The ABA Journal has again chosen Patently-O as one of the top-100 legal blogs along with Gene & Renee Quinn's IP Watchdog and Evan Brown's Internet Cases. This is the fifth year that the ABA Journal has published this list, and Patently-O has made the list each and every year.
We've made a number of major improvements to Patently-O's coverage over the past year. Most notably, Professor Jason Rantanen is now a co-author, Lawrence Higgins is covering Bits and Bytes, and we have published a number of excellent guest posts both on the blog and in the associated short form Law Journal. Ryan Swarts is managing the Patently-O Job Board and he reports that we've had more job postings the past year than ever before (36 last month) and more readers as well (500,000 page views).
Some Stats: During the past year there have been more than 700,000 unique visitors to the Patently-O website and the vast majority of visits are return-visits. In addition, these days well over 20,000 patent law professionals receive Patently-O through a free daily e-mail service.
We have several projects that we hope to implement over course of the next few months. Most importantly, we'll be rolling-out a complete of the site on a new blogging platform that allows for better control of comments through moderation and comment-ranking as well as easier navigation through the site archives and a high quality mobile version of the site. We're also talking with several potential regular contributors who could provide additional case studies on patent prosecution, litigation, examination and licensing. As always, please let me know if you have concerns or ideas for the site. dcrouch@patentlyo.com.
How can you help: In addition to the top-100 list, the ABA is also holding a popularity contest. I would appreciate your vote in the IP Law Category. To vote, you have to register but you don't have to provide the ABA with actual identifying information. VOTE HERE.
Thanks again!
Dennis
Now that I am free I can cross that bridge that was not available to me because of the keeper of the Box. A Bridge I said no too. That of course is why I was kept in the box. And why my Computer was void of the necessary information, which honestly was to far afield in Power. Nor was I able to get any Lawyer to help because of the keeper of the Box. 3 Computers later……
Is training the first or last word in the phrase?
Thank You
The given Information on your blog is very useful.
Visit :-Best Seo training
Thanks for defending my “rationality,” anon. At least I try express “rational opinions.” And I take no offense at others (including MM) disagreeing with my opinions; they are, after all, opinions, that’s what free expression is about.
There are many points lost on MM. That’s also true of many in the left wing secular Borg Collective. Sad indeed.
Thanks MM. I’ll try to stay warm, as well as avoid tha “yellow snow”!
Get away. Well I never. I would never have guessed. Now you mention the possibility though…..
Have you been following the vote counting in Russia. Prolonged rounds of acclamation, for the boundless creativity of those who were seeking a particular result.
Whereas for my part I was amused to read that Malcolm has “an obvious penchant” for the fellow (at the same time as, deep down, he h_ates him).
Watch out Malcolm, they can look into your soul, and read you like a book.
Or was anon perhaps alluding to that “penchant” you obviously have for something else entirely?
OK, MM, I was stating the obvious. And do have a Merry Christmas/Happy Hanukkah, as well as Happy New Year, MM.
You too, EG! Try to stay warm and don’t eat the yellow snow. 😉
PatentlyO is down by about 15 votes. On the other hand, I met a patent troll on the train who told me he voted for IPWatchdog 72 times using 72 different IP addresses.
deep seated h_atred
LOL!
The last time I looked, the ABA had recorded more votes for the Patent Watchdog than for Patently-O.
Most people consider your work and expressed opinions as rational
Maybe some of EG’s “opinions” are “rational” but I seem to recall a few that failed miserably on that score.
Your suppport of Gene Quinn, then, can be seen as rational,
Or it could be seen as two Republicans blabbing away and reciting baseless talking points like they do on FAUX News every week.
EG,
While you were merely “stating the obvious,” your point was lost on MM.
Most people consider your work and expressed opinions as rational, even while not agreeing with everything you say.
Your suppport of Gene Quinn, then, can be seen as rational, yet Malcolm has an obvious penchant and deep seated h_atred for someone whom he has never met.
Malcolm’s irrationality shines through, even as he thinks others belong in mental institutions.
It’s all a bit sad, really.
OK, MM, I was stating the obvious. And do have a Merry Christmas/Happy Hanukkah, as well as Happy New Year, MM.
I’m well aware of that fact, EG.
Frankly, some of us don’t mind being characterized as “Quinnbots,” MM.
sockie: It would be intersting to delve into the same scenario from Anonymous Professor with the provisio that the exceptions are merely personal exceptions
It would be more interesting to hear someone explain coherently and compellingly (1) exactly what these “merely personal exceptions” are and (2) where their existence is supported in the text of the AIA.
I won’t hold my breath, of course.
But you do not have the option not to grant either – unless yo have the rare case where everything is a dead tie.
The fact will most likely be that different dates will be in play. It is not in the Office’ power to sit on both and do nothing. They must do something, and then it is up to the other party to fight the decision. The Office must grant on the first to file as the RULE indicates, or if the exception to the rule is proven (and not just asserted), then the Office must grant on the first to publish.
Of course, all of this rides on the assumption of the exception not being a personal exception.
It would be intersting to delve into the same scenario from Anonymous Professor with the provisio that the exceptions are merely personal exceptions.
Ned: B invents and confidentially discloses to A. A “invents” a variation and publishes disclosing both B’s invention and A’s variation.
Later, B files, then A.
In the A prosecution, the examiner rejects over B’s prior filing. [irrelevant portion deleted]
… A can rely on his publication date, which is the same date as the publication of B’s invention.
A gets a patent on his variation. This is at variance from today’s law that would make B’s disclosure to A prior art to A.
I think you are correct, Ned. The relevant portion of the statute is here:
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
That said, I would not say that it is “impossible” today (i.e., pre-AIA) for A “to patent an obvious variation which could impede B’s business.” Obvious patents are granted all the time. Moreover, with the same facts presented here, inventor A (the bad actor) today would likely simply swear behind B’s filing date and use A’s prior (derived) publication as evidence of constructive reduction to practice. Would a patent thus obtained be enforceable against B? It seems unlikely, unless inequitable conduct jurisprudence expires completely.
Hold hands?
No.
However, you either grant two patents or not grant either. Since the Office has no authority to grant two patents on the same invention (very old Supreme Court case law), it seems the Office has no option but to not grant either.
Regarding piracy, we opponents of FTF tried to point out just how vulnerable we would make inventors if we had to prove derivation in face of systematic piracy such as practiced by certain foreign countries.
“But in the meantime I would not allow the A application to issue until B had a chance to request a derivation proceeding.”
On what grounds?
Is it the Office’s oblligation to hold the applicant’s hands and suggest (allows?) that they file for a derivation proceeding? Or is the more likely course, the Office simply state the fact that the A publication preceedes the B filing? and B is rejected.
What happens if B does not even know A? A clandestinely derived – don’t believe that is possible? You haven’t been paying attention to all of the industrial espioange and hacks from foreign countries (not to mention any particular country – China) – but clandestine deriving is going on all around us right now.
B won’t have a shot at proving anything!
Malcolm, good observation, that.
I agree. Furthermore, I think the courts will agree.
But the problem remains that A can patent an obvious variation which could impede B's business. This result is not possible today.
Ned: B invents and confidentially discloses to A. A “invents” a variation and publishes disclosing both B’s invention and A’s variation.
Later, B files, then A.
B is rejected over A’s publication.
B can “remove” the A publication through affidavit or derivation proceeding, but only to the extent of his own invention. The A variation cannot be removed (at least as I understand the law of derivation). B’s patent may be obvious over A’s published variation. B does not get a patent.
Seems to me that B’s affidavit would suffice to remove all of A’s disclosure of the “subject matter” as prior art except for the variation. In other words, if B’s invention is a doohickey and A steals the doohickey idea and publishes a doohickey with a smorfle, the only teaching of A’s that is prior art to B is the smorfle itself. B still gets his patent on the doohickey.
Is there statutory language that would absolutely preclude this fair and reasonable result?
Ugh! Thinking it thru just a bit more,
B get his patent too. A’s publication of his, B’s invention, counts as his publication as well. This should remove A’s publication of the variation as prior art.
MM,
B invents and confidentially discloses to A. A “invents” a variation and publishes disclosing both B’s invention and A’s variation.
Later, B files, then A.
B is rejected over A’s publication.
B can “remove” the A publication through affidavit or derivation proceeding, but only to the extent of his own invention. The A variation cannot be removed (at least as I understand the law of derivation). B’s patent may be obvious over A’s published variation. B does not get a patent.
In the A prosecution, the examiner rejects over B’s prior filing. A can remove B by showing prior publication of the A variation. But that then create a problem in that the same publication discloses B’s invention. Is that publication prior art to A?
No.
Since A’s publication of his own variation is not later than A publication of B’s invention, B’s invention, disclosed in A’s publication, is not prior to A’s “priority date” as A can rely on his publication date, which is the same date as the publication of B’s invention.
A gets a patent on his variation. This is at variance from today’s law that would make B’s disclosure to A prior art to A.
So, under the above scenario, A the pirate gets a patent on the obvious variation and B the victim of piracy gets nothing.
Seems quite fair, right?
Ned: What I think will happen is that the deriver may file instead on a variation, as in OddzOn products
Virtually every invention is a variation on prior inventions, so the facts in OddzOn Products are hardly unique in that regard.
The variation itself might be obvious over the prior B invention, but as the B invention is not prior art to A, A gets the patent on the obvious variation. (Seems unethical as Hades, but that now is the law.)
I don’t follow, Ned. You need to be very specific about the fact pattern and the dates, what is published versus what is filed, when, and by whom. Otherwise, as you certainly are aware, the discussion goes absolutely nowhere.
AS, the issue is not limited to design patents. The point is that 102(f) has been repealed. If A files on a obvious variation of B’s invention, and B’s invention is not prior art under 102(a), A gets the patent.
Now, it may also be that the courts will develop a replacement to 102(f) that will deny a patent to one who files obvious variations on derived information. But it is not obvious exactly how that will be done under the statutory framework without 102(f).
AS, I assume that A, as first publisher in a contest between A and B over whether A’s publication was derived from B, will be the senior party who gets the patent if B does not successfully prove A’s derivation.
That’s a difficult case to apply to the facts here. A design patent case naturally removes the functional parts and all you were left with were the ornamental aspects.
I have never truly understood how to judge obvious variations of ornamental aspects. It is an oxymoron, is it not?. Take away the functional parts of the football and the tail and what exactly were beign compared? insignias?
“The patent office has to deny each applicant a patent thereby forcing them to invoke a derivation proceeding.”
Agreed. And then I become lost in the deriviation proceeding law. And maybe the Office does too (and simply declares that no one gets a patent because of the rock-beats-paper-beats-scissors-beats-rock… cycle).
I am glad that I will have time to study the derivation laws in greater detail before we get there.
AS, I have posted the answer in other replies, but I will repeat it here too.
C loses over either A or B’s public disclosure. The REAL question is how does the PTO learn of the public disclosure unless it is a printed publication. I assume he learns from it from either A or B from their respective affidavits.
So the examiner rejects C over both A and B’s prior public disclosure as established by their affidavits. What can C do if he believes they are both lying?
No interferences are allowed, mind you.
I don’t know. I think the first time this occurs there will be a major row in the PTO/Board/Federal Circuit.
Next, assuming C is out, B and A will each be asserting prior public disclosure, but B will additionally be asserting that A’s disclosre is derived. I think the PTO accepts B’s affidavit unless A files his own and denies B’s allegations. At that point in time, the patent office has conflicting affidavits concerning the same facts and cannot resolve the issue on the record. The patent office has to deny each applicant a patent thereby forcing them to invoke a derivation proceeding.
Agreed, derivers may publish, but it is the rare deriver who files on the very same invention. What I think will happen is that the driver may file instead on a variation, as in OddzOn products.* The variation itself might be obvious over the prior B invention, but as the B invention is not prior art to A, A gets the patent on the obvious variation. (Seems unethical as Hades, but that now is the law.)
*OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396 – Court of Appeals, Federal Circuit 1997
link to scholar.google.com
Ned,
“A’s prior publication counts as B’s publication.”
I am not sure this is exactly true. A’s publication date is used to defeat C’s patent (as I already provided in my answer). The contest there has nothing to do with B at that point.
The “issue” of whether or not A derived from B is not material to C, and an examiner is not looking at secondary publications when seeing if the exception boots C (unless the earliest publication fails to boot C, which we know not to be the case from the facts given).
I think you jump the gun and lump B back into the contest between A and C and I don’t see how that is done.
I think examination has to follow a one at a time binary decision path because that is how the provision is written.
When you getinto a rock-paper-scissors situation, the exception seems to fall apart onits own, and it seems that not only must a derivation proceeding be called for (from B and not the Office), but then only if B prevails in proving derivation, does B knock out A. The examination question is ambiguous as to whether either the Office (or B) is aware of the derivation, or that the deriver A is forthcoming. Since A seems intent on filing even though he knows that he derived, I think the better position to take would be that A would make B prove derivation. I think my answer is more correct until B can prove derivation.
I am trying to follow your line of thought on B getting a patent. I see how the exception may play to deny others, but as I mentioned, the exception only follows the rule, and by rule B cannot be first – the contest for first is between A and C. That is why I mention that a three-way race is problematic.
A Rose, agreed.
But how? That is the question.
If A has not filed a patent application himself, I would suggest you that B’s affidavit that A derived must be accepted.
But what if A’s application is before the patent office? I think that the B affidavit would put the issue of derivation in play. I would suggest that A be denied a patent unless he himself files an affidavit showing that there was no derivation. If he did that, then would be a conflict of affidavits before the patent office that cannot be resolved by the examiner. The examiner would then have to deny patents to each applicant and invite them to each invoke a derivation proceeding. He cannot allow either to issue, as that would force a thrid party to prove A’s derivation from B.
What might be apropos in the future, assuming both A and B receive patents by error or otherwise, is for an infringer to implead A and B and deposit the demanded royalties into court and let A and B fight it out as to who has the right to the royalties.
It would also be apropos if the infringer filed a reexamination of B over the A publication (if it was printed.) That might also result in a derivation proceeding.
sockie: To be clear, “derivation” must be proven and cannot be assumed.
To be clear, nobody ever suggested otherwise, sockie.
Rather like the rarer than hen’s teeth interference practice this all was supposed to replace, no?
What fraction of interferences result in a finding that the junior party derived the invention from the senior party, or vice versa? In what fraction is the issue even raised? I’d be stunned if it was more than 50%. Very surprised if it was more than 10%. What do you think, sockie?
To be clear, “derivation” must be proven and cannot be assumed.
Rather like the rarer than hen’s teeth interference practice this all was supposed to replace, no?
To be clear, my 12:56 comment was in response to Ned’s 12:27 comment.
Exceptions-
‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
True enough, Ned. Thanks. I hadn’t thought about it that way before. In theory, even if party X never published its invention prior to filing, it would be possible for party X to rely on party Y’s earlier derived publication of party X’s invention to remove an intermediate non-derived publication of the same invention by party Z.
“(B) the subject matter disclosed had, before
such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
A’s prior publication counts as B’s publication.
Ned, where does the statute say that an inventor is not only excepted from the adverse consequences of a publication but additionally given the benefit of a publication, if that publication is derived from the inventor?
I don’t recall that part of that statute.
The Shilling, nice question that about what the examiner must accept in terms of affidavits about third-party publications. I assume that any affidavit by B of A’s derivation would be met with an invitation to invoke a derivation proceeding. There B will prevail based upon the facts here if A chooses to contest at all.
So based upon the above assumption, if I were the examiner I would reject B’s application over A’s prior publication and allow B to request a derivation proceeding if he so chose. But in the meantime I would not allow the A application to issue until B had a chance to request a derivation proceeding.
AS, since A derived from B, A’s prior publication is not prior art to B. Moreover, A’s prior publication counts as B’s publication.
Obviously there is a question of whether the examiner must accept B’s affidavit to the effect that A derived from him, or whether the examiner must reject such an allegation and force B to file a derivation proceeding, but that is beside the point here. Ultimately, B should prevail on the facts as stated in the example.
Anonymous Student appears to be correct. -5 for the the lame pseudyonym, however.
anyone with a different viewpoint of the law
LOLOLOLOLOLOLOLOLOLOL.
Coming from you, shillywilly, that’s rich.
Please tell us YOUR view, shillywilly: If inventor A publishes invention X first, is that publication “meaningless” for a second individual who independently invents X but files later?
Let us know, shillywilly. By letting us know your view, shillywill, we can all learn exactly how serious you are.
Try to write coherently when you respond. Thanks!
The filter is most annoying – as I made no changes inthe multiple posts, except for breaking into multiple posts.
I hope one of the new upgrades will be a highlight of why a post is not being accepted!
The three way race does indicate a flaw in the law (The rule and exception is written in a binary format, and there is no “else” in the “if-then” format).
Based on the above “first to publish” exception eating the rule, A is initially awarded the patent over C, because even though A and B were “eliminated” by the application of the rule – first driver of filing date (and while neither A nor B derived from C), only A’s publication date wins out – in the “first to publish” exception system.
If A is smart, A provides generous license terms to B and moves on. If A does not provide acceptable terms to B (or if B is just plain ornery), B files suit to show that A derived from B, and thus B’s publication serves as prior art to A’s filing, and the patent is taken from A.
B does not get the patent because the rule is always applied prior to the exception and the exception is only applied to the result of the rule. B is never first in the application of the rule, and thus the exception cannot place him first.
There is no “t_hree-way” provision in the AIA, so the fact that A did not derive from C allows the exception of A’s earlier publishing to overtake the main driver of C’s earliest filing date. B, the first true inventor is out of luck – well, mostly.
The answer is that most likely no one gets the patent, or if anyone does, it is A.
The application of the rule gives dibs to C. The examiner would then look to whether A derived from C (not whether A derived from B), and would find that A did not derive from C, as C was still in a coma. The application of the exception is between C and A, and A wins.
Any qualms from B would be viewed by the examiner as “not persuasive” and dismissed (the January 1st date is now meaningless in the new law).
Filing Order (first thing looked at)
C: Apr 10
B: Apr 15
A: Oct 31
Publishing Order (the exception list)
A: Mar 1
B: Apr 15
C: not determined
In pieces because the Filter is truly O_bnoxious today.
Nice exam question.
I think it’s been awhile since Ned took a Law Final Exam.
Giving the answer gets you about 25% of the score. Giving the reasoning gets you the other 75%. Using “QED” earns a -5 points (-10 for using “QED” and not arriving at the “right” answer).
The immediate answer of B would be incorrect as the record would indicate that C filed first, in addition to A publishing first.
oops. Of course. Thanks Ned. For a Euro, this new-fangled, “First to Publish” system takes some getting used to.
Max, B published before C filed. That is why.
For arguments sake, let’s assume for the moment that we have a First to Publish system and Ned is correct that independent C is knocked out by B’s publication of April 1st.
I wonder what would happen if A refutes the claim that A derived from B.
Would that then knock B out as anticipated by A’s first, and earliest, publication of March 1st?
Would B then need to prove derivation by A? How would that be done? Per Ned’s other answer, wouldn’t the Office simply grant the patent to A and assume, without proof, that it was B that was the deriver, since B was the second publisher?
Ned, why is not the content of C’s app on April 10 (when it finally get USPTO-published) good art to cite against the validity of B’s April 15 claims?
Let me see if I understand you Ned (because quite frankly, you are not making any sense whatsoever).
“Congress effectively deemed the first filer a deriver without requiring any proof that he was in fact.”
So your position is that not only does the exception swallow the rule, but Congress intended a “taking” of an invention filed by an independent inventor who was actually first to file with no proof of derivation needed?
Doesn’t that play havoc with your professed “inchoate rights” stance?
Doesn’t that further move the entire “first to file” nomenclature towards the “first to publish” system that you think is in place? WHy wasn’t the entire package simply labeled “First to Publish?”
And we haven’t even had the real fun yet of figuring out what “subject matter of the disclosure” means as far as patents and claims and such (i.e., does the “subject matter of the disclosure” have to be enabled? Can the “subject matter of the disclosure” be mere science fiction?).
Oh, the joys we have yet to experience!
B.
However, I would first reject B over first filed C. B would prove prior publication. This would remove C.
I would then cite the prior publication against A and C. Both are anticipated.
QED
Not, I don't have the statute in front of me, but there are two different provisions involved here. One talks about "disclosures" and the other about "public disclosures." Both types are not prior art to the applicant if "he" made the dislcosures and made them within one year of filing. However, the "public disclosure" also has an effect on the first filer. It kills his patent to the extent it is claiming the publicly disclosed subject matter.
So where does that leave us? Why does the statute even talk about "public disclosures" as providing something different from simple "disclosures," that may or may not be public or not. Congress clearly intended that the effect of a public disclosure have more than just the standard run of the mill effect on the first filed patent. I think, and I really believe you will eventually agree to this as well, that Congress intended that the first filed patent application be "removed" as a reference against the second filer, but first publisher. Congress effectively deemed the first filer a deriver without requiring any proof that he was in fact. As such, his patent is not effective as prior art against the second filer.
MM is ever the guardian of the playground against sockies, trolls, newbies, cancer patients and anyone with a different viewpoint of the law.
At least in his own mind.
MM,
Has NAL visited you for the holidays in your rubber room, bringing you a new skirt (and matching runnning shoes)?
You are such a joke, MM.
The quoted sentence “[Ned’s] interpretation would mean that a mere publication would exactly be synonymous with a filing” in my 3:29 comment should have been italicized.
If you want a response
I don’t want or need a response from you, sockie. All I wished to do is point out what Ned, MaxDrei and myself (and others) have all pointed out to you (and others — all sockpuppets, weirdly enough) several times before: your statement above (If another inventor invents without deriving, the early publication [by another] is meaningless) was and is false. The earlier publication by another of the same invention that X is trying to patent renders X’s invention unpatentable by X. There is no need for further debunking of your false statement as you’ve already contradicted the statement yourself. You obviously recognize the falsity of the statement, even if you refuse to retract it.
Your repetition of the phrase “the exception is personal to the applicant” seems to cause you great pleasure. Try explaining what you mean by that phrase in clear, unambiguous language. Perhaps presenting a simple and straightforward hypothetical would assist you.
[Ned’s] interpretation would mean that a mere publication would exactly be synonymous with a filing
As I pointed out upthread, part of what Ned wrote in his earlier comment was simply inane. Here is the relevant portion again:
But [one’s first publication of invention] is prior art to anybody filing later while having no effect on one’s own application. Therefor, in a sense, it is a equivalent to a filing date.
As I wrote Dec 3 9:29 pm, I have no idea what Ned’s second sentence is supposed to mean. It’s incoherent babbling. The first sentence is certainly true, however, provided one’s publication is within one year of one’s application filing date. But it’s the first sentence which sockie denied upthread! Go figure.
Ned,
I do not see the redundancy you mention.
The exception is personal to the applicant. That much is clear from the congressional record. That is also what is on record as how the Patent Office understands the new law. Do you at least agree with that?
The exception is only personal to the applicant. This means that the exception does not apply to those who are not related to the applicant. This is what is meant by independent invention. The exception is not meant to give the first publisher carte blanche against the entire world, but only those who would derive the invention from the applicant’s publication.
On the other hand, I believe your interpretation cannot be right. Your interpretation would mean that a mere publication would exactly be synonymous with a filing, and the entire bill (and all of the congressional record) would have called the legislation first to publish. Your interpretation of the exception would have the exception swallow the rule. That cannot be right.
MM,
If you want a response, you must not speak in riddles. If anyone is incoherent, it is you.
But, the way you interpret it is redundant, as all acts otherwise creating prior art against the applicant are not prior art if within a year.
Thus, your interpretation would add nothing to what is not already there. It cannot be right.
the system is still not a first to publish
That’s nice. I never said otherwise.
B’s patent is ANTICIPATED by A’s publication. I do understand that.
And yet you wrote “if another inventor invents without deriving, the early publication is meaningless,” which is false and contradicts what you claim to “understand.”
Maybe you just need to learn to write coherently. You and Ned could both use some lessons in that regard.
Who is shillwilly?
Great question, sockie! LOL.
Here is a Patent Law Final Exam Question:
On January 1, 2014, “B” invents first, but does not immediately publish.
On March 1, 2014, “A” derives from “B” and publishes, but since “A” does not really understand what “B” invented, “A” does not yet file.
On April 1, 2014, “B” perfects, and publishes, and sends the publication to his attorney to make into an application for filing. The attorney sets aside all other work and masterfully completes an application and files that application on April 15, 2014.
“A” later files on October 31, 2014.
“C” wakes from a nine year coma on April 3, 2014, and independently comes up with the same invention as “B”, writes an application nonstop and files with a non-publication request on April 10, 2014.
All filings are well written, meet all applicable laws, and the only “citable” art would be the competing works of “A”, “B”, and “C”.
It is January 1, 2019 and the applications are finally being picked up for first examination, and all three applications land on your desk as an examiner.
Who, if anyone, gets a patent and why?
Thanks Ned.
Yes, B’s patent is ANTICIPATED by A’s publication.
I do understand that.
But the system is still not a first to publish, because a first filing by B (independent invention) defeats a later filing by A. The system is a first to file, not a first to publish.
Just because A publishes, A is not immune to independent invention, and still must file first. If B (independently) beats him to the filing, A loses out (or must prove derivation of B from A, that B was not truly independent).
Not,
Think.
A publishes. B files (first.) B’s patent is ANTICIPATED. A’s publication is prior art to B. B does not get a patent even if he is first to file.
Now start there and continue thinking about what happens when A files withing a year of his own publication.
Debunk it once more then MM. Show how the stated proposition is false. I have yet to ever see it shown to be false, so you may get the prize.
Who is shillwilly?
sockie The publication is only a personal defense against derivers. If another inventor invents without deriving, the early publication is meaningless.
As stated, the quoted proposition is false. Moreover, it’s been debunked here ad nauseum. For some strange reason shillywilly isn’t jumping on your throat for your transgressions against her “rules.” The critical question, of course, is WWGQD?
Ned: Therefor, in a sense, it is a equivalent to a filing date.
But publishing is certainly not a filing date, Ned. So your attempt to find some “sense” in which publication and filings are “equivalent” amounts to little more than sockie chum. I’d just drop it if I were you.
“It is the intent to allow the first publisher to get a patent.”
Ask yourself the simple question. Do we have a first to file system or a first to publish system.
All else is smoke and mirrors. (The smoke and mirrors comes with this statement: The public disclosure is prior art to any third party, however.) It is not so to any third party. For example, a third party that independently invents (does not derive), can still be first to file, and get the patent. In order to take the patent away, the first to publish must prove derivation.
Otherwise, the mere act of publication would ensure who gets the patent and “first to file” would not be the phrase used. Instead, the phrase would be first to publish.
Who is Gene?
Not sure why you think this is so open. We either have a first to publish system or a first to file system. One of the other.
No one involved in the legislative process ever called it a first to publish system.
Not how I understand it.
Me neither, MaxDrei, and you remember the earlier thread correctly. It’s definitely not worth engaging sockietroll on this previously debunked rehashed gxrbxge.
Gene, we have gone around this block before.
Nothing the inventor does that could be prior art to himself is prior art if done within a year of his own filing. You agree on this, right?
The public disclosure is prior art to any third party, however –provided the third party did himself not earlier disclose. Assuming the third party did not himself publish, the third-party, first-filer's patent is invalid if filed after such a publication. You agree on this, right?
Now in your view of things, no one gets a valid patent if the second-filer is the first-publisher. That is not the intent of the statute, now is it? It is the intent to allow the first publisher to get a patent.
Not how I understand it. Others who understand AIA better than I do will add a comment, I dare say. I think an earlier thread also revealed opposing understandings on this legal point. Interesting that it is so open.
“But it is prior art to anybody filing later while having no effect on one’s own application”
No. Not for independent invention. The publication is only a personal defense against derivers. If another inventor invents without deriving, the early publication is meaningless.
Great blog. I just voted. Keep up the great information and the insights. The enhancement you mention seem to be right on track. Best of luck to you in the voting.
Say Paul, I was just thinking that if we propose to remove the “publicly disclose” reservation of the filing date, we would lose the support of the academic community. So may I suggest that what we should do here is add the proposal about commercial use to the current statute as opposed to replacing it.
True, in a sense. The publication is good only in the US, and it is not a filing date per se. But it is prior art to anybody filing later while having no effect on one's own application. Therefor, in a sense, it is a equivalent to a filing date.
What is this “We could then remove all this new and untried experiment about a prior public disclosure effectively reserving a filing date“?
There is no reservation of filing dates, is there?
A filing date is still a filing date and the public disclosure is just a personal defense against derivers. One still has to be concerned with independent invention with prior public disclosures.
Paul, understood.
But, if a contest of rival inventors was no longer possible, we could simplify the proof of "prior invention" to be the same thing as prior commercial use (public or private commercial use; or non profit, non commercial, laboratory testing) set forth in new Section 273. In other words, if the prior "commercial use" occurred within one year, one could still file and obtain a patent and also remove intervening prior art except for a first filed application claiming the same invention. If not within a year, the first user's patent would be invalid, but he or she would still have a prior user right.
This would complement 273. Whatever law developed for 273 prior use could be used to define the requirements for overcoming non bar prior art, and vis-a-versa. We would not have to retain any law regarding prior invention, and we would not have to add anything to the new statute that was not already there. In addition, since prior, private commercial use is not prior art in Europe and elsewhere, as far as I can tell, it offers some relief to practitioners of secret processes. There would remain the problem that a public commercial use might bar foreign rights.
Nope, I voted for this blog.
[But I believe in the stimulating value of competition.]