cannot prove it he is f$%^ed. That’s why I keep arguing small inventors should be the ones advocating FTF.
Wow Ping,
You’re usually smarter than this.
Here’s a legitimate question – How many patents have you seen litigated that relied upon a 131 affidavit to issue? I do not know the answer, but I wouldm not be surprised if the answer is zero. And if a patent is not litigated, what is it’s value? I suppose it could help acquire venture capital or be referenced in a cross-license.
Hmmm,
So if I offer for sale everything under the sun in all the glorious combinations, even though I have not invented any of it yet (Ima no Mikey), that mere offer for sale offers everything to the public and therefore nothing is ever patentable again…?
Iza think ya been spending too much time sipping tea with Mikey.
It was the word “crXXp” that got filtered, the post is up.
Why do you think we have the distinction in the law that the use has to be “public?”
By “distinction” I presume you mean in contrast to being on sale, in which case the invention does not have to be public.
It’s well known that an on-sale event doesn’t have to actually make the invention available to the public. In Pfaff v. Wells, the sale occurred before the invention was even invented. That’s not a Federal Circuit decision, but it’s still pretty convincing.
Your argument, I think I can safely say, is a load of balls.
O the wailing of the next Cottage Industry being born: all those process patents and then going after those who used those processes privately (but not documented).
Question: What varient of “Troll” shall we label such nefarious ne’er-do-wells?
“ look forward to reading a case you cite that doesn’t quite support your point”
As opposed to the current reading that does quite support his point?
Just wanna know – like in case ya start carpet bombing…
And, I might add, as part of any move to FTF.
On, come on IANAE, this is a joke. Why do you think we have the distinction in the law that the use has to be “public?”
The EP’s personal use right for prior users seems extremely fair. We should adopt that in the US.
Ned, I had a look at your man Gary Lauder, the 25 years in VC man. I saw the reference to economics in Canada. I could not find a cite for the – EU in crisis – statement. Bold claims, scare-mongering, based on nothing of substance.
I’m lucky, I’ve already read “Merchants of Doubt”.
that long time prior user can be shut down. He has no defense.
He does, actually, because if it’s “long time prior user” he’ll certainly have offered something for sale at some point.
but not a bar to a subsequent inventor of the process because the process itself is not in public use.
I look forward to reading a case you cite that doesn’t quite support your point, but until then I’ll simply point out to you that 102(b) provides three other types of prior art that are distinct from “public use”, one of which is “on sale”. Congress was even kind enough to separate them all with multiple instances of the word “or”, so you can see that the other three are something other than public use.
Ned (and IANAE) keep in mind that the EPC “right of continued use” is very thin gruel. It is personal, limited to the jurisdiction eg Luxembourg, or Greece, say, where the prior use occurred, and limited to that very act. So, you can’t rely on it to legitimate sales all over the EU or a Mark II improved product.
Much better to patent or publish, so the other fellah can’t get a patent or, even if he gets one, it’s invalid on account of your earlier filing or publication.
See, the EPC promotes the progress of useful arts.
Which reminds me, I must click on your link.
IANAE, I hope the golf ball situation has made it a bit more clear to you. The private use of the process to make the golf ball today is ON SALE and a bar to the patentee, but not a bar to a subsequent inventor of the process because the process itself is not in public use.
Max, I think I know the answer to my question. In Europe, the prior user has a right to continued use regardless of whether he fully intended to keep his use secret and regardless of whether he actually kept it secret.
In the US today, as I said before, such private use is not prior art, and we have no prior use defense. Such private use can be shut down by a subsequent patentee. Even after we go to FITF, that long time prior user can be shut down. He has no defense.
Under the EPC, Ned, No.
You have “made available” in the Senate Bill. Do you have an on sale bar too?
The novelty section would retain the previous “in public use or on sale” language.
As to whether the sale of Ned’s golf ball makes the process and composition “available to the public”, I would say that as a matter of fact it does not, but in the US it would as a matter of law because all the 102(b) (102(a) as amended) grounds are characterized by the amendment as examples of making available to the public.
Anyway, it doesn’t matter whether any aspect of the golf ball is “available to the public”, so long as it’s on sale in the US. Everything that went into that golf ball is prior art.
Ned, I don’t know what you mean by:
“..whether the prior use is ever publicly disclosed..”
Do you mean that I disclose 1) that I am using a process, the details of which I continue to assert is my trade secret, or 2) what my “trade secret” is?
The EPC defines the state of the art as everything that has been made available to the public. Everything is novel that is not within the state of the art. Everything is inventive, that the state of the art does not render obvious.
With a non-reverse engineerable product, sale of it does not “make available” the secret process. Nor does an offer for sale. So, in Europe you could have been selling your product for years, and still get enjoined. But for the European “right of continued use”.
You have “made available” in the Senate Bill. Do you have an on sale bar too?
IANAE, you read too literally. It does help to actually read some cases and know where all this came from.
See the golf ball question below to get a gist.
Does it make any difference whether the prior use is ever publicly disclosed? Can there still be prior user rights?
The reason I ask is that private use in the US is not prior art at all under any theory. The secret prior user can be successfully sued by a subsequent inventor.
Max, does a golf ball made according to a process and having a novel composition, both of which are not reverse-engineerable from the golf ball, place either the process or the composition into the public domain if the golf ball is in the public domain?
Do you want to make patenting of trade secrets compulsory?
Of course not. I just want people who choose trade secrets over patents to assume the risk that someone else might legitimately figure out their secret.
Also, you don’t actually have to wait till the first unit comes off the line. A mere offer to sell constitutes an on-sale event, and you can do that before laying the first brick for your plant.
It’s a big risk, isn’t it, to build such an elaborate facility without any patent protection or even a single customer lined up.
Ned, sorry, I don’t understand. Distinguish what from what?
IANAE the trouble with Europe’s “made available” is (as you note) with non-reverse-engineerable products. There might be a significant gap in time between A’s building his multi-million dollar production plant to practise his secret process, and selling the first stuff to come off his new line. If B files in that gap and takes his app to issue then, but for the “serious and effective preparations” personal protection enjoyed by A, B could legitimately shut down A’s plant. Do you want to make patenting of trade secrets compulsory?
ON SALE is a personal bar.
35 USC 102(b): “A person shall be entitled to a patent unless … the invention was … on sale in this country,”
Nothing personal about that. If the invention is on sale, that’s the same as any of the other events listed in 102(b).
It just happens to be the case that the person creating the on-sale bar is usually also the person who forgets about it, or fails to appreciate its significance, and later files a patent application.
Max, check the link and then see a question I addressed to you below on long time prior use.
link to huffingtonpost.com
Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention.
These days, if you’re too late to provoke an interference, you’re not allowed to copy someone else’s issued claim no matter what you tell the PTO. Presumably they’d have a similar rule under the new system.
But this is what happens when you mix FTI with FTF. You get public disclosures that aren’t patents and aren’t searchable, but affect who has the right to claim the invention. Maybe that’s why FTF doesn’t play nice with grace periods.
Only the first filer to disclose the invention in his spec should be able to claim the invention, and his claim should stand or fall depending on worldwide absolute novelty. That has the added bonus that once you’ve disclosed something to the public, you won’t later go filing a patent application and creating these odd fact scenarios.
Max, you ARE saying that a prior user defense will be accorded a secret prior user. What is to distinguish then the prior user who has been using the invention, in secret, for decades but who then is sued for infringement when a later inventor gets a patent and sues the long-time prior user?
I think the main concern is with inventions that inventor A decides to keep as a trade secret and separate inventor B decides to patent. If A has built his pilot plant even before B files, should he have a right to continue to run the process after B gets his patent.
Max, I completely understand that such a provision is meant for the inventors A of the world.
I just don’t think it’s that important to give A any rights in a trade secret after B has independently invented and validly filed a patent application, when A never intended to disclose anything to the public at all, and A knew all along that he was taking the chance that someone else might find out about it, at which point he’d have a problem.
Anyway, A would still have anticipated B’s US patent with his trade secret had he offered to sell a single non-reverse-engineerable unit to any other person. Which is a situation you need prior user rights for in Europe, I think.
IANAE: “And an offer of sale to the public will invalidate someone else’s later patent in the US.
ON SALE is a personal bar. It has to amount to a public use in the US in order to be prior art. There is no case that I know of that has held to the contrary.
I just re-read the bill. It does appear that it is intended that the first to disclose gets the patent regardless of subsequent events.
But now we can have it where even though B discloses first by selling a product in Timbuktu, A, who files first, gets patent because B’s disclosure is not searchable.
B files second. But, when his claims are rejected, he files an affidavit of prior public disclosure in Timbuktu. (He submits a photo(shopped) picture of a widget next to a copy of the Timbuktu Times with its date clearly visible.) B gets his patent.
Both now have patents, but A’s patent, even though filed first, is somewhat in limbo due to B’s patent.
So A sues anyway. I assume the infringer has to actually prove B’s prior disclosure in order to kill A’s earlier filing date. This seems reasonable.
Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention. They do not do that today. They force interferences.
Something stinks in the state of Denmark.
Ned, you write:
“Europe, due to FTF, is in a crisis.”
News to me. I’m startled, and amused. Care to expand? Is this something Mr Murdoch is reporting?
I just re-read the bill. It does appear that it is intended that the first to disclose gets the patent regardless of subsequent events.
But now we can have it where even though B discloses first by selling a product in Timbuktu, A, who files first, gets patent because B’s disclosure is not searchable.
B files second. But, when his claims are rejected, he files an affidavit of prior public disclosure in Timbuktu. (He submits a photo(shopped) picture of a widget next to a copy of the Timbuktu Times with its date clearly visible.) B gets his patent.
Both now have patents, but A’s patent, even though filed first, is somewhat in limbo due to B’s patent.
So A sues anyway. I assume the infringer has to actually prove B’s prior disclosure in order to kill A’s earlier filing date. This seems reasonable.
Still, I find it bizarre, more than bizarre that the PTO could knowingly issue a second patent on the same invention. They do not do that today. They force interferences.
Something stinks in the state of Denmark.
IANAE, I think the main concern is with inventions that inventor A decides to keep as a trade secret and separate inventor B decides to patent. If A has built his pilot plant even before B files, should he have a right to continue to run the process after B gets his patent.
BTW, I see amended 102 in the Senate Bill includes the established European “made available to the public” definition of the state of the art, which Europe thought in 1973 rendered a “right of continued use” provision indispensible. Interesting.
Is Paul Cole at home tonight. I think we need him.
I’ll try, Ned, in a few words.
There is a very old English patent case. Dr Dolland was the first to invent (a telescope invention, I think). He kept his prototype “in his closet”. He did not publish, he did not patent, he did not exploit, till after an independent other filed and prosecuted to issue. Dolland tried then to invoke his earlier inventive activity as a defence to infringement. He failed.
But patents ought not to stop you doing after issue that which you had already legitimately started to do BEFORE the filing date.
So, 1970’s European patent law includes a personal right to continue, after the patent issues, to do those commercial acts which would otherwise infringe but for which you were already making “serious and effective preparations” before the filing date of the claim asserted.
Did I say this thinking came from Germany? That was not my intention.
ping, validity is not touched. The patent is fully effective, against everybody else.
It seems, IANAE, that you do not understand the law on public use.
I understand that you’re talking about cases that don’t count as public use.
We’re all clear that public use will invalidate someone else’s later patent in either system, right? And an offer of sale to the public will invalidate someone else’s later patent in the US. So if you have an operating business before someone else establishes patent priority, you get to keep it. Fair enough.
The only thing up for debate is whether we should give prior user rights to someone who has not shared his invention with the public in any way, or even attempted to sell a single unit, prior to someone else’s filing, on the strength of secret preparations to do so that did not include filing a patent application. I don’t see that as a stronger claim than the guy who filed the first patent application, even as a passive defense.
I can understand the desire to protect a businessperson’s reliance and let him keep doing what he’s been doing, but it strikes me as odd when the person hasn’t really done that much and didn’t concern himself at all with the possibility that someone else might get a patent. It’s a funny sort of reliance interest when you’ve paid no attention to the risk that ends up costing you.
It seems, IANAE, that you do not understand the law on public use.
We all know why.
Here is a summary: link to huffingtonpost.com
I find it interesting that a study of the Canadian move to FTF confirmed everything that we have been saying here. FTF favors BIG companies and HARMs innovation. Europe, due to FTF, is in a crisis. Moves, it appears, are underway there to move towards the US system.
Why follow the leaders off the cliff if those leaders themselves now realize their mistake and are trying to claw their way back?
private use is not public use.
No, but it’s prior art as soon as you sell one unit to anybody, even if you haven’t made one yet. If you’re not selling to anybody and you just have the one unit for personal use, why would you be sued?
If you’ve made such significant preparations to sell that the other guy’s patent is a major inconvenience, but haven’t filed a patent application, then either you’ve opted for trade secret protection (or no protection) over anything the patent law has to offer, or you’re not very well organized for promptly getting to the patent office. Either way, I don’t see how the patent system owes you anything it would ordinarily give to the first filer.
I understand why one might want to protect initial investment on the basis that it was non-infringing when it began, and I don’t mind prior user rights in principle, it’s just that they seem so first-to-invent-ish.
Ned-O
But first let’s get an answer to the question:
Why would anyone want to make a patent weaker?
“I guess some posters are more equal than others.”
And some of us are just better, thank you.
IANAE, private use is not public use. I don’t think the new law changes anything.
The prior user defense is there for those who have reduced to practice and who are going into production, but haven’t yet disclosed anything publicly. See the note from MaxDrei above who described how the ROW essentially adopted the German approach to prior user rights.
So we are not talking here about anybody who intentionally keeps their “prior use” secret. We are talking here about those who eventually make a public disclosure by selling products or what ever, but whose public disclosure is not early enough to invalidate a patent. They get a personal right to continue use, while the patent owner has a right against everybody else.
Perhaps Max, who is more familiar with the exact details of the prior user right in the rest of the world can educate us better on the exact nature of the prior user right, and whether it extends to wholly private use.
“‘m still not clear on why”
Might be an equity thing… Ya know, ther eis no (R)equirement to submit a patent, and if the other party establishes some actions in good faith and all that.
Iza be more curious as to why this dont nullify the patent, since obviously the patent aint coverin somethin novel.
But the new patent bill strips out the prior invention defense, but does not add a prior user defense.
But it does have a “public use or on sale” defense, which is just about as good as a prior-user defense for any prior user who is likely to be sued, and doesn’t require the prior user to actually make the invention public (or make the invention at all).
I’m still not clear on why prior-user is an exception to the general and inherent risk that if you try to keep your technology secret instead of getting a patent, and someone else later discloses it to the public, it’s simply too bad for you because you gambled and lost.
How do these “prior user rights” jibe with that singular aspect of the patent (R)ight: exclusivity?
And frankly – Iza dont care how the ROW treats this – Iza wanna know the US Law take.
Is that a light on in the Dim Tower?
Corrected:
“What about all those folks who want to get rid of all patents entirely?”
One step at a time TINLA.
“How many patent applications do you think the typical start-up individual inventor files?”
That’s the punch line isnt it?
Under the proposed changes in the law, expect a forty fold increase in filings (not my answer – See the big Ron K). I believe the HMS is inline (listing or not) with this concept.
That be two people who havent been afraid to throw down some serious numbers to back their claims. Kinda sets their arguments apart.
The new patent bill fails the harmonization test in a significant way. The entire rest of the world that uses first-to-file also has what we know as “prior user rights” whereby an entity that has made substantial preparations for entering into production, but has yet to disclose anything that would be prior art to a first-filed patent, can be granted a right to continue production. These are known as “prior user rights.”
In a first-to-invent world, such an entity, who was also a first inventor, can rely and his prior reduction-to-practice to invalidate a patent if he is sued by a first filer. In practice, this amounts to the same thing as a prior-user defense. There are nuance differences, to be sure. Even so, the United States practice today is not that different from the rest of the world.
But the new patent bill strips out the prior invention defense, but does not add a prior user defense. This will put us for the very first time way out of step with the rest of world on this very important issue.
Les, we were trying to parse what would happen in the future under the new patent bill should it become law.
Yes, the US still enjoys a grace period. But that long-cherished feature of American Law, so vital to our economy, is being marched toward the guillotine by the radicals of the revolution, the purists of doctrine that can abide no imperfections or mercy. Soon, way too soon, this noble icon of America will meet its fate.
the bill also allows the theft of inventions through death of the inventor this will cause the murdering of inventors to obtain there intellectual materials this bill denies inventor estates the asset and is blatant fraud approved by the senate.Also the venue needs to change to allow webcamed hearings or to the venue location where the jobs should have been located at.The bill allows public disclosures that cheat the actual inventor of his evidening method when both inventors filing within three days of each other that identifies dispute situations from accidental divulgement or evesdroping.