by Dennis Crouch
In re Mostafazadeh (Fed. Cir. 2011)
In 2001, National Semiconductor filed a broadening reissue request for its Patent No. 6,034,423 that had issued the year prior. The invention itself is related to semiconductor packaging supports. During original prosecution of the application, the claims were amended to include a “circular attachment pad” limitation in order to overcome anticipation and obviousness rejections. In the re-issue, the company is seeking claims not bound by the “circular” limitation. The Examiner and BPAI both rejected the proposed amendment as an “improper recapture of subject matter surrendered during prosecution” of the original application.
The reissue process is designed to allow a patentee to alter the scope of the patent rights. However, there are several limits on the ability of patent applicants to expand patent scope during reissue. First, claims can be broadened only if the broadening reissue is filed within two-years after issuance of the original patent. See MPEP 1412.03. Second, a patentee may not use a reissue to recapture subject matter that was surrendered in the original prosecution in an effort to obtain allowance of the originally filed claims.
Because impermissible recapture is judged as a matter of law, USPTO determinations are reviewed de novo on appeal. The Federal Circuit has set out a three-step process for determining whether scope has been impermissibly recaptured:
- Consider whether aspect of the pending reissue claims are broader than the patented claims.
- Consider whether the broader aspects relate to material that was surrendered in order to overcome a prior art rejection.
- Determine whether a substantial portion of surrendered material “has crept into the reissue claim.”
The key is to look to see whether the reissue claims cover embodiments that were not covered by the issued but that were covered by the originally filed claims.
The impermissible recapture rule is not strict — some small amount of recapture is allowed. The court has ruled, for instance, that attempting to recapture a portion of previously surrendered scope is permissible if the reissue “materially narrows” the claims relative to the originally filed claims in a way that relates to the subject matter surrendered. According to the court, a narrowed limitation may be “modified . . . so long as it continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” However, entirely eliminating a previously added limitation will always trigger the recapture rule prohibition. Of course, this begs the question of “what is a limitation?”
Here, the patentee added the “circular attachment pad” limitation during prosecution and now want to eliminate the “circular” limitation. The patentee argues that the claim is still substantially narrowed as compared to the original claims. The Federal Circuit rejected that argument because any broadening of scope in the reissue must be coupled by a material narrowing within the reissue in a way that relates to the subject matter being recaptured.
In an e-mail today, Hal Wegner of Foley & Lardner suggested prudent patent applicants should not rely on broadening reissues. Rather, the best practice is to file a continuation application to “cover miscellaneous embodiments that could not be fit within the claims as allowed by the examiner.”
I meant “remiss” not “amiss” — common grammatical error that I fall into.
But a public sale might very well make it public enough to qualify as a public use.
While you very well may be correct, I think a litigator would be remiss not to assert such as prior art in litigation based on the language in some these opinions. A prosecutor would be amiss not to argue the opposite. (Then again, this is somewhat hypothetical. It’s probably unlikely that you’d learn of some prior sale / use that wasn’t public in any event.)
When things slow down a little, I’ll have to fully read some of these cases that you’ve been citing. A lot still to learn.
Tony, there is a lot of loose language in opinions. However, the only kind of “on sale” that is prior art is activity by the inventor himself. If he puts the thing patented into public use, or sells for public use the thing patented (or made by the patented process), he is deemed to have abandoned his right to a patent regardless of whether the public knows the secret “art” of how to make the invention.
Moreover, in Pennock, the Supremes defined “public use” as a common use by the public. It distinguishd a private use by another who actually might be a second inventor.
If you survey the cases, there is no case which holds a third party use to be prior art that is not publicly known, i.e., known to the public at large, and which is in common use. It would be inconistent with this notion to make the private use by another party, not the inventor, a bar to a patent of a different inventor. That private use is not a public use — a use that gives the public knowledge of the invention. In fact, we recognize that there may be two inventors who independently invented the same invention. Who is first is decided by an interference. But the private knowledge or use by rival inventors does not by itself bar the other from obtaining a patent. The reason of course is the uses are not public.
Private uses by third parties are not public uses at all. Whether they are sufficient to bar that third party from seeking his own patent is separate question.
Ned,
I wasn’t referring to “trade secret uses.” I was referring to that “on sale” is not just a bar but is prior art as to other third-party applications. That is — X’s sale is will be a 102(b) bar one year later to X’s application. But is that sale also prior art to Y’s application. I think it is.
See In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994) (“The section 102(b) “public use” and “on sale” bars are not limited to sales or uses by the inventor or one under the inventor’s control, but may result from activities of a third party which anticipate the invention, or render it obvious.”).
Although, perhaps the law isn’t so clear. See In re Caveney, 761 F.2d 671 (Fed. Cir. 1985) (“The “on sale” provision of 35 U.S.C. § 102(b) is directed at precluding an inventor from commercializing his invention for over a year before he files his application. Sales or offers made by others and disclosing the claimed invention implicate the “public use” provision of 35 U.S.C. § 102(b).”).
The again, I’m not sure it matters. If the “on-sale bar” doesn’t apply to third-parties, then “public use” in 102(b) would probably catch it, and if not that, you can go to 102(a) “known or used by others in this country.” Of course, you can swear behind 102(a).
Tony, read the cases.
Hovey did not involve the issue at bar (what whether trade secret used by a third-party was prior art.) It simply held that prior use, etc., for more than two years prior to filing a patent application did not have to be with the consent of the inventor in order to invalidate the patent.
(I note your implicit point about the change in language regarding “knowledge and consent” between the Act of 1870 an accident 1836 and 1839 on this point.)
Pennwalt involved a public use by the inventor himself and the issue was whether that use was experimental. I don’t see anything in the case where involving the question of trade secret use by a third-party.
Ned,
I think you are incorrect. Since you like old cases, see Andrews v. Hovey, 124 U.S. 694, 719, 8 S.Ct. 676, 686, 31 L.Ed. 557 (1888). Or look at Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573 (Fed. Cir. 1984).
I also would argue that the most important factor is the plain text of the statute.
Ned,
So I think I was misunderstanding your comment. I was reading your “informing” as “enabling” which I don’t think makes sense.
This is how I understand current law, which I think mostly matches up with your description. Trade secret use is not prior art (as to some other third party and there is no 102(e) art). Everyone should agree with that. Under Invitrogen, this trade secret use also doesn’t present a statutory bar. But where a product made from the process is sold, it does present a bar to a patent on the process. However, the sale of that product won’t make the secret process prior art as to other third parties unless the sale effectively disclosed the steps of the process. See In re Caveney, 761 F.2d 671(Fed. Cir. 1985). So this is one place where what’s a bar and what’s prior art diverges (although, it doesn’t really seem like the statute says that).
But under some of these older cases that you list, there might be other circumstances also where a trade secret use can present a bar. I don’t have time to look into all that now.
Anyway, it seems like the new bill is fairly consistent with current law in this respect. If it’s unconstitutional, then I don’t see why the current act also isn’t.
Yeah, but in reality, Section 103 actually codifies Hotchkiss v. Greenwood, just as section 112, paragraph 6, codifies Westinghouse v. Boyden Power Break. Both statutes were efforts to restore the law to its state prior to the somewhat aberrational Supreme Court cases in the 1940s.
You know, a new light, it would be interesting for someone to provide a cross-reference list between the statutes and the relevant Supreme Court cases they enact, to the extent we know it.
Ned,
The direct reference was to eliminate the flash of genius test – but you yourself have now amended your position in at least recognizing some other sections (the couple of points) – I was merely drawing your attention to the absolute nature of your comment above, which we both recognize now as false.
A new light, please explain about §103.
However, the 1952 act was intended to be a codification of prior law except in a couple of points where the change was intended. One was the inclusion in the act of §112, paragraph 3, now six, and §271 (c) and (c), which were intended to overturn the Mercoid cases.
Perhaps they intended to overturn some case such as the Atlantic and Pacific Tea case when enacting §103. I’m all ears.
Anonymous, the drafters of the current statute fully intended that the only type of on sale that would bar the filing of a patent application would be the kind of on sale that “otherwise informed the public.” They even said so.
Such “on sale” would essentially be a public use so as to obviate and make redundant the inclusion in the the statute of “on sale.”
As to current law, I have made several references to the recent Federal Circuit case in Invitrogen
link to vlex.com, which essentially held that trade secret use of a process to develop future products would not result in an on sale bar until those future product were sold.
What do you think of this holding? Would you advise your clients that the trade secret use of a process would not result in an on sale bar until products made by that process where actually sold? Personally speaking, his is so contrary to my understanding of the current law that I would not ever advise my clients rely in this case.
“The 1952 Act was a codification of prior law and was not intended to change it”
Ned. That is not correct. For example, 103(a) contained a direct and substantial change.
Please do not stray.
Anonymous, I’m sorry, but “on sale” is only a personal bar and is not prior art. “On sale” is a codification of Pennock v. Dialogue. As Learned Hand explained in Metallizing Engineering, the on sale bar is a personal bar, and is not prior art.
The 1952 Act was a codification of prior law and was not intended to change it. That is why it is always good to understand what the law is that the drafters of the ’52 Act were trying to codify. In this regard, it is always good to read Pennock v. Dialogue, an 1829 Supreme Court case, and Learned Hand’s explanation of the case in Metallizing Engineering.
“The drafters fully intended that the only “on sale” activity that would be prior art or a personal bar would be the kind of activity that informed the public of the invention, just as “inferred” by the wording of the statute.”
Not sure that I follow. Are we saying under the new statute sale of a product would not be prior art against an application trying to patent that product? That would seem ridiculous. Or are you saying that the secret method to make that product is not prior art against an application claiming that method?
Either way, it’s interesting that this interpretation has been given by Congressman in discussing the bill. But I don’t see it in the language of the text. Where’s Scalia when you need him?
With respect to harmonization – well, the exceptions basically through that out the window.
Under the current statute, on sale is prior art (not just a personal bar).
Ned,
It is not a matter though of how I cut it – you are not addressing the points of law that are squarely before you.
Even now, your resorting to a policy stance is a cry for uncle on the argument of law, which you still have not addressed. It is not like you to ignore actual points made in law when they speak so directly to the actuall issue under discussion.
I have honestly considered the Pennock case as well as the arguments by all sides here, in addition to the analogous points on copyright law (I note that you have not addressed my point on the two part length of copyright term). You keep on reaching for a Supreme Court reliance on the constitution, but you keep on ignoring their very words of what they actually relied on -both inthe Pennock case and what they have said in the case of copyright extensions.
I think that you are not addressing these actual words because you cannot. Your position simply is not defensible. I hope that you can take an honest (and fresh open-minded) view here, even if it was the obnoxious Ping that provided the facts. If you are honest – and objective, ther is only one conclusion that you can come to. Congress has the discretion – explicitly or impliedly – to set the duration, as long as that duration is limited. I note that you have not addressed my point between the distinction between limited and fixed.
Please address the issues that overcome your position directly, not by resorting again and again to a policy position that you have to reach to get to in the first place.
ANL, if you honestly consider the case and the fact that the Supremes do not lightly cite the constitution in interpreting statutes, I suggest to you that even though the Supremes interpreted “use” in the statute, they did so in a manner to fulfill the constitutional purpose.
As we have discussed in arguing prior user rights, they will incent TS usage, which arguably retards the use of the patent system and the spread of knowledge. But that is exactly what the Supreme Court said in Pennock in saying that long TS use followed by the ability to obtain a patent would not advance the useful arts, and would do the opposite.
ANL, no matter which way you cut it, the policy argument was the most important element of the case.
Ned,
I will not speak for Ping, but you continue to disappoint as your answer does not address the words and context of Pennock as Ping has outlined for you with his post above at May 05, 2011, 4:21 PM.
In Pennock, the Supremes expressly based their reasoning solely and completely on the law, on the Act of Congress. Completely. Why you refuse to acknowledge the plain words and really strain to divine some deeper reach to a consitutional principle is a mystery to me. I know Ping is a pain, and he is on my (hoped to remain) short list of those I will not respond to, but he has the better position here because he has shown that in Pennock the Supreme Court rested their actual rationale on the discretion of Congress for both the time and use arguments. Any fleshing out by the Supremes on either was based on what Congress had actually enacted. It is unmistakable that the Supreme Court justices fully allow[ed] (then and now) Congress complete discretion on these matters. Your exposition both of Pennock and of L. Hand’s understanding of Pennock rest squarely on that discretion.
I think that you have become too wrapped up with a notion that secret prior use is equivalent to “unlimited” exclusivity. I think that you need to realize the flaw in that logic.
I hope my comments here and the arguments already presented can be taken with a fresh open mind. I think you need to realize that any “unlimited” exclusivity of a trade secret is in fact distinguishable from that exclusivity that is earned from the actual patent grant provided by Congress, and that the real question being addressed by Pennock is what constitutes the “no prior use” question. When you see this distinction and realize that the Supreme Court clearly acknowledged that it was Congress that set ALL the rules governing this transition and that the holding in Pennock rested squarely on the actual rule of that day – as Ping has shown in the the two paragraphs following your oft repeated quotes, you must realize that if Congress were to redefine what is allowable for the grant of a patent, whether that be explicit or implicit, it is within their discretion and there can be no unconstitutionality involved. There can be in fact no such thing as a unlimited exclusivity because the only way to have an unlimited exclusivity is to never apply for a patent. Once you apply, you have created the very sunset of exclusivity. You have created that critical endpoint. A truly unlimited exclusivity, by basic definition is an endless exclusivity, not one of varying length (dependent only on the actual creation of an invention) – if you include both the pre-application period of secret use and the post-application period, that total period will always be of a fixed nature. Congress has the discretion to create this rather highly fact specific variability and there is no abbrogation of the consitutional mandate of limited term because, very much like copyright, the total portion as marked by the beginning portion need not be fixed, but only limited. Let me repeat the distingusishing words: Fixed versus Limited. Someone above noted that copyright is life of author plus seventy years. Is “life of author” (an inherently very unknown time period) likewise an unconstitutional law? Have not the Supremes ruled on this? Why are you forcing a difference where none exist?
You keep on reffering back to “following Pennock” without actually addressing the merits of “Pennock” that have been laid out before you.
Please consider these merits and consider what I have noted about the analogous copyright law, and reconsider your position.
ANL and ping, the Supremes did say Congress has discretion, but the times Congress chooses have to be limited. That is the only power Congress has and a reason for the quote.
Now, if Congress provides a regime of unlimited exclusivity, I hope we would all agree that Congress has exceeded its authority.
But that is what the Supremes were concerned about here. If a person could practice an invention in secret and maintain a monopoly for as long as he could by keeping the invention secret, and still obtain a patent for a fixed term, that, would not be “for limited times” according to the Supremes, and would violate the whole purpose for Section 8, to promote the progress of the useful arts as stated in the opinion. It would violate that basic principle.
ANL, you in other posts have strongly advocated this same position based on “policy” grounds without even citing or relying on Pennock. But the case exists, and maps the way the Supreme Court will decide the issue. They will not allow one to choose trade secret use and to also allow one to later choose to obtain a patent. Without a grace period, the instant one begins using the invention for commercial purposes, one loses his right to a patent.
Now if Congress expressly authorizes this in a statute, then we will get to the constitutional issue directly. But the new act does not expressly authorize it. It is only by implication that TS is permitted. As such, I think the Supreme Court will follow Pennock and deem such TS usage to be “public use” just as it did in 1829.
Ned,
You ask me what did Ping refute. My answer is that Ping refuted your rationale. He refuted the basis that you have proposed upon which the Supreme Court made their decision. He used the words out of Pennock. He used your own words on that same decision. He refuted both the time aspect and the use aspect, showing explicitly how both were based on Congress’ discretion rather than on the direct tenant of the constitution.
Your insistence on using only a part of the Pennock case – and utterly ignoring the context of the surrounding words – is what Ping refuted.
You still have not addressed any of those additional words.
Those words by the Supreme Court clearly and unequivocally state that Congress had, and still does have, the discretion of setting the parameters. Isn’t that the crux of the matter? If Congress has the discretion then, Congress has the discretion now.
In Pennock, the Supreme Court did not refer to anything as unconsitutional, they referred to the patent as not meeting the Act of Congress. This is unmistakable if you take ALL the words of Pennock. As much as you might not like it, Ping did address your original point and Ping did refute your original point.
I do not understand the basis for you ignoring this and maintaining a view against the evidence provided. To me, and this is only my view, you have no reason to be so obstinate. I do not begrudge you your view, but you need to do more than merely proclaim that it is your view. You need to refute the evidence that Ping has posted. You need to refute the Pennock case which supports Ping.
I enjoy your proclivity for actual discussion and know that you will not shy from a discussion on the merits – even if that discussion takes away from your position. I look forward to your addressing Ping’s points, the actual words and context of Pennock, on the merits.
Babble Boy, what the Supremes were saying is that by placing the hose on sale and in public use, the patentee had “legally, but not actually” placed his invention into public use so as to bar his ability to file and obtain a patent on the “art” of making the hose, even if the art was unknown to the public.
Hand later make it clear that a secret use was not in fact in public use for prior art purposes.
So you see, the Supreme Court had a real problem in trying to fit the statutes and the reality together. What they invented was what we now know to be the “on sale bar.” That bar was NOT in the statutes at that time, but was added later by Congress.
I hope you now see that the Supreme Court added a requirement for obtaining a patent that came, not from the statutory framework, but from the Constitution.
Instead of just gulping down what they said, try to figure out what they said and you’ll see that they don’t even know what they’re talking about. Here’s part of what you just gave us, quoting L. Hand:
“The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been “known or used before the application.” “If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * *”
Don’t you see the contradiction? You point out that the invention was not the hose but the method of making it. The USSCt talks only about the public’s knowledge of and use of the invention. Well, the only thing the public had knowledge and use of was the actual hose, not the method of making it. That’s the whole point.
You, Storey, and Hand are lumping the hose and the method together and calling it the “invention.” Very nasty trick. Shame on you all.
Your analysis and the USSCt’s would be correct if Pennock had disclosed to the public his method. He would then have no right to the patent. But he did not disclose the method; he disclosed only the hose. He is in the same position as Mr. and Mrs. Coke, and like them he should be entitled to a patent on his method, not on the product of the method.
You are also over-reaching in claiming that the USSCt has said that the Constitution bars secret use by the inventor followed by patenting. Your talents are wasted reading these moldy old opinions. You should be a politician.
ANL, ping refuted? What did he refute? I said the “rationale” for its holding was based on the constitution and even quoted statements of the supreme court. The “limited times” requirement of the constitution was “central” to the holding, as was recognized by L. Hand. One could monopoly exploitation for an indefinite period via secrecy, only to allow a patent once other began to unravel the secret. That is in both the Supreme Court case and in Hand’s opinion.
So, back to MY ORIGINAL POINT: Can Congress authorize that which the Supreme Court has already condemned as being unconstitutional?
NO, in my view.
Ned,
I am a bit disappointed in your arguments here. You called on Ping to read the case and not only has he read the case but he has provided substantive quotes that back up his view.
Your answer lack the usual substance in reply.
Saying “he does not get it” without showing why his quotes do not mean what he says they mean is like an empty wagon clattering down the sidewalk. Your repetition immediately above has already been refuted by Ping – your repost is now even less convincing as it seems that you do not have an answer to overcome the Pennock quotes provided.
I do not know if your lack or reply to Ping’s points stems from the fact that you do not take Ping seriously, but regardless of his usual sophmoric character, he has raised a number of valid points from Pennock.
Ignoring those portions or worse, mischaracterizing them, plainly will not prove that you have the better view.
As Ping has critically pointed out, even you have noted that in Pennock, the Supreme COurt has acknowledged the discretion of Congress. It is just too far a stretch to see any constitutional basis for the courts to now say that if Congress once again uses their discretion that somehow there is a constitutional violation.
This really needs a post by it lonesome and a full discussion.
How reliable is the opinion by Rader in Invitrogen that the time for measuring the on sale bar for a secret commercial product is the date products made from its use are sold?
I can tell you this, I would never run my patent department relying on this case.
link to wistechnology.com
link to vlex.com
Babble Boy, the patent was on the process of making the hose:
“MR. JUSTICE STORY delivered the opinion of the Court.
This is a writ of error to the Circuit Court of Pennsylvania. The original action was brought by the plaintiffs in error for an asserted violation of a patent, granted to them on 6 July, 1818, for a new and useful improvement in the art of making leather tubes or hose for conveying air, water, and other fluids. ”
That’s how L. Hand read the case in his summary of it:
“So far as we can find, the first case which dealt with the effect of prior use by the patentee was Pennock v. Dialogue, 2 Pet. 1, 4, 7 L.Ed. 327, in which the invention had been completed in 1811, and the patent granted in 1818 for a process of making hose by which the sections were joined together in such a way that the joints resisted pressure as well as the other parts. It did not appear that the joints in any way disclosed the process; but the patentee, between the discovery of the invention and the grant of the patent, had sold 13,000 feet of hose; and as to this the judge charged: “If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.” The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been “known or used before the application.” “If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts” to allow him fourteen years of legal monopoly “when the danger of competition should force him to secure the exclusive right” 2 Pet. at page 19, 7 L.Ed. 327. ”
…
“we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor’s competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, “prior use”; but the first is a defence for quite different reasons from the second. It had its origin — at least in this country — in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. ”
link to leagle.com
That is great advice.
Don’t you just wish Congress could write as cleanly and as clearly as the USSCt? As I have complained over and over, the Patent Act of 1952 was written by monkeys.
Look at the way Storey struggles with the Acts of 1792 and 1800 — they are no better than 1952. The problem with democracy is that it guarantees that the country will be run by moronns with money, and nowhere is that more clearly demonstrated than in the patent acts. I won’t mention any names, but if I was going to the first one would be Zoe Lofgren.
Ned:
“Pennock was not solely about a garden variety public use. Not at all. It involve a secret Art that allowed Pennock the ability to keep his “monopoly” until others could figure out how to make the hose.”
You’re reading a lot into the case that isn’t there, Ned. All through that opinion I kept asking m’self: are they talking about the hose or the method of making it? There is no way to come to your interpretation without a whole lot of imagination. The problem Storey was having was that the hose was known and sold for 7 years prior to the application. Please show me where the opinion was based on the method being kept secret.
Ned:
“Now, just how would you feel, really feel, if after the new statute is passed Coke files and obtains a patent on the trade secret process it has used to make COKE for 100 years+?”
In truth, I’d be absolutely fine with it. I hope I get to write the patent!! I’d think it was a brilliant move because today any dork with a mass spec can figure out the Coke formula, so Mr. and Mrs Coke should patent it quick and get their federal monopoly before it’s too late. No problem.
You’re problem is that you see Coke’s trade secret as a monopoly and you argue Mr. and Mrs Coke should not be able to extend that monopoly with a patent. We’re having a real hard time getting it across to you that a trade secret is not a monopoly, ergo no monopoly is being extended. A trade secret is the willingness to take a risk of discovery and losing your advantage. It has nothing to do with the right to obtain a patent, and it certainly doesn’t extend patent coverage.
I would say that Mr. and Mrs. Coke have no right to patent the product because it is part of the public domain – i.e., the composition itself has been in the pubic domain. But they have every right to patent the method of making Coke because the method has never been in the public domain. Now, if there is prior art out there that defeats them, such as Mr. and Mrs. Pepsi’s method, then that’s a different story. We’re assuming here that the Coke method is not known to anybody but Mr. and Mrs. Coke, and maybe the kids and their hamster.
Why is the concept that a trade secret does not negate patent rights so offensive to you and Zoe Lofgren? Is this a socialist position where the public is entitled to own everything?
I just got “nailed” did I ping? It “appears” to you, does it? Wishful thinking, I have to say. Fly and I could slug it out all day, trading nuances and shades of meaning (just like real lawyers do). But would anybody here be interested in that? Except for you, that is.
BB, as to “where” I get these cases, I learned from Richard Stern. I asked him one time how he learned patent law so well. He told me he a book of Supreme Court patent cases.
Well, I don’t have that book, but I did have Chisum and Westlaw/Lexis. I set about to read and understand all the cases myself. There really aren’t that many that are foundational. Pennock is one of them, one of the most important of them all.
Understanding these case is important because virtually all of our patent law is based on them. Our statutes merely write down a brief summary of their holdings. To really understand the statutes, one must understand the cases upon which they are based.
BB, I can see the problem both you and ping are having. It has to do with “public use” and “on sale bar.” The two are not the same thing. The latter was invented by the Supremes in Pennock. It is not in the statute. It is put there because it was necessary to avoid the problem identified by its discussion of the “limited times” issue.
Consider: Public use is prior art. On sale is not. It is only a personal bar.
Pennock’s fire hose was public, but the “art” of how to make it was not. The hose itself would be prior art then, as it is now, as a public use. The Art of making it would not.
Read the case again. The Supremes again and again use the words “public use or on sale.” Clearly they were aware that the Art of making the hose was not publicly available. Its very secrecy was key to the extension of the monopoly in the hose itself.
So, BB and ping, Pennock was not solely about a garden variety public use. Not at all. It involve a secret Art that allowed Pennock the ability to keep his “monopoly” until others could figure out how to make the hose. This is just like COKE, to the extent coke itself is public, but the process of making it is not. That process is a trade secret.
Now, just how would you feel, really feel, if after the new statute is passed Coke files and obtains a patent on the trade secret process it has used to make COKE for 100 years+?
Now circling back to a 2005 case by Rader, the Invitrogen case. He held that the commercial trade secret use of a process was not an on sale bar until products made from its use were sold.
Is that right?
Ned
Thanks for calling Pennock into view. That’s a rusty old bugger, ain’t it? Where do you get these cases?
Your analysis was: “The Supreme Court essentially held that to allow the use of an invention for an indefinite period of time, keeping the essential “art” secret for as long as possible, and then seeking patent protection when others began to unravel the secret would be to extend the monopoly period indefinitely. Essentially, a statute authorizing that which Pennock v. Dialogue condemned may just be unconstitutional.”
My response is, uh . . . I don’t think so.
In Pennock the inventor made and sold his riveted hose to the public for 7 years before filing for a patent. The court held that although the Patent Acts of 1793 and 1800 allow “knowledge and use” of the inventor prior to filing an application, those acts did bar public use of the invention. Samey same as today. I don’t see the point of the case.
The inventor in Pennock would have been barred even under the proposed act today because he sold his riveted hose for 7 years before applying for the patent – over two miles of it.
That is a different thing than what I am arguing where the inventor uses his invention in secret prior to seeking a patent. Think Coke. If after keeping the formula secret for 100 years or whatever, I would argue that Mr and Mrs. Coke have every right to obtain a patent if they are ready to reveal the formula to the public.
There is the issue of the quid pro quo here. The inventor cannot be forced into such a bargain until and unless he is ready. When I am ready to give my invention to the public, then and only then am I entitled to the monopoly. That’s the deal. As long the government has not performed its part of the bargain by granting the monopoly, then I am not required to perform my part by disclosing the invention. What I do with the invention up until the time the bargain is made is my business. If I disclose to the public, then of course there is no bargain because I have nothing to perform.
As far as your allusion to the Constitution, I don’t see it. This issue has nothing to do with the Constitution. Congress can write this law anyway it wants to. The CAFC has recently held that there is no Constitutional right to a patent and it has sanctioned a lawyer for making a claim that there is such a right. If there is no Constitutional right to a patent, then there is certainly no Constitutional prohibition against using my invention secretly for as long as I wish before applying for a patent.
These issues are 100% statutory. Likewise, although there is some prefatory comment on the Constitution, Pennock is decided entirely on the Patent Acts of the time.
Pennock is not applicable. [Say that 5 times fast as you can.]
“and that the period shall be subject to the discretion of Congress….
Reply May 05, 2011 at 02:56 PM”
Ned – ya typed it yourself.
Ned-O-gram,
Ya shoulda just stopped at “ping, you make the case”
That be it.
I done told you above that both your vaunted time and the actual turn-O-phrase be fully recognized by the Supremes as under the discretion O Congress. The Supremes fully and completely decided teh case on those items that are up ta Congress discretion. I done give you teh quotes – your argument is no longer with me, but with the very case you brought to the table. It is that case you must now overcome.
There just aint no (C)onstitutional issue here.
ping, you make the case that the Supreme’s interpreted “in use” to come up with the on sale bar, but again the “rationale” for doing so was not in the statutes, but in the constitution.
Why?
The “art” of the fire hose making process was not known by inspection of the fire hoses themselves. It acually was not in “public” use. That is why the Supremes kept saying “on sale.” But on sale was not in the statute. The Supremes put it there by interpretation, but they did so that the inventor not be able to exploit the invention without time limit and still obtain a patent just when others are beginning to learn of the secret process.
That’s it Ned?
Really?
Let’s actually have ya try to refute the quotes I done thrown back atcha from teh very source you cited. Cmon dude, I thought we were going to discuss this, not have ya high-tale it when I done shove your own case up your Ned-IMHO-Law.
Once again, all I gets from my trouble O reading a case and reporting back is this lame-a_$$ “we shall see”?
I hope ya dont try this tactic in court.
Does anyone think the linked case is still good law?
Trade secret use is not considered “on sale” until the products made from the process are sold?
link to wistechnology.com
link to vlex.com
ping, we shall see.
Your view: Congress can allow indefinite trade secret use and then allow a fixed period of exclusivity on top of that.
My view: The rationale in Pennock is inconsistent. The Supremes would follow Pennock and hold such a statute unconstitutional.
After you – my hosed friend. This time try reading ALL teh post.
“to fit it in the statutory framework”
And why is that – O yeah – like I done told you.
“The real rationale”
LOLZAMAKEBELIVE – the real according to whom? to NED-IMHO-Make-up-the-Law?
And ya have neglected to notice that the first two paragraphs I done shown ya above are directed to your vaunted “for limited time” discussion – and them too fall directly to the part that Congress done control.
Face it Ned – you are “hosed“.
Be gracious and I wont rub your noce in it.
Well, not too bad at least.
Check again.
ping, the process for making the fire hose was not public. Check L. Hand’s summary of the case in Metallizing for that point. So the Supremes invented the “on sale” bar to accomplish their purpose. They labelled their holding as “public use” to fit it in the statutory framework, but that only served to cause endless confusion from that time until today.
The real rationale for the case is given in its discussion of the constitution and the “for limited times” discussion.
“You will appreciate that my postings are phrased to gather the attention of American patent attorneys.”
HOOEY !
“I would write altogether differently.”
Like being correct? – Ha – you just got nailed being full O bull.
Maxi – it appears that ya be as ignorant of your vaunted EP law as ya are of US law.
Ya be nothing but a shill for globalization, aint ya? For making the gold standard weaker, aint ya?
Fly, I’m much obliged, for the observations of one who was once an EPO insider. Thank you. You will appreciate that my postings are phrased to gather the attention of American patent attorneys. If I were writing just for you, I would write altogether differently.
I done reported back – and once again, your reading O case law be seriously deficient.
Pennock actually supports my observations and negates yours.
See above.
Ned,
The answer to your question (not my answer as Homey dont do answers) lies in the very next two paragraphs in the Pennock case, and elsewhere as I exhibit for you:
“If an invention is used by the public, with the consent of the inventor, at the time of his application for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is not a use within the meaning of the statute, how can the court extract the case from its operation and support a patent, when the suggestions of the patentee were not true, and the conditions, on which alone the grant was authorized, do not exist?
The true construction of the patent law is, that the first inventor cannot acquire a good title to a patent if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application for a patent. This voluntary act or acquiescence in the public sale or use is an abandonment of his right; or rather, creates a disability to comply with the terms and conditions of the law, on which alone the Secretary of State is authorized to grant him a patent.”
Ned,
you will note that each and every reference to law and statute is NOT at the (C)onsitutional level, but on the level expressly controlled by Congress.
Further, as stated in Pennock: “we are of opinion, that the proper answer depends upon the true exposition of the act of congress, under which the present patent was obtained”
and
“The patent act, of the 21st of February, 1793, ch. 11, prescribes the terms and conditions and manner of obtaining patents for inventions; and proof of a strict compliance with them lies at the foundation of the title acquired by the patentee”
THUS the actual phrase of import:
“thus not known or used before the application”
being one that Congress chose – be one that Congress can freely amend without there being a (C)onstitutional question.
As I done told you – this aint an item that turns on the meaning of the (C)onstituion and it be an item that Congress freely can change if they want to. If this Congress chooses to change the law, Pennock is not affected, but rather its reasoning still applies to how this Congress does change the law.
Yet again, you purport a Supreme Decision that not only does not support your view, but actually teaches against your view – and aligns with my observations O gold.
Ya really need to (re)learn how ta read cases.
[…] after the first Action issues, 24 months to file a divisional.
R. 36 sounds harsh, but is really a paper tiger. Just go the PCT route, you get another 31 months, resulting in practice in nearly five years after the priority filing to decide on your course of action. IMO, the crucial event in the applicant’s business strategy is the PRIO filing, not when it’s descendant eventually arrives at the EPO). The new version of the Rule would have only slightly inconvenienced Virgin Atlantic – only the latest two “divisionals” couldn’t have been filed, and two other would have had been filed a few weeks earlier.
If the PCT application was not processed at the EPO as ISA, or was messed up sufficiently upon entry into the Regional phase, it might not bubble up to the top of the examiner’s heap that quickly, so you have even more time. The difference in treatment also raises issues of fairness for those who file EP direct.
Divisional must be directed to a different invention ie mere broadening is not going to cut the mustard.
We’re returning here to an old topic. What’s your basis in the EPC? How do you assess that the divisional is directed to a “different invention”, please? I’m hoping for a REASONED answer. The original version of Rule 25 EPC 1973 was repealed a long time ago; reasonings based on Articles 125 or 60 are difficult to make and are not very solid.
Meanwhile, in the application that attracted the Office Action, one shot at amendment.
TWO shots, please. The first under Rule 137(2), with the benefit of the Written Opinion accompanying the search report, and the second one under Rule 137(3), first sentence, with the reply to the official communication under Art. 94(3).
The applicant must, according to the new rules, theoretically react to the written opinion, but one needn’t write much in practice, and in the PCT route, “amendments” aiming to shoehorn, say 77 claims into 15 (to avoid the punitive fees) will count as a reply to the written opinion.
After that, you need the “consent” of the Examining Division to get a further round of amendment admitted to the proceedings.
I like you putting the word “consent” between quotes. You know why, it’s not as if the applicant had to beg the ED to accept to consider just one more request. Even if the examiner feels that the applicant is playing games, and that the prosecution is worse than nailing Jell-O to the wall, a strong whiff of a substantive ground (e.g. clarity, novelty, added subject-matter) must still be given to justify the ED’s exercise of discretion with the BoA. One cannot arbitrarily reject requests, even if these are filed on the eve of oral proceedings and the applicant doesn’t bother to show up. The strict RPBA applies only to the BoA, not the ED.
From Pennock:
“The Constitution of the United States has declared, that Congress shall have power ‘to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.’
“It contemplates, therefore, that this exclusive right shall exist but for a limited period, and that the period shall be subject to the discretion of Congress.
…
“While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was ‘to promote the progress of science and useful arts;’ and this could be done best, by giving the public at large a right to make, construct, use, and vend the thing invented, at as early a period as possible, having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure, and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent and thus exclude the public from any further use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts and give a premium to those who should be least prompt to communicate their discoveries.
“A provision, therefore, that should withhold from an inventor the privilege of an exclusive right unless he should, as early as he should allow the public use, put the public in possession of his secret and commence the running of the period that should limit that right would not be deemed unreasonable.”
The emphasis in quoting the constitution was in the original.
Ned, to yr 2nd para, I wrote “usual suspect” because Shakespeare’s original word was too rude for this blog. To yr 3rd para, no. To yr 4th, I see.
That is the point here. This patent law decision, Pennock, was somewhat unique in that its rationale was based on the constitution itself.
When you have read the decision, report back and we can discuss.
Several confused peeps on this.
It want Moonbeams that laid this out, it was me.
It is not something that is current law (which had Ned in a twist), it is a proposed observation.
Ned-O -gram, ya gotta remember that not everything from the Supremes needs ta be overturned by (C)onstitutional amendment or by the Supremes themselves. Ya gota remember that the 1952 act expressly changed some O the Supremes decisions. And that’s not the first or only such COngress action that did that. It be true that Congress cannot redefine the (C)onstitution, or what the Supremes say the (C)onstitution says, but that aint quite the issue here, now is it? There really isnt a question of someone, involved with a patent, having unlimited rights, cause in the process O them finally settle down and get a patent, then the right granted (a limited time right) destroys the trade secret (by design) and when a patent expires, teh invention is then public domain.
Glad I can help ya all.
BB, when dealing with the constitution, we either have to overturn prior Supreme Court precedents or amend the constitution. This is not about personal preferences.
Max, usual suspect?
Well the “problem” we have is prior Supreme Court precedent (Pennock) which used the constitutional to limit such prior use to zero.
Is the Euro Patent Convention subserviant to any European constitution having a patents clause?
This is not a policy choice Congress is entitled to make, unless the Supremes change their views.
I would like to add, that the referenced 2006 case is flatly inconsistent with the stated rationale in Metallizing and Pennock, both of which hold that when the invention is ready for patenting, any use for the intended purpose is a “barring” event. This rationale was adopted in Pfaff v. Wells Eng., which cited Metallizing, which relied on Pennock.
Is your “coerce” and your “we” meant ironically, 6?
The European patent system that BB has in mind does allow endless secret use prior to filing, for as long as the invention has still not been “made available to” the public. The European patent system nevertheless does encourage BB to disclose. As he says, he is at risk, all the time he uses his invention secretly. The availability of the patent system gives him a choice. Thus, he can eliminate that risk by filing at the PTO and prosecuting to issue. Without the patent system, there is no rational choice other than to continue indefinitely with his secret use.
Of course, Ned, there was “uproar” also in Europe, when the pols grasped this aspect of the 1973 European Patent Convention. Turned out though to be a storm in a teacup, a tale of sound (if not quite fury), told by the usual suspect, signifying, as it turned out later, very little.
Yes but we want to coerce you into disclosing. That’s the whole point of the patent system BB.
I think I’m tracking Moonbeams on this.
There is a distinction between how long an invention can be used and how long the monopoly lasts. There is no grounds for federal input, control, or intervention until the inventor asks for a monopoly. Until he does that, the only issue for the government should be whether the use is such that the invention is disclosed to the public in an enabling way.
I don’t care what the USSCt may have said, anything I do with my invention prior to filing for a patent, short of public disclosure, is my business. If I want to operate in secret and take the chance that someone will discover the secret, that’s my business. And if I want to do that for 40 years before I file for a patent and disclose to the public, that’s my business, too. My monopoly is not then 40 + 17. It is still just 17. Operating in secret is not a monopoly.
People need to distinguish use from monopoly. The Constitution and Title 35 are about monopoly — the government doesn’t secure to me my exclusive right to my invention until I file the application. Until then what I do is none of the government’s business and has no relevance to the length of the monopoly, with the exception of the issue of whether my pre-filing use was an enabling public disclosure.
When Bruce Schneier recaptures it is always permissible.
link to schneierfacts.com
link to schneierfacts.com
“cannot grant indefinite monopolies”
Life of owner plus seventy years + (owner = corp) = …
Tony, the interpretation I gave you is the interpretation the two leading Senators gave it, which was repeated and discussed in the House hearings. The drafters fully intended that the only “on sale” activity that would be prior art or a personal bar would be the kind of activity that informed the public of the invention, just as “inferred” by the wording of the statute. This is the way it is done in Europe, and, as we know, the whole effort here is harmonization.
But, as we know, once some congressmen found out that the new law would permit that which Pennock v. Dialogue forbad –long trade secret usage not barring later patenting by the user– there was an uproar. I understand they are trying to work on language, but there is a problem
1) Any compromise here would be inconsistent with harmonization; and
2) If the law passes as is, with the S23 language intact, it may be unconstitutional under that very same case, Pennock v. Dialogue.
On the issue of non informative use being a personal bar, we have a Supreme Court cases that suggests it is. See, e.g., Egbert v. Lippmann link to supreme.justia.com and Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 59 S.Ct. 675, 83 L.Ed. 1071 (1939). In analyzing these cases, the Feds have emphazised the lack of confidentiality (from Egbert) or the commercial nature (allegedly from Schmadzu, which really turned on lack of confidentiality) of the use in order to find a bar. See, e.g., Motionless Keyboard v. Microsoft link to caselaw.findlaw.com
When a use is non informative, private, but for commercial purposes, it is a personal bar (Pennock v. Dialogue) but not prior art to third parties, Metallizing Engeering (L. Hand)(followed by the Federal Circuit)link to leagle.com.
When uses are completely private and non commercial, there is a recent Fed Cir case that held the use not even to be a personal bar. I don’t have a cite handy, but it should be easy to find. Check its cases issued in 2006.
If there’s a method used internally and then the product is sold — well to be honest I’m not a hundred percent sure the answer to that under current law. I believe that is a bar but not 100% sure.
I believe the law states that such a use would trigger a bar if the method can be inferred from the product. Otherwise it is not a bar.
“Overcoming (without amendment) a rejection based on just the original prior art used to reject the original claim 1 shows the Office is now on record that the reissue claim has at least one limitation that distinguishes it over the original claim 1.”
But that doesn’t speak to what you surrendered back in the day… Can you bring yourself to remember the basis for this entire rigamarole that we’re having to work through?
“If the reissue claim distinguishes over the prior art used to reject original claim 1, the scope of the reissue claim must lie within non-surrendered subject matter otherwise the prior art would be sufficient to properly reject the reissue claim. ”
From what you’re telling me here, I don’t think you know what surrendered subject matter is. Like, fundamentally, you don’t understand the concept. And I think that’s where your problem is. I’m not going to go over what it is with you but I’ll tell you that whether or not a newly allowable reissue claim is allowable over prior art is completely irrelevant as to whether or not you are recapturing PREVIOUSLY surrendered subject matter in a different reissue claim. You cannot “unsurrender” subject matter. You cannot now, after the fact, generate something delineating the line between what you previously surrendered and what you did not. The subject matter which was surrendered was surrendered a long time ago, you cannot change what you surrendered now. And I’ll also tell you that if you keep on arguing the way you are, you’re likely to argue yourself into getting that other claim which is currently deemed allowable into also being deemed recapturing surrendered subject matter. That is not something you want to do.
In any event, if you require further instruction on this matter, or explanation I am available for my standard fee of 100$ per hour.
examiner6k@yahoo.com for scheduling.
Overcoming (without amendment) a rejection based on just the original prior art used to reject the original claim 1 shows the Office is now on record that the reissue claim has at least one limitation that distinguishes it over the original claim 1. If the reissue claim distinguishes over the prior art used to reject original claim 1, the scope of the reissue claim must lie within non-surrendered subject matter otherwise the prior art would be sufficient to properly reject the reissue claim.
Ned –
I’m not sure that I follow your comment regarding public use bar under S.23. Under my reading of the bill, any “public use” would present a bar — whether enabling / informing or not.
“A person shall be entitled to a patent unless—
1) the claimed invention was patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing date of the claimed invention.”
I don’t see why that public use would have to be one that “informs the public.” It seems that it would be the exact same type of public use or sale that invalidates patents under current law.
I’m guessing that I’m misunderstanding something from your comment. An internal private use wouldn’t be a bar. If there’s a method used internally and then the product is sold — well to be honest I’m not a hundred percent sure the answer to that under current law. I believe that is a bar but not 100% sure. Thanks.
The SPE told the examiner that any broadening of original claim 2 was recapture in this case.
Even if any broadening is a recapture, some broadening should be allowed.
I think removing a word from a limitation, e.g., removing the word “circular” from the limitation “circular attachment pad” may not work. However, replacing a word or phrase in a limitation with a more generic one might work. For example, may be the Office will be OK if you replace “circular attachment pad” with “elliptical attachment pad” with the understanding that a circle is a special case of an ellipse.
“in this case.”
Says it all.
“In addition, the same prior art used to reject the original claim 1 was asserted against the broader reissue claim and the rejection was successfully overcome without amendment. ”
And that is relevant because…?
“The examiner told me then he was ready to allow the application but a SPE over ruled him and said there was recapture.”
Which sounds correct.
“The SPE told the examiner that any broadening of original claim 2 was recapture in this case. ”
Certainly sounds like it. At least generally speaking. Of course, you might could show him something to change his mind… but you probably don’t have anything relevant to show him, so that is a moot point.
Yes, I have it in writing that the Office does not recognize non-surrendered scope in this case. In addition, the same prior art used to reject the original claim 1 was asserted against the broader reissue claim and the rejection was successfully overcome without amendment. The examiner told me then he was ready to allow the application but a SPE over ruled him and said there was recapture. The SPE told the examiner that any broadening of original claim 2 was recapture in this case.
So, Ned, after the first Action issues, 24 months to file a divisional. Divisional must be directed to a different invention ie mere broadening is not going to cut the mustard. Meanwhile, in the application that attracted the Office Action, one shot at amendment. After that, you need the “consent”of the Examining Division to get a further round of amendment admitted to the proceedings.
So, better draft carefully, and be careful what, at the outset, you ask for. Is that “harsh”? Depends on your viewpoint. Not harsh if you happen to be a competitor, picking up the WO publication and, thereafter, watching progress through the EPO and doing FTO due diligence.
Sense is something you can’t make sense of until you’ve been to the future. And spent time there.
There were issues with this regarding copyrights not that long ago, IIRC. The Supremes did reaffirm that Congress cannot grant indefinite monopolies.
But, as to your basic point, I agree that Congress can grant a fixed period of time for use prior to filing. They in fact did in 1839. It is known as the grace period.
is there a constitutional problem in this regarding the constitutional mandate that the protection given inventors should be for limited times only?
Easy to fix. Just say that inventors can keep the art secret for no more than 60 years prior to filing. Isn’t that a “limited time” according to the Supremes?
The new patent statute, as currently drafted, will allow indefinite use of an invention in private and still permit one to later file and obtain a patent. The only bar in the new statute as passed by the Senate, is the public use bar, with public use constituting the kind of public use that informs public as opposed to being the kind of public use discussed in the case law that results from an invention being on sale, even if the invention is not otherwise available to the public.
Zoe Lofgren made it clear during the recent hearings that she and many others would not agree to any revision of the statute that would permit this. However, let us assume for the moment that she fails in this effort and the new statute does permit indefinitely long private use of an invention, is there a constitutional problem in this regarding the constitutional mandate that the protection given inventors should be for limited times only?
I think there is support in the Supreme Court case of Pennock v. Dialogue for this proposition because the rationale of the holding in that case was just this. The Supreme Court essentially held that to allow the use of an invention for an indefinite period of time, keeping the essential “art” secret for as long as possible, and then seeking patent protection when others began to unravel the secret would be to extend the monopoly period indefinitely. Essentially, a statute authorizing that which Pennock v. Dialogue condemned may just be unconstitutional.
Max, perhaps you could explain to the illiterati the EPO rule about surrender. Seems rather harsh.
Max, I like the strategy you propose so must that I actually use it. If the examiner ever allows narrow claims, I take them; but I continue the argument about the broader claims in a continuation: the Wegner strategy. I think this is totally legitimate.
Wegner is a respected patent attorney/professor of considerable vintage. He has credibility. So, when he speaks, others listen. He is worth quoting.
Malcolm, the public actually might be practicing the new claim regardless — base on its reliance on the lack of the ability to recapture.
Frankly, I don’t understand this case at all now that I think about it. It is flatly inconsistent with Warner Jenkinson. There the Supreme flatly rejected any kind of recapture of surrended subject matter without some sort of “forseeablity” protection. The only difference between that case and this are the protections given the public by Section 252. Are they sufficient to justify the different treatment?
I think your point is that since broadening reissues are only allowed for the first two years (which takes care of any notice issues), we should allow the claim scope to be changed more than is currently allowed by the case law.
That is my point. I “get” the idea of not allowing a reissued claim that differs only from the original claim in that it recaptures previously surrendered subject matter. You had a chance, the issue was squarely before you, and you chose to not pursue it in the original app or in a continuation. So you’re hosed. Fine.
But I don’t get the idea of not allowing reissued claims that recapture surrendered subject matter but are substantially narrower in other aspects. I don’t see why the failure to propose such a claim in the original case (which very likely would not even be examined by an Examiner because it would be drawn to different invention that originally presented) should preclude pursuit of such a claim in a reissue.
” I have argued that original claim 2 was never rejected and therefore can not be used to establish an end point delimiter for surrendered subject matter. ”
And people doubt me when I tell them that we get re tarded arguments.
“At present, the Office refuses to admit that it is even possible to have any non-surrendered scope between original claim 1 and claim 2. ”
Do you have that in explicit writing? I think the office’s position is, more particularly, that there could have been, but we have no way to know where that line is, so we fall to the default of not giving you that line unless you can show us something that would point to the line.
“I am going to appeal to first decide if non-surrendered scope can even exist and then if it can, does my broadened claim lie within the non-surrendered scope and thus escape the recapture rule. Does anybody think I have a case????”
For the first proposition yes, and for the second proposition no unless you have some way to demonstrate where this line supposedly was, aka some arguments or something (maybe other allowed deps with similar subject matter to the dep you moved up) in the previous record. Which, apparently, you do not.
Frus
Maybe Wegner’s point about continuation, while it comes too late, is applicable to your problem.
I do not believe the recapture or surrender applies to continuations — just reissues. I have never had an examiner try and argue that because I cancelled claims in a parent application I can’t revive those same claims in a continuation. Nevertheless, the whole waiver, surrender, recapture line of thinking gives me hebie-jeebies, which is why I prefer to let the examiner do the cancelling.
In your situation I would not have cancelled Claim 1 but I would have added a new independent claim that combines Claims 1 and 2. This would allow the first application to issue on the new claim as a minimum. I might also add a claim that includes the material between Claims 1 and 2 you are talking about. Let the examiner do the cancellations when he calls and asks to enter an examiner’s amendment. If that doesn’t happen, one can cancel after final, but I’d include a “this is not a surrender” statement to be sure the PTO knows the fight for Claim 1 isn’t over.
Then file the continuation with the original, now cancelled, Claim 1 and any new claims with the subject matter between Claims 1 and 2. These are the rejections you appeal. If you get an obvious type double-patenting rejection, file your disclaimer.
As for your reissue, I’d be interested to know what your declaration looked like. Did you say the error justifying reissue was that you goofed when you cancelled Claim 1? That ain’t gonna’ work for sure.
My point wast that if a patent issues with ABCDE then someone who infringes ABDE has arguably been put on notice. However, it is much harder to argue that someone who infringes AFGHIJK has been put on notice.
I think your point is that since broadening reissues are only allowed for the first two years (which takes care of any notice issues), we should allow the claim scope to be changed more than is currently allowed by the case law.
The court, on the other hand, thinks that the two year limit is not enough to address the notice issue; we also need to restrict the kind of changes that can be made to the claim scope during those two years.
As I noted, it seems to me that the 2 year limit addresses the notice issue.
I think your hypo supports my point, actually. Consider: let’s say element C in your hypo was the surrendered matter (i.e., C was added as a limitation in response to an art rejection).
The only difference betweeen an infringer of (AFGHIJK) being on the hook or not after the broadening reissue you describe is this one element (C). Why should it matter? It’s a completely different invention from the invention that was originally prosecuted. The invention described by the originally issued claims doesn’t even infringe the new claims!