Patently-O Bits & Bytes by Lawrence Higgins

Although in the midst of final exams, Lawrence Higgins was still able to complete this week’s installment of Bits and Bytes – DC

Indiana University Maurer launches Center for IP Research

  • The Center for IP Research just launched and has named Mark Janis as the director of the center. The purpose of the center is support the study of all aspects of IP law and related fields. The center will promote a dialogue on IP law among scholars, judges, policymakers, practitioners and students. The center also has created an online journal titled IP Theory, which can be accessed through the site, or directly at [Link]

2 millionth PCT application filed

  • Qualcomm filed the 2 millionth PCT application near the end of April, marking a significant milestone. The PCT makes it easier for companies and inventors to seek patent rights in multiple countries. A single international patent application under the PCT has legal effect in all 142 countries bound by the treaty. The PCT system, first launched in 1978 and up until recent was mostly used by the US and Europe. However, in recent years Asia has accounted for the largest number of PCT applications. [Link]

Nortel patent bidding update

  • Nortel has set up a database with details about the patents that potential bidders can access after signing an agreement to keep the information confidential. Qualified bidders will be required to submit offers for the patent portfolio by June 13, to participate in the June 20 auction according to the bidding rules. [Link] The next bidder must at least make a $929 million dollar bid, to outbid Google’s $900 million dollar offer. [Link]

Patent Jobs:

  • Ballard Spahr is looking for a patent attorney with 2-5 years of experience to work in their Atlanta office. [Link]
  • Ventana Medical Systems is seeking a patent attorney with at least 8 years of experience. [Link]
  • Klarquist Sparkman is searching for an IP litigation attorney with 1-2 years of experience to work in their Portland office. [Link]
  • University of Notre Dame Law School is seeking a Director of IP and Entrepreneurship Clinic. [Link]

Upcoming Events:

  • The 3rd Annual Corporate IP Counsel Forum will be held May 24-25 in New York. The Corporate IP Counsel Summit is the premier forum to hear about solutions to maximize IP assets, avoid costly litigation, create and maintain efficient infrastructure, fully integrate IP strategies into business plans, prepare for anticipated patent law changes, and much more. Guest speakers include Michael Bishop, Mony Ghose, Mark Costello, Michael Springs, Charles Kwalwasser, and Timothy Wilson. Patently-O readers will receive a $100 discount by using promo code FZA884. [Link]
  • The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
  • American University Washington College of Law will host the first annual Global Congress on Public Interest Intellectual Property August 25-27 in Washington DC. The Global Congress on Public Interest Intellectual Property will serve as a site for the sharing of research, ideas and policy proposals for how international intellectual property law should be constructed to better protect the full range of global public interest concerns. [Link]


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28 thoughts on “Patently-O Bits & Bytes by Lawrence Higgins

  1. 27

    Max, there has always been a lot of hostility to 102(e) and the whole issue of secret prior art. If we go to FITF, that hostility will only increase. One way to limit the damage is to require that the subject matter forming the basis of the prior art rejection itself be claimed, overruling that aspect of Milburn and Hazeltine, which represent the whole contents view.

  2. 26

    ANL, yes, that’s part of it.

    Also, abandoned applications to which no priority is claimed (or possible for any reason) are not prior art until they are referenced in an issued patent or publication.

    Provisionals are like abandoned applications in this respect.

    In other respects, they are treated like CIPs.

  3. 25


    I know it is a bit confusing, but doesn’t the MPEP address this at 901.01 Canceled Matter in U.S. Patent Files?

    Canceled matter in the application file of a U.S. patent >or U.S. application publication< is not a proper reference as of the filing date under 35 U.S.C. 102(e). See Ex parte Stalego, 154 USPQ 52, 53 (Bd. App. 1966). However, matter canceled from the application file wrapper of a U.S. patent >or U.S. application publication< may be used as prior art as of the patent *>or publication date, respectively,< in that it then constitutes prior public knowledge under 35 U.S.C. 102(a). In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967). See also MPEP § 2127 and § 2136.02.

    The arguments you address are addresses therein.

  4. 24

    Isn’t this analogous to the pre-publication days when an as yet nonpublished application could have a child application, redacted in parts, and the child survive and the parent go abandoned?

    Ned, what was done then?

  5. 23


    I had hoped that my last paragraph would also sound to your unease. Yes, by being sloppy, the door is opened to the Feds to misinterpret, or reinterpret as the case may be.

    That notwithstanding, I believe that there is too much law (legislative and case) that points out that “patent” really means “allowed claims” and that “allowed claims” is what really are at issue. Using a short-cut for “allowed claims” then, does constrain the damage in this discussion. Although I will readily admit that my enthusiam for this position is not very high when I further consider that it is usaully well understood that “invention disclosed” is different than “allowed claims” and that there will be those that confuse “patent” in the sense I outlined above with the true total “patent”.

    The difference as I see it, and this is only my opinion, is that true total “patent” includes any unclaimed material AND the subset of patent that is the “allowed claims”. The ribbon copy “patent”, the true patent, includes both “allowed claims” and other material that at least after two years post issue has been dedicated to the public. So in the sense of that two year period, “patent” and “allowed claims” are very much in flux and quite changeable.

    I do not have answers for this conundrum. It does seem against policy for understanding the limits of what a patent stands for to have this twoyear period of possible expansion, but I would at the same time be loath to take away from my clients this ability to correct mistakes made without deceptive intent.

  6. 22


  7. 21

    Thanks for driving the thread Ned. Back in the 1960’s, in Europe, the debate was over two rival concepts (“prior claiming” and “whole contents”) as to which should be the tool for testing the patentability of a claim, relative to earlier filings of overlapping subject matter at the same Patent Office. I have the feeling that the debate hasn’t really got going yet, your side of the Atlantic Ocean. Is there a respectable third way? I’m curious.

  8. 20

    Now consider the “but for delays” rationale with the following example:

    Provisional discloses A; non provisional AB, claiming AB, not A; continuation from non provisional claims A.

    What is the effective prior art date of A?

  9. 19

    Note: the CIP claims must be supported in the parent for the parent’s date to be the effective prior art date for all common disclosure.

  10. 18

    Cy, consider that a provisional discloses A, the patent AB. The claims in the patent are to AB, none to A.

    Can the PTO cite the disclosure of A against an application as of its disclosure date in the provisional?

    No — according to both In re Wertheim and In re Giacomini.

    Change the facts. The patent claims A. The answer changes to — yes.

  11. 17

    ANL, I do not share your cozy assumption that the Feds would not read the statute the way it is written to have implicitly overruled cases such as In re Wertheim, or a host of others. I say that because they have done so in many other cases where the statute was only intended to codify existing law, but is worded in a way that could be misinterpreted. So, misinterpret they did.

  12. 16

    What you are missing, Malcolm is this: That figure in the provisional does not appear in the patent. Simialrly, it would not appear in the PCT or any other publication.

    One could access the Figure only by getting a copy of it from the provisional itself. That became available to the public for the very first time when the patent issued, or the PCT was publish, as the case may be, where the provisional’s application number was published.

  13. 15

    Cy, “Whether the provisional supports Tran’s claims is irrelevant to the anticipation question. I’m pretty sure Judge Rader understands that.”

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

    Controlling authority: in Re Wertheim, 646 F.2d 527 (Fed. Cir. 1981)(en banc)

    Read more: link to

    “The dictum in Lund,[fn4] supra, that * * * the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application * * * for purposes of * * * utilizing the patent disclosure as evidence to defeat another’s right to a patent * * * [emphasis in original]

    is hereby modified to further include the requirement that the application, the filing date of which is needed to make a rejection, must disclose, pursuant to §§ 120/112, the invention claimed in the reference patent. Where continuation-in-part applications are involved, the logic of the Milburn holding as to secret prior art would otherwise be inapplicable. Without the presence of a patentable invention, no patent could issue “but for the delays of” the PTO.”

  14. 13

    Obviously, you do not understand the case or the law. You got it completely backwards. You up is really down.

    What counts is this:

    The subject matter of the patent is what is cited as a reference. That subject matter must be found in the provisional to have its date. But, not only that, for a proper priority claim, that subject matter must be disclosed in a manner provided by Section 112, p. 1. In addition, there are at least two Fed. Cir. cases that hold that the subject must be “claimed” in the patent claiming priority.

    The subject matter of the provisional has no prior art date at all and is not citable until published and its date of publication is the date the patent issues.

  15. 12

    Ned, your compassion is duly noted and appreciated, but I don’t think I need your pity, at least with regards to this topic.

    The first quotation I provided is a summary of the result, not a statement of law. The second one is a bit ambiguous, I grant you. However, if you read “the claimed invention” to mean Giacomini’s claimed invention, then I think it’s just fine (if you accept the court’s reading of 102(e)). To anticipate Giacomini’s claim, the provisional must fully support the features of the claim. Whether the provisional supports Tran’s claims is irrelevant to the anticipation question. I’m pretty sure Judge Rader understands that.

  16. 11

    Ned Under the law as I know it, that Figure from the provisional has an effective prior art date as of the date of publication of patent B, not as of the filing date of the provisional.

    Does anyone disagree?

    I do. If the Figure from a third party’s provisional application (subsequently published by virtue of a proper priority claim by a later-filed utility application, or a PCT application designating the US and filed after Nov. 2000) shows all the limitations of the claims at issue, then the claims are invalid unless the applicant can show he/she invented before the provisional filing date.

    What am I missing?

  17. 10

    Cy, then we will agree that the quoted sentence from In re Giacomini, that the EFF of the patent is the “claimed” priority date is not, and cannot be, and never has been, the law — except when one assumes a lot of other things are true. It is such sloppy “penmaship” by Rader and crew that gets all of us in a lot of trouble when we actually think their sloppy work, broadly pronouncing rules of law for the general case on narrow facts, is the law.

    If you actually think Rader’s summary of the law or statement of the law is correct, I pity you.

  18. 9

    You know, Cy, this kind of crazy misunderstanding of the law seems commonplace.

    I don’t know what you’re talking about, Ned. The Federal Circuit appears to understand your point perfectly. I quoted the court’s summary of the situation. However, the opinion further includes this in its discussion of the effective priority date of a reference under 102(e): “An important limitation is that the provisional application must provide written description support for the claimed invention.”

    I actually disagree with the court’s interpretation of 102(e), although I think its interpretation is defensible. But I’m quite sure it understands the concept that subject matter doesn’t get a priority date or a claim-defeating effective data before it is actually described.

  19. 7


    I agree with you on the claimed subject matter having the date of earliest claimed priority that is fully supported in the manner proscribed by law.

    I think that rather than a misunderstanding, the use of “the patent has the date” is a verbal shortcut. I do not think that such is a grevious error. Courts will still address the claims. Courts will still address the fact that different claims in the same patent can have different priority dates.

    In truth, I think the matter stems from the fact that a first nonprovisional patent application can actually be like a Continuation-in-Part.

    Much like a later application to the first nonprovisional patent application can be a Continuation or a Continuation-in-Part, either drawing antirely from the parent or adding new matter, the first nonprovisional patent application can draw entirely from the nonprovisional or can add new matter. As you say, only that which is drawn entirely obtains the benefit of the earlier date, that which does not only obtains the benefit of the later date.

    As for the draft statutes (both house and senate), I also agree that they are very sloppily written. In addressing the parameters of a legal topic with such a high criticality on words, the drafts are a major disappointment.

  20. 6

    You know, Cy, this kind of crazy misunderstanding of the law seems commonplace. Why even the draft statute repeats the error, stating that patents shall have an effective filing date as of their claimed priority date, or some such complete nonsense.

    You have no idea what complete havoc that will cause if it ever becomes law. I have mentioned it here before, many times, and I have not received even one reply post. It seems that people do not see the problem.

    Let me tell you this: patents do not have effective filing dates as of the date they claim priority. Patents do not have effective filing dates at all. Rather claimed subject matter has an effective filing date as of the earliest claimed priority date to which that subject matter is fully supported in a manner described by Section 112, p. 1. IF the supporting disclosure is insufficient, the claimed subject matter does not have that date. The cases have been this way for two hundred years!!!! for gods sake and still people don’t seem to understand it.

    Likewise, subject matter in a patent has an effective prior art date that matches that subject matter’s effective filing date. The two concepts go hand in hand. Do not skip a step.

  21. 5

    Max, yes we have, and with massive disagreement on all sides. Clearly, In re Giacomini either was written in a way that people do not understand or is so inconsistent with prevailing law as to be disbelieved.

    Regardless, I made the argument based on my understanding of the case and it prevailed.

    BTW, examiners here, if one makes a legal argument about prior art, do the exmainer run it by legal before agreeing with it?

  22. 4

    I hope to see more comments, on this interesting issue, what is the effective date of the disclosure content of the provisional that would prejudice the validity of the claim, but only if it is given the earlier of the two relevant dates, namely, a) the filing date of the provisional, and b) the publication date of the US patent application (or patent) that declares as its priority document?

    But haven’t we been down this road already, Ned?

  23. 3

    Yes. The Federal Circuit disagree, as of In re Giacomini.

    “Because the Tran patent has a patent-defeating effect as of the filing date of the provisional application to which it claims priority and which was filed before Giacomini’s application, this court affirms.”

  24. 2

    All, we discussed in earlier threads Section 102(e) and provisional applications. I recently had a “situation” where a patent was cited against an application where the cited disclosure did not appear in the provisional. I cited this lack of disclosure and In re Giacomini, contending the examiner had not made a prima facie case that the patent was entitled to an effective priority/filing date as of the filing date of the provisional with respect to the cited subject matter.

    The examiner has withdrawn the rejection without comment.

    Seems right.

    However, the examiner had previously indicated that the subject matter disclosed in the provisional could be cited against the claims. I was going to confront him/her if he did make such a rejection, but he/she did not.

    Question: how would the examiner make such a rejection if he/she could? Which statute?

    Claim 1 is rejected under XXXX statute over patent A, in view of Fig 1 and its related discussion appearing at page 3, from us 60/999,999, referenced in US patent B, B being filed after the effective filing date of claim 1.


    Under the law as I know it, that Figure from the provisional has an effective prior art date as of the date of publication of patent B, not as of the filing date of the provisional.

    Does anyone disagree?

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