[UPDATED August 18, 2011 to Reflect the Fact that the Christopher Brown mentioned here is not Christopher Brown, CTO of OPSCODE]
Odom v. Microsoft (Fed. Cir. 2011)
By Dennis Crouch
I previously wrote about the Federal Circuit affirmation of the lower court’s summary judgment ruling that Odom’s claims are obvious when judged against a single prior art patent.
The prior art patent in this case is Patent No. 6,057,836 and is owned by the defendant, Microsoft. The inventors on Microsoft’s ‘836 patent include Jude Kavalam (now CTO at Spoken Communications), Christopher Brown (now CTO at Opscode) and Jeff Bogdon (named inventor on 25+ patents). The ‘836 patent provides a mechanism for users to re-size toolbar groups and has a number of similarities to the invention that Odom claimed in his patent and the appellate panel identified the advances offered by Odom as “insignificant.” Odom has now petitioned the Federal Circuit for a rehearing.
An interesting aspect of this set-up is the way that Microsoft used its patent as a priority document to help establish its freedom to operate rather than as intellectual property per se. Microsoft could have achieved the same results by simply publishing its prior invention. Likewise, in the US, Microsoft could have relied on its prior-inventor rights under 35 U.S.C. 102(g). However, the patent-as-prior-art approach has a number of advantages over these alternatives. Of course, alternative approaches are not mutually exclusive and instead can each be part of a layered strategy of protection.
Creating Prior Art – Patent versus Publish: Under 35 U.S.C. 102(a) & (b), any prior publication has the same weight as a prior patent or published patent application. An issued patent additionally offers intellectual property rights. However, even apart from those IP rights, there are several reasons why a company may choose to file for patent rights when attempting to create prior art to forestall infringement litigation. First, because a patent application will be considered prior art as of the date of filing (once published or patented) under 35 U.S.C. 102(e), the company can establish a prior art priority date without actually publicly disclosing the invention for at least 18 months. This delay in publication will often be seen as valuable. The patent approach also comes with a guarantee that the document will qualify as prior art as of a specific, known date — as opposed to a non-patent publication that will be judged and timed according to the sufficiency of distribution or indexing. In addition, the patent rules force a more complete disclosure and therefore may result in better documentation of the invention and a broader scope of disclosure than what would have been otherwise published. Finally, a patent may well provide a sense of authority and an equitable claim-to-right that would not accompany a mere publication.
Creating Prior Art – Patent versus Prior Inventor Rights: In the US, a prior inventor can also invalidate a patent by proving prior invention under 35 U.S.C. 102(g). However, that approach is fraught with potential doctrinal difficulties and a patent disclosure offers a much cleaner mechanism. These difficulties may well have arisen in this case. For instance, Odom presented evidence of Microsoft’s recognition that the Kavalam project was unable to achieve the the results claimed by Odom. And, several years later (well after Odom’s priority date), Microsoft finally filed for patent protection on what is arguably Odom’s invention — arguably recognizing that Odom’s invention is distinct when compared with Kavalam. These facts suggest that perhaps Microsoft would not fare well in a 35 U.S.C. 102(g) argument. Adding to this difficulty is the extensive paper trail requirement for proving 35 U.S.C. 102(g).
Four Corners of the Prior Art?: The district and appellate court decisions considered the Kavalam patent on its face and did not bite on any of Odom’s arguments regarding Microsoft’s actual activities and admissions that could have limited the interpretation of the disclosure. This approach simplifies the analysis, but it is probably wrong once the case steps into the question of obviousness — especially when the alleged prior art was created by one of the parties to the lawsuit. In KSR v. Teleflex, the Supreme Court ordered that courts apply a flexible, common sense approach obviousness. Here, that guidance seems to mean that a court should consider extrinsic facts that tend to expand or limit the interpretation of the prior art reference.
Notes:
- Odom’s patent issued from a continuation application. Odom cited the Kavalam patent in the parent case, but did not re-submit the patent in the child case (examined by the same examiner) and the Kavalam patent is not listed on the face of the asserted patent. The Federal Circuit opinion implicitly suggests that this prior art was not considered by the examiner. Those who disagree may want to support the rehearing request.
Gone are the days of “local novelty”, when patent rights were handed out to people who brought back to the homeland useful inventions spotted in faraway lands and still unknown in the homeland.
These days, inventions are made by inventor employees each sitting at a PC in a different part of the world, and working together as a team. Would you not agree then Ned, anything other than absolute novelty is, these days, ridiculous.
Max, you may be right at least prospectively. It was one of the main objectives of the drafters to have one prior art for any US patent regardless of origin. This helps explain why the choice of universal public use as opposed to limiting even that to the United States.
….and if the Bill passes into law, the Hilmer Doctrine then passes into history, right Ned?
I assume you do know that you can file provisionals in any language and get a US filing date that is good even for prior art purposes.
Filing PCT is not filing in US to the extent that a patent is pending in the USPTO that can issue but for US patent office delays. That requirement was the essence of why the US Supreme Court required US patent applications to have a prior art (deemed published) effect as of their US filing dates.
I hope you can see, the essential requirement for prior art effect is pendency of an application in the USPTO. Priority is an entirely different matter.
Now, as to PCTs. The US specifically reserved the right to treat the prior art effect of PCT applications according to its own law. The US is not violating either the Paris convention or the PCT Treaty in according priority only effect to PCT or foreign patent applications.
Yeah, sure. Asking someone to write in a foreign language when the other can use its mothertongue —> treating both of them alike.
American exceptionalism much?
Obviously, correction, you have no idea what you are talking about.
There is no disagreement.
There is no argument on this point.
It is what it is.
Then, correction, educate us, why does the PTO disagree if there is no question?
“But, if you subsequently file PCT and then file US or enter the national stage, whether that provisional’s filing date is the effective prior art date is open to question.”
No. It is not open to question.
Thanks Ned. I agree with you, that one’s 103(e) date “should not depend” on these things.
That’s not the point at all. It has to do with whether the effective prior art date is the date of the earlier US application to which a PCT claims priority. I know you folks in Europe have said that filing a provisional in the US is your preferred Hilmer dodge on prior art (it can be filed in German, for example). But, if you subsequently file PCT and then file US or enter the national stage, whether that provisional’s filing date is the effective prior art date is open to question. The answer should not depend upon whether the PCT was published in English or not, or whether the US stage is entered directly or indirectly through a continuation.
Thank you Ned. Your summary, together with Cy’s last reply (“Yawn”) to my similar summary, finger the significance of Hilmer.
As to the PCT point, I will look again at the Apple thread, but I had thought the national v. continuation point had been appreciated for very many years already.
Max, if both parties get out of the PTO unscathed, it is my experience that neither will sue each other for infringement or for an interference. The public as well has to pay/license both because they too do not know who invented first. The PTO has no way of revoking one against the other without an interference.
So, Hilmer does cause a problem, but it is not the same problem you expected. It allows two apparently valid patents on an invention that can only be resolved by an interference that neither party will provoke.
Also, check the Apple thread for something on the prior art effect of patents claiming from or through a PCT to an earlier-filed US application or provisional.
Yawn.
Now we’re done, Max.
Well that’s a comfort for A, I must say. An invitation to bankroll top drawer outside counsel 20 years long (Cooper/Goldfarb) to play Russian Roulette with your head? No wonder interferences are so rare.
Meanwhile, what recourse does every other person in the world have, faced with two established players both in possession of enforceable patents on the same invention? For some reason, the words “patent thicket” spring to mind.
But now I think we really are through with this issue, don’t you?
…what we have now is the second to invent exactly the same invention holding a patent on that invention which is just as valid and enforceable as the patent issued to the quicker-thinking and more nimble rival who was first to invent and first to file (but just not within the USA).
Except that it’s not “just as valid and enforceable.” Your quick-thinking and nimble foreigner still has recourse to an interference proceeding under 35 USC 291.
Cy, you write about B, who conceived later, reduced to practice later and filed later, but was earlier into the USPTO, that:
“I don’t believe there are any rejections available to the examiner in B’s case”.
In my scenario, A and B were both German, and B jumped the queue in the USPTO. But what I really had in mind was a situation in which A and B are competitive and successful world-wide rivals, A invents in a Paris Member State other than the USA, while B does his inventing within the USA. Each is diligent, and each is equally quick from conception to constructive reduction to practice.
Corporations these days need a pile of issued patents to have “something to trade”. So, best if Johnny Foreigner gets no US patent at all but, if America can’t find any reason not duly to issue him with one, then the next best thing for America is duly to issue his slower US competitor with one to match.
You also write: “The good news is that the present situation, in which most potential interferences aren’t even noticed, gets us to about the same place.”
in which, I suppose, the key word is “about” in that an interference leaves a winner and a loser, whereas what we have now is the second to invent exactly the same invention holding a patent on that invention which is just as valid and enforceable as the patent issued to the quicker-thinking and more nimble rival who was first to invent and first to file (but just not within the USA).
My admiration of the thinking behind the Hilmer Doctrine grows by the minute.
Give me a sample rejection in B’s application. Keep in mind, Hilmer II.
Ned, with all due respect, I’m happy to learn from a conversation, but please don’t quiz me like I’m your student.
As I said earlier, I’m no expert on interference practice. But, I don’t believe there are any rejections available to the examiner in B’s case, in this situation. He or she can, I believe, require the addition of an interfering claim under 37 CFR 41.202(c), but I expect that this is entirely discretionary. I understand that you find that to be a huge problem. It doesn’t concern me very much, for reasons I’ve given elsewhere in this thread.
Max was right. We’ve thrashed this one to death.
I much enjoyed your assessment that “In an ideal world” every one of these priority contest situations would go to interference proceedings.
You’ve misunderstood me – I can’t tell whether it’s intentional or not.
I said that in the ideal world, each potential interference issue would get raised. In that same ideal world, in the vast majority of incidents the junior party would assess the situation, realize that a full-blown priority contest is fruitless, and concede the claims. 37 CFR 41.202 already accounts for that.
The good news is that the present situation, in which most potential interferences aren’t even noticed, gets us to about the same place.
Got it (I think). Thanks Ned.
Very helpful Cy. Thanks again. Do I see it right? In practice, the PTO will be issuing both A and B with a patent on the same invention? Would you call that a win-win?
Incidentally, I much enjoyed your assessment that “In an ideal world” every one of these priority contest situations would go to interference proceedings. Bravo.
Huh?
From link to chicagoiplitigation.com
“Schultz v. iGPS Co. LLC, No. 10 C 71, Slip. Op. (N.D. Ill. Jan. 3, 2011) (Hibbler, Sen. J.)
Judge Hibbler granted in part defendant’s Fed. R. Civ. P. 15 motion to amend its affirmative defenses. The doctrine of assignor estoppel did not ban defendant’s invalidity and inequitable conduct defenses. An assignor is estopped from challenging the validity and enforceability of its assigned patent, but that estoppel is personal to the assignee. Because plaintiff was not the assignee, he had no right to assert estoppel. Furthermore, to determine whether defendants were in privity with the assignor would require facts beyond the complaint and was, therefore, not resolvable in a motion to dismiss.”
Personal? Sounds like the DC treated legal estoppel as equitable estoppel.
Cy: “B’s application gets flagged.”
There’s the problem in a nutshell.
Give me a sample rejection in B’s application. Keep in mind, Hilmer II.
Cy, yes I know the PTO usually lets the parties fight it out outside the PTO as IF it really did not matter to the public that two rival entities have obtained a patent on the same subject matter.
But it does matter.
There is a well known recent case where two major computer companies independently patented the same invention that became widely used as the preferred compression technique. Both companies licensed their respective patents. Many companies paid royalties to one company even though they already held a license under the other company’s patent.
The problem existed during the entire life of both patents, yet neither patentee chose to resolve the situation through an interference. They were content to hold the royalties below the threshold level of pain that would justify a DJ action. But, if the only defense is that the patented invention was invented first by a third party, how is an accused infringer supposed to know the answer to that question in advance so that they could even properly allege it in a pleading?
I would argue that such cavalier disregard of the public interest has to be condemned.
What indeed should the Examiner do, who is examining A’s PTO filing, finds himself looking at B’s earlier USPTO filing on the same invention, thinks about a 102(e) novelty objection, but then notices that A has the earlier priority filing date, on the same invention.
My opinion? Once he’s established the validity of A’s priority, he should probably do nothing, other than issuing a notice of allowance. In an ideal world, B’s application gets flagged so that the examiner in that case requires a new claim to provoke an interference (under 37 CFR 41.202) and/or demands evidence of priority to beat A’s already established priority date. If B wants to fight it out and comply, then we have an interference. If B knows he’s going to lose, he can concede and all this messiness is avoided.
As noted below, I doubt Ping is Patent Hawk.
It would “bring the chuckles” though if Ping’s absence is because Patent Hawk has retained Ping…
Mine at 4:50 was posted without seeing Cy’s at 5:05.
I think I see now. The PTO ought not to give A a patent without first finding out if B invented first.
Given that interferences are almost as rare as hens’ teeth, I think I now see the teeth in Ned’s earlier question to Cy. What indeed should the Examiner do, who is examining A’s PTO filing, finds himself looking at B’s earlier USPTO filing on the same invention, thinks about a 102(e) novelty objection, but then notices that A has the earlier priority filing date, on the same invention.
Come to think of it, when did 6 last check in? And is Malcolm Mooney interested enough to chip in?
Ned, Cy, please help me here because I’m still confused.
With my scenario, I had tried to shut out all extraneous complications like “diligence”. Thus, the stimulus for the act of conception comes from a Paper read at a conference just a few days before A and B file their respective enabling disclosures on substantially the SAME INVENTION. This is NOT, by the way, a rare event.
Perhaps I should have included an extra fact, that the respective filings of both Herr Dr A and Frau Dr B at the USPTO contain nothing additional to the technical and legal content of the respective German national priority filings.
Now, Ned, at 4:19pm, you tell me that the PTO cannot issue Herr A with a patent, even though he was first to conceive, diligent, first to reduce to practice and first, under Paris, to file. Why is that then?
Cy, your advice was, I had thought, precisely the opposite from what Ned advises. Are you standing by that advice, or do you now want to recant?
And where, BTW, is anonymous in all of this?
“I am not paid to know US patent law. Learning about it on this blog is a hobby of mine.”
I would suggest a more rigorous learning experience. Learning from a blog such as this, you are bound to learn the wrong things more often than not. You will then have to unlearn positions you should not have learned in the first place.
Even for a hobby – if this is related to your vocation, you deserve better.
…the PTO cannot issue him the patent, can it?
Ned, I think you sometimes get “cannot” and “preferably should not” confused. I’ve certainly seen the PTO issue multiple patents covering the same essential subject matter. This issue doesn’t arise only in the case where foreign priorities are involved.
Of course, the chances of two applicants submitting identical claims are pretty slim, unless something very unusual is going on. I appreciate that PTO examiners can provoke an interference where claims are very similar. But it’s clearly impractical to expect the PTO to seek out potential interference contests. It’s an infrequent enough occurence that it’s just not worth it. Besides, there’s not much harm to the public, is there? If the applicants don’t notice while the patents are pending, then let them fight it out later in court, if either still cares.
Cy, if A is overcoming art that is not disclosing and claiming the same invention, the assertion of his priority date should be sufficient for him to get the patent without further ado.
But if he is claiming the same invention both disclosed and claimed in the reference, the PTO cannot issue him the patent, can it?
Cy, accepted.
If I am difficult to follow, that is my fault. I will try to be more careful in the future.
Sorry, Ned, I really thought you were changing the scenario. You’re more than a bit difficult to keep up with, at times.
No offense meant, Ned. A rejection under 102(e) simply wouldn’t be appropriate, given the priority claims. I don’t pretend to be an expert on interference practice, but I believe there are circumstances under which an examiner can provoke an interference, but that gets you way out of the realm of 102(e). I believe the examiner can also require an applicant to prove that he has a priority date earlier than his priority filing, but that applies only when somebody else’s apparent date for constructive reduction-to-practice is earlier than the application at issue. That wouldn’t apply to A.
As far as I can tell, A should have no problems here, having the apparent earliest priority, until and unless an interference is provoked from the B application. Right? Wrong?
Max, the problem is that both applications are disclosing and claiming the same invention and neither is a statutory bar to the other. Under any scenario, these two applications will have to be thrown into an interference where the party having the earlier filing date is, on motion, granted senior party status.
But that does not end it. Both parties have the right to prove prior invention dates. Here, A wins as well everything else being equal, as he was the first to conceive and I presume, given the facts, was diligent to filing an application in Germany.
But that depends upon proof of earlier conception and diligence, which is not a piece of cake. So, solely based on the facts disclosed here, the answer is not determinable.
Cy, I could be polite, by what the heck.
Go f yourself, a hole.
Cy, w t f are “you” talking about then?
The facts are that in the A application the examiner rejects over B. You said, that A can overcome the rejection by relying on his priority date.
I simply pointed out that he cannot given all the other facts here in that the two patent applications are disclosing and claiming the same invention.
Ned likes to change the facts, Max, in a never-ending Socratic pursuit of virtue.
I don’t know what you’re talking about, Ned. I thought we agreed that in Max’s scenario, there is no rejection. Are you changing the story so that A does not claim priority to his German application? If so, then I’ll take your word for it.
I thought it all so simple, and reassuring. Presented with the priority date claimed by A, earlier than B’s 102 (e) date, PTO Examiner immediately issues A with a patent, for being the First to Invent. But Ned says not. Yet again, I don’t understand. Help.
He cannot accept the proffer in either case, lest he allow a second patent on the same invention. He must deny the request, and suggest an interference where the issue of support in the priority document will be the first issued decided. If there is support, A is accorded senior party status.
In either case, the party who wins normally is the senior party. But, given the facts here, either A or B might win. It depends upon who can prove prior conception.
Sorry, Ned, but I find your “Socratic” method to be tiresome. If you’ve got something intelligent to say, then out with it.
Ned, I read Cy and thought “That settles it. I am all wet. Many thanks Cy.”. But then you posed your question, Ned, and it surprised me. What’s the answer Cy (or Ned)?
Max, one of the problems the new statute is trying to fix is the Hilmer “problem” for non US inventions. Harmonization, after all, is all about giving equal rights to non US inventions. Smoothes international business, and all that. Removes roadblocks caused by two patents on the same invention held by two different entities in two different countries. Real problem for international businesses.
I am not paid to know US patent law. Learning about it on this blog is a hobby of mine. Generally, I find it effective to be provocative (as in this thread).
As for tools, they are reckoned to be useful things. I like to think that my US corporate clients find me a useful tool, when it comes to unlocking issues in Europe. I am convinced that the experience I am gaining on this blog makes me ever more effective. And you? Are you a tool too?
Cy,
1) Assume A relies on his prior invention by referencing his priority application, what is the examiner supposed to do next in the A prosecution?
2) Clue, assume A files a Rule 1.131 affidavit, relying on his disclosure in his prior application as a constructive reduction to practice and with his earlier conception in Germany?
Should what the examiner does be different?
I agree with Cy below. A can rely on his earlier priority date.
Now, let’s throw Cy a question an see if he knows the answer.
“I tried “Hilmer Doctrine” in Wikipedia. Null result. So then I Googled it and found Kate Murashige’s 1993 John Marshall Law Review paper.”
Only now you are actually researching the “Hilmer Doctrine”, after all your “wet noodle” proclamations?
What a tool.
A’s application is finally rejected under 35USC102(e) and duly lapses.
I don’t think that’s right, Max, assuming A properly claimed priority to the German application. The 102(e) date for B’s published application is it’s actual filing date in the U.S., which is well after the priority date for A’s application.
Look very carefully at the language of 102(e)(1). It compares the filing date, in the U.S., of the reference document, to the date of invention for the application at issue. Herr Dr. A gets full credit for his Paris date here – indeed, he could even get an earlier date if he could show reduction to practice before the German filing.
Unless I’m missing something, if this is the basis of your complaint about 102(e), then you’re all wet.
Stung by “anonymous” in the “Responding…” thread, I tried “Hilmer Doctrine” in Wikipedia. Null result. So then I Googled it and found Kate Murashige’s 1993 John Marshall Law Review paper.
Consider two inventors in Germany, Herr Dr. A and Frau Dr. B. They both attend a key presentation at an intermational medical devices conference. While listening, A conceives an invention.
A week later, Frau B is explaining to a colleague what she heard at the conference the previous week. That prompts her to conceive the same invention as A conceived, a week earlier.
Independently of each other, both write an enabling disclosure, which is then professionally and competently polished by their respective patent attorneys. Each files, independently of the other, at the German Patent Office, in German, exactly two weeks after their respective acts of conception.
Near the end of the Paris priority year, B’s patent attorney is going on a long vacation (as German patent attorneys do, don’t you know). This is to the great good fortune of B, because her patent attorney acts in advance, and gets her order letter away much earlier than A does, to the patent firm in the USA who will file at the USPTO. Under 102(e), B’s early US filing denies A any patent rights in the USA, even though A was first to invent and first to file. A’s application is finally rejected under 35USC102(e) and duly lapses.
Can B (second to invent, and second to file) still get a patent in the USA? What stands in the way?
I understand that in any enactment of the Senate version of 102, Hilmer becomes moot. But when? At least twenty more years of the Hilmer Doctrine, I suppose.
I am A. Under the Paris Convention, by virtue of my “first filing in a Paris Convention country” I enjoy a “right of priority”, also in the USA. In other words, I am entitled to deference. 35USC102(e) deprives me of the deference that is my right. I was prior to B in conception, reduction to practice and filing at a Paris Convention patent office. But nevertheless, I get no patent in the USA. If anybody does, it is B, who invented later than me, reduced to practice later than me, and filed her first application for patent protection later than me. No wonder Jones Day characterizes the Hilmer Doctrine as “infamous”.
Ned, there is no dispute that your 102(e) date depends on where you file the application that gives you the 102(e) date that your USPTO publication exhibits. So far so good.
Now you and others say that the prior art effect of a publication by the USPTO is not governed by the Paris Convention. OK, I see the point but think (for the following reason) it is irrelevant.
You ask: “Explain to me, Max, how this is in any way different from the way it works in Europe where the first filed application cannot be used for inventive step purposes against second filed applications?” I will explain.
Article 54(3) EPC is the tool for deciding, between rival Applicants at the EPO for the very same invention, who gets the European patent ie a priority contest. You have to have two rival cases both at the EPO before you have a contest. But, in any such contest, the country each contestant comes from is not a factor.
So too, nowadays, with interference contests in your country (but you are old enough to remember when that was not the case, and inventor logbooks from ROW were of no effect).
You (thinking all the time of 103 issues) categorize 102(e) as prior art and decide priority on a First to Invent basis. I (looking through my 102 spectacles) see it as a tool for deciding in a First to File jurisdiction…wait for it… priority.
So, Ned, summing up, I expect, once the USA moves to First Inventor to FILE (as opposed to INVENT), there will be fresh impetus to bring Hilmer doctrine come up for scrutiny at the WTC.
Thanks to you and everybody else who has been trying so hard to educate me.
Many thanks Ned for “It is high time we Americans stopped apologizing for Hilmer”.
Methinks some people in the thread above are like the lady in Shakespeare that “doth protest too much” but that’s just my wishful thinking.
Let’s “move on”, shall we?
“The sense of Paris is that a filing in one country shall have the same priority effect as the filing of the same disclosure at the Patent Office of any other Convention country”
No it does not.
You never answered my earlier post, So I reprint it here:
“Patrick Henry said in reply to MaxDrei…
too…?
The rights are what exactly in each country? Or do you think it possible for a country to give rights in that country that are not actually available?
Do you know what sovereignty means?
Reply May 15, 2011 at 05:19 PM ”
A country cannot give rights within its borders that it does not have.
Simply impossible.
Your sense of “Universalism” betrays your lack of understanding of sovereignty.
You are chasing an issue that does not exist.
Max, what I find utterly remarkable in your thinking is this:
That the meaning and effect of priority changes depending upon country of claimed benefit.
Anybody landing on this planet for the first time would sincerely question the whole concept that the meaning of the term would vary by country of effect.
Priority is priority. It has a well understood meaning. It has nothing to do with prior art. Nothing. Nada. Nil. It has nothing to do with inventive step. It has nothing to do with obviousness. It merely gives a right of priority to a claimed invention to the first filer of a patent application.
Now the right of priority also does not tell anyone that the disclosure of a patent application must be given effect regardless of national requirements of utility, of written description, of enablement, of best mode, of the presence or claims, etc. The right of priority does not require mininum or maximum treatment of these issues. The right of priority says nothing about them.
The right of priority additionally says nothing about whether the patent application can defeat subsequent filings by others of different inventions. Nothing at all. But that is the very right you guys in Europe are claiming by asserting that patents have prior art effect as of their foreign priority dates.
This is all just a bit much, Max. You think we discriminate when we do not. Your accusations are wrong and have been wrong since the days of Hilmer. It is high time we Americans stopped apologizing for Hilmer and stopped trying to fix it with “reform” legislation. There is nothing wrong with Hilmer at all.
Even wise folk note that if we go to FTF, we need to limit the effect of patent applications to novelty only effects. But that is the effect we give patents today as of their foreign priority dates. The real problem, if anything, is the use of any patents to be effective from their filing dates for Section 103 purposes. That, my kind friends, was a serious mistake. If we fix anything, let’s fix that.
Cy writes of the Paris Convention “It doesn’t say anything about the effect of your priority filings on other applicants. ”
Hooray. Now we are on point. swords and shields, as I said earlier. I say that Paris Art 4 establishes ” right of priority” simpliciter. Cy then “cabins and confines” (to use an expression beloved of another frequent contributer) that priority right, to neuter the priority effect under 102(e), when the priority filing is at any other than the US PTO.
The sense of Paris is that a filing in one country shall have the same priority effect as the filing of the same disclosure at the Patent Office of any other Convention country. Hilmer denies that priority right.
Hilmer has been debated for decades, using the swords and shields argument now acknowledged by CyNical. I was just curious to see what contributers here had to say on the issue. I know that now.
Subtlety and humor have no place here.
I am a bit too subtle for this crowd.
“The root word you’re looking for is “wave,” not “waive.” ”
No, that would miss my pun on “waive”, as in:
1. to refrain from claiming or insisting on; give up; forgo: to waive one’s right; to waive one’s rank; to waive honors.
2. Law . to relinquish (a known right, interest, etc.) intentionally.
MaxDrei has intentionally not answered my argument and insists on going around in circles, only too happy to note that he is going around in circles.
Perhaps on the third go-around we will see an answer from MaxDrei.
Pedantic on pedantic – touché
Max, what they understand is that one needs to
1) Publish the foreign application on filing.
2) File PCT, but publish in English.
3) File a US provisional.
to obtain full prior art effect. Now that is an entirely difference kettle of fish entire than whether the US is in violation of the Paris Convention.
Max, 102(e) is the prior art date of a reference. As such, the reference itself is combinable with other references under Section 102.
However, and I have attempted to patiently explain to you the difference, the priority date prevents others from obtaining a patent on the same invention if their own priority date (including invention dates) is later. All priority dates are treated the same regardless of origin. There is no discrimination. The Paris Convention does not require that patent applications be treated for full inventive step purposes against other patents as of their priority dates, now does it? The US is in full compliance with the Paris Convention.
“even if there is no real issue at all”
Fixed.
Brilliant answer Cy. I laughed out loud. As to the rest, I’m bored. The Hilmer 102(e) issue has troubled for years those who file their priority application in a language other than English and then enter the USPTO (and the JPO and the EPO and the China) at the end of the Paris year. Those US patent law firms who routinely act for alien applicants understand the issue, even if some here don’t.
Paris did not set out to make everybody file on their first prio date in every language under the sun. Or did it Minds?
Paris also did not set out to define the scope of the prior art. This is precisely where you’re off track with the Paris argument. Paris defines
your
right of priority, with respect to getting the claims that you ask for in your various national applications, in the face of your own later acts or acts by others. It doesn’t say anything about the effect of your priority filings on other applicants. There is no symmetry requirement in Paris.
Either “hand-waiving” or “handwaiving,” please stop and address the substance of Article 2.
Uh, I think you might have missed Max’s point. The root word you’re looking for is “wave,” not “waive.” Hand-waiving is what you’re doing when you steal something very valuable in certain very strict, fundamentalist communities.
Talk about being pedantic:
Either “hand-waiving” or “handwaiving,” please stop and address the substance of Article 2.
Ned, you write: “They should never allow the patent having the earlier US filing date to issue in the face of another application disclosing the same invention that has an earlier foreign priority date”. I agree. But what is the 102(e) date if that foreign filing date comes into the USPTO as the national phase of a PCT filed in a language other than English? You think it is the foreign prio date and I think it is the date of arrival of the English language text in the USPTO.
Henry Ford, and Henry Hilmer: any language you like, as long as it’s Chinese, oops, English.
Paris did not set out to make everybody file on their first prio date in every language under the sun. Or did it Minds?
BTW, does everybody in the USA spell “hand-waving” as “handwaiving”? or is it only ping and Minds?
MaxDrei,
Your ignorance of sovereignty is showing again.
Usually when there’s complaining about “discrimination” in the context of Paris, the issue is Article 2, which is of course about national treatment. I see elsewhere in the thread that you’re not talking about Article 2. If that’s the case, then I suggest that “discrimination” is a poor way to describe your complaint – other than the Article 2 and 3 requirements with regard to national treatment, I don’t think Paris prohibits discrimination between differently situated persons or applications.
Article 4, section B, spells out precisely what the “right of priority” means. Which aspect of Article 4 does 102(e) violate?
MaxDrei,
It was I that introduced Art 2.
You are handwaiving that Article away and merely proclaiming that it is not relevant. This is your critical error, and this is precisly why we are “repeating ourselves endlessly.” We do not need anyone else – we need you to stop handwaiving something away merely because it does not fit your argument. It is as simple as that. Perhaps you can show your reasoning for dismissing the part of the Paris Convention and we can make some progress in our discussion rather than repeat ourselves.
Once again as I said above: the ball is in your court.
Max, there is no discrimination regardless of how much you attempt to create an issue. Paris Convention requires priority be accorded and it requires there be no discrimination. There is none.
Events taking place solely in the US are another matter and are of domestic concern only. The statutes lay them out. Knowledge, on sale, use, invention all have to be in the US. These are the elements of prior art.
A US patent is prior art as of its filing date in the US. This is consistent with domestic prior art law, not inconsistent.
On the other hand, the first to file will and should obtain the patent. To the extent that the PTO does not search foreign applications for same invention type “prior art,” they are derelict in their duties, IMHO. They should never allow two patents to issue on the same invention. They should never allow the patent having the earlier US filing date to issue in the face of another application disclosing the same invention that has an earlier foreign priority date.
The problem is not with the US laws, but with the PTO.
It it Paris Article 4, the positive “right of priority” I am constantly citing. I think Paris means here what it says here. Somebody else above introduced Art 2 of Paris, I think it is not relevant. Of course you must file a translation of the priority document. In Europe we know all about different languages for different countries.
Thanks Cy. Much appreciated. But it was news to me that Paris is all about nationality. Where do you derive that from then?
As you say, few if any within the USA see Hilmer as violating Paris. But wait till another country implements Hilmer. Then see how much the USA likes being done by as it does to others.
The Golden Rule used to be “Do as you would be done by” but in its more modern form it goes “Don’t do to others what you would not like them to do to you”.
People outside the USA think that the Hilmer interpretation of 35 USC 102(e) discriminates against everybody who creates priority dates at Patent Offices other than the USPTO. What if every other country behaved like the USA? It defeats the purpose of the Paris Convention.
Even if everything in your comment is correct, I still don’t see any actual violation of the Paris Convention. Article 2 doesn’t prohibit discrimination based on how or where the priority document was filed. It prohibits discrimation against foreign nationals. Because the German applicant is treated just like a US applicant with respect to 102(e), there is no violation.
If you’ve got a problem with Hilmer, you’re not going to fix it via Paris.
Max, you’re going to have to understand that even Americans do not fully agree that a patent should be “prior art” as of its filing date. As you, and others perhaps, have pointed out, even Europe does not consider patents to have a full prior art effect as of their filing dates.
The theory that the United States patent application is prior art as of its filing date is that, but for the delays of the patent office, they could have issued in the United States on the day they were filed. Obviously, this cannot be true until one actually files a patent application in the United States Patent Office. Therefore the very theory upon which patent applications are prior art does not exist for foreign applications.
On the other hand, for its entire history the filing of US patent application has given the owner of the patent application “priority.” This priority helps determine which of two rival applicants to the same invention should be accorded the patent.
Because United States gives foreign-filed patent applications priority effective to the same extent priority is effective for a United States patent application, there is no discrimination. The first-to-file gets the patent to the invention, absent proof of prior invention by the second applicant.
What you have why seem to misunderstand is that your priority reserves for the non-US application the right to obtain a patent to the disclosed and claimed invention over earlier-filed United States patent applications. From my understanding of European law, this is exactly what the European law also gives the first-filer in Europe.
If you want more, if you want your patent application to be prior art in the United States, published it on the date it is filed in Europe. Perhaps you folks could develop something as strenuous as a checkmark on a form that would waive all privacy on a European patent application allowing it to be considered laid open the day it was filed. This would make the European patent application prior art in the United States on the day it was filed in Europe regardless of the language.
And as you note, you can always file that European application in the United States as a provisional if you want later §102(e) effect.
Minds, you and I are repeating ourselves endlessly. We need help from another, perhaps IANAE. It is well-known that a 102(e) blocking effect on the later filings of your competitor at the USPTO can arise from your own earlier filings at the USPTO but NOT if you arive in the USPTO at the end of the Paris year declaring priority, and your earlier filing event (earlier than the other fellow) is in another language at another Patent Office.
People outside the USA think that the Hilmer interpretation of 35 USC 102(e) discriminates against everybody who creates priority dates at Patent Offices other than the USPTO. What if every other country behaved like the USA? It defeats the purpose of the Paris Convention.
Ned Heller says “What are you whingeing about. You can set up an interference”. Doesn’t cure the discrimination though, does it Ned?
MaxDrei,
I have already replied to your point, and further asked you to provide some specificity to your claim that the Hilmer doctrine violates the participation of the US in the Paris Union.
The ball is in your court to do more than merely say that it violates.
I believe that my Article 2 comment quashes your generic Article 4 comment. The club of Paris only means that you have to play by each members’ home rules. Everyone has to play by the Hilmer doctrine – no exceptions. I just do not see the wrong you claim. Please help.
Would Ned Heller or Enquiring Minds care to reply to my point, that the USA (by the Hilmer Doctrine) is in breach of the provisions of the Paris Convention? I am curious to have a reasoned reconciliation of Hilmer and membership of the Paris Union.
Fly and I are going on about what 102(e) date one gets, to block the progress that one’s later-filing competitors are making, through the USPTO, to issue. Hilmer says, it depends where you file your priority filing, what 102(e) date you get.
It is the swords and shields point, Ned. Fly and I say Paris applies to both, but Hilmer says it only works for swords. Why that then?
But if you sign up to Paris you agree to give to a German filing in Germany the same rights as if he had filed instead at the USPTO, in English.
That’s not at all what Article 2 says. Article 2 says that US law has to treat a German national at least as well as it treats US nationals. Interestingly, it is allowed to give German nationals more favorable treatment, but not less.
Your identified “discrimination agains those who rely on a priority date not at the USPTO” is not based on the nationality of the applicant, even if it tends to impact foreigners more than US nationals. You might note that inventors in the US aren’t allowed to file a priority document abroad without first getting a foreign filing license. Unfair? Maybe, but life isn’t fair.
Oh I agree – “slinging” is something the Hawk enjoys (still).
But to be pedantic, I did say “wrestle,” not sling.