As a new year begins, Paul Morgan reflects on the practical importance of the Leahy-Smith America Invents Act of 2011 – the major patent reform effort that was enacted in September 2011. Although admittedly oversimplified (like any short-list), Paul's list provides some food for thought for patent strategists. He looks forward to comments.
By Paul Morgan
1. Regarding the hyper-hyped "first inventor to file" replacing of "first to invent" — the number of situations in which two different parties file patent applications on the same or substantially the same invention, and the second to file obtains valid dominant patent claims, is miniscule (now less than 20 a year). Cases involving invention "derivation" are a small percentage of even that miniscule number. In other words, the removal of alleged prior "invention date" arguments is not a significant AIA change.
2. The most significant AIA changes, which will affect almost every patent applicant, are in the definitions of what counts as prior art. The AIA provides a considerable simplification (albeit with a few ambiguities). Also, most prior art will now become instant "bars-to-patentability." U.S. application foreign priority filing dates and foreign public disclosure dates both becoming U.S. prior art dates will provide a significant prior art increase. The ending of PTO Rule 131 alleged prior invention dates declarations "swearing behind" earlier prior art dates will have a limited effect on some patent grants, but little or no effect on successfully litigating patents. [Rule 131 declarations are ex parte, uncontested, and often inadequately examined, so they rarely survive litigation challenges and easily raise inequitable conduct issues.]
3. Delaying filing patent applications after publicly disclosing one's invention is foolishly dangerous now, and will remain so. It will also continue to destroy foreign patent rights. There is a [sole remaining] one year "grace period" for doing that, but that grace period is ambiguous as to its disclosure extent requirements and effect. Delaying the filing of at least provisional applications for new products still under development will become more dangerous even if kept secret, due to the above changes in prior art and its effective dates.
4. The AIA significant increases the value of trade secrecy protection (instead of or even in addition to patenting) for any inventions which can be kept secret while being commercially exploited. There is potential dual IP protection from the AIA elimination of "best mode" defenses. Even more so if disputed ambiguities in AIA 102(a)(1) are held to overrule the long-established Metalizing Engineering doctrine that "forfeits" patenting after having already commercially exploited an invention, which would allow tacking on full term patent protection after unlimited years of trade secrecy protection. A rather surprising impact of "patent" legislation.
5. The ability to eliminate any inequitable conduct defense before patent litigation is provided in the new "Supplemental Examination." [An ex parte reexamination solely for patent owners to request and participate in, and thus a potentially powerful new tool for patent enforceability, although its PTO rules and actual usage remain to be seen.]
6. Ending the "false marking suits" plague and the naming of numerous defendants in the same patent suit [to avoid venue transfers] is already accomplished. Also, there is a new "virtual" marking system that really ought to be used.
Finally, the practical effects of many other text-extensive AIA changes, such as the new or amended and Board-run inter partes reexaminations and 9 month only PGR opposition systems, are too soon to predict. Especially given their potentially dangerous estoppels, predictable higher costs, un-issued PTO rules, and the limited number of them that the PTO will accept each year.
If they were trying to build a progressive patent system The concieved intellectual property of the first inventor would be recognized as the parent patent and require subsiquent improvement patent filings to be dependant on the parent meaning a requirement for collaberative improvement must occur for the second filer to gain anything This preserves the incentive to create.
Ned,
Is this the type of thing that you were pressing for?
It seems to me that the entity desiring to use a foreign reference would naturally be the one that must provide an English transalation of that reference. It makes no sense, then, for the Office to not be responsible for providing that translation if it is the Office initiating the use of that foreign reference. Babbel Boy in his 10:54 post captures this well.
Reguarding item 1 of the review you cant call this anything less than inventor fraud and political corruption. If your actually not awarding to the actual inventorbut rather the second filer that had the disadvantage of fileing first then everyone wants to file second not first so fraud. Saying that there is only 20 incidents per year is saying there is only 20 frauds that were now allowing. No doubt concerning the 20 most valuable inventions. so now whats your incentive to create and file I say none and human advancement stops so next year youll have 0 thefts as people become hip to the rip
Ned,
Try: link to gpo.gov
Page 36 of the document (page 448 of the FR)
Happy reading
Anon, do you have a link or can you copy the text of new 37 cfr 1.290?
Sent from iPhone
Ned,
You may be pleased to note that the proposed 37 CFR 1.290 requires any third party submitting documents to provide English translations of all relevant portions of the submitted documents that are not in English.
Thanks NOT.
Speaking of science fiction:
link to news.yahoo.com
One giant hole in time comes to mind.
I think this is the reason for the provision. There was a lot of discussion with the U's about this topic. The question of derivation was critical.
Nice. Talk about your fractured personas
T O O L
It wasn’t self-referencing, sockie. It was about you.
Yes, but please, MM, stop with your self-referencing posts.
Think about it. Science Fiction is FICTION, make believe, not real.
Man, this blog has the dxmbest trolls.
“Science fiction is a very strong motivation to combine other references”
W
T
F
What quackery!
“will be categorically presumed to be derived”
…now who is putting words into the statute?
Bagel Boy, just to clarify, the issue of a grace period is not strictly the question at issue. The grace period applies to one’s own disclosures. Removing intervening prior art applies to third-party disclosures or patent applications.
I think that what Congress was trying to do with respect to the latter was that they were trying to provide a categorical presumption that if the inventor makes a prior public disclosure of certain “subject matter” (note that this is not the same thing as the invention) that subsequent disclosures or patent applications describing that same subject matter (note again that this is not the same thing as the invention) will be categorically presumed to be derived.
Regardless, all the statute requires to remove the reference is a demonstration that the “subject matter” of the reference that is being cited against the applicant’s patent application was publicly disclosed first by the applicant.
I knew I only had 30 seconds to get that correction in, Max, before you spanked me. I just barely beat you to the buzzer. LOL.
Nurse Chapel, just to make it clear to you, if I have not, I agree with the court system, with the cited article, with you, with Kirk, Spock, Sulu and with Bones that a prior art rejection based on section 103 must be enabling when considered as a whole. It cannot be based upon science fiction – alone.
But that is not the issue here.
Babble Boy, I hope you are right.
However, all I asked for in the end from Mr. Native was an MPEP cite, or case cite, to support his, and now your, assertion that this was legally required of the examiner if you press him.
Note there's a subtle difference here as well between relying on a foreign language publication and relying on and English-language patent that has a foreign language priority date. If you ask the examiner what text he is relying on, he will cite the text from the patent. If you ask him to justify his assertion that the English-language patent is entitled to the foreign priority date, he will cite the priority claim on the face of the patent.
What we need I believe is a new rule that actually requires the examiner to provide a translation, a certified translation, if he does rely on the foreign priority date. I will clarify things quite a bit, as we are in a situation here with the fall of the Hilmer doctrine that we have never been in before.
(that’s the fiction part, anyone can dream up anything and merely writing about these make believe things cannot serve as appropriate 103 items).
Science fiction is a very strong motivation to combine other references, when the use of the other references is apparent. Notice that whenever someone comes up with a new example of experimental quantum weirdness, all the newspaper and magazine headlines talk about Star Trek-style transporters.
Pretty sure a hoverboard would also be an obvious modification in view of fiction if someone discloses the propulsion system in isolation.
At least under the current system you can swear a 131 affidavit that you conceived of the claimed invention prior to stardate 1312.4.
Already done, I see now.
With the correction, I accept your summary. Seems fine to me.
Ned,
You seem to be sidestepping the issue of whether or not Science Fiction is suitable 103 material.
Looking at Mr. Sulu’s example in his post, clearly, Science Fiction will typically pre-date any ability to remove the Science Fiction reference (that’s the fiction part, anyone can dream up anything and merely writing about these make believe things cannot serve as appropriate 103 items).
Knee jerk reaction: In your “So” para, Applicant has definitely “shot himself in the…” wrt foreign whenever his pre-filing publication is enough to support an obviousness attack.
Care to clarify what you had in mind?
Late proof read:
“so long as the reference is NOT used in an obviousness rejection.”
It’s gonna’ get interesting.
Ned has previously warned that using this new public disclosure 1 year grace period will cut off foreign rights.
BUT now he seems to say that applicant gets the grace period so long as he publicly discloses the subject matter, even if not enabling the claims.
BUT David seems to argue that foreign rights are not cut off if the disclosure is not enabling.
WHILE Max seems to argue that enabling in EPO is irrelevant to obviousness.
SO, putting this together, US applicant who makes a non-enabling public disclosure of the subject matter less than one year prior to US filing will get the benefit of the grace period in the US and foreign so long as the reference is used in an obviousness rejection.
BUT, US applicant who makes enabling public disclosure of the future claims less than one year to US filing will be OK in the US but has shot himself in the foot w/ respect to foreign.
Let us all pray that Pauline is still on the bench when this first hits the CAFC.
Yur shifting the goal posts, aren’t you, Ned.
Native’s position is absolutely correct, at least in my experience.
I have often forced the examiner to either state on the record that he is relying on an English abstract [in which case I dissect him] or provide an English translation of the foreign patent. What I usually get in reply is a machine generated “translation” that would not possibly hold up, even before the slanted BPAI. The problem is that the examiner did not have the translation before entering the rejection but then goes back and tries tho shoe-horn the rejection into the translation.
This is a common examiner bluff that you HAVE to call them on.
If you can make a valid argument that AIA somehow changes the PTO’s obligation to provide a translation of a reference it relies on in a rejection, wuld luv to see it.
Mr. Sulu, we agree that US law requires that the prior art considered as a whole must disclose the invention and must enable one to make and use the invention. We also seem to agree that this does not require that a particular reference disclose the entire invention, or that a particular reference disclose how they make and use the entire invention.
I suspect that we can further agree that the effective date of the prior art for prior art purposes probably is the date the whole package becomes enabled, but I have never seen a case on that issue.
Regardless of all of the above, if the examiner is citing a reference disclosing A, all one has to do to remove that reference is to show prior public disclosure of A. It makes no difference whether A is enabled. That simply is not a requirement of the statute.
Hey, NOT, thanks for the reference. But, trust me, applicants do not have to file translations of foreign priority documents unless they actually intend to rely on them to prove entitlement to priority.
Hey, Rich, G. S., true dat, but this language is without precedent. What case law is there to look to in such a case?
Paul,
How about an article listing the top ten “ambiguit[ies] needing fixing in a technical corrections bill“?
Nominations…?
“Ref. 1 discloses A, but no enablement. Ref. 2 discloses how to make A. The examiner combines both in a rejection. Why not?”
Think. Say Ref. 1 is science fiction written 50 years prior to Ref. 2. What priority date are you giving this combination?
Think. If, as you indicate, Ref. 2 discloses how to make “A,” what is wrong in using Ref. 2 on its own? Clearly, Ref. 2 is enabling. There is no need to reach back to the fiction of Ref. 1. Is fiction something that is truly “in the art,” as that phrase is understood in the patent sense?
Granted, in the 103 analysis, enablement is a matter of the references “as a whole,” and each reference need not enable, but if you read the Lincicum article closely, it does not stand for the idea that science fiction is 103 worthy. See especially footnote 55.
“where in the statute”
There is more to law, especially patent law, than what is in the statute.
Ignoring the judicially created law is not advisable.
“to require foreign applicants to file certified translations of priority documents as a condition of obtaining the patent grant.”
See 37 CFR 1.52(b)(1)(ii)
You are welcome.
One person’s “shakedown” is another’s fuel of interest.
Perhaps.
I too often disagree with the Federal Circuit. But here, I tend to agree with it.
Think. Ref. 1 discloses A, but no enablement. Ref. 2 discloses how to make A. The examiner combines both in a rejection. Why not?
I suspect you would say that the applicant could get a patent over such a combination? Really?
Read the linked article. When you have, report back and we can discuss.
Jim, don’t waste your time reading that trash.
The article is claptrap. Academic claptrap.
There is confusion in this answer =
prior art as a whole…
remove a reference that alone…
Which is it? Alone or as a whole?
Well, NOT, we learn something every day, do we not?
It would be nice if you could provide Patently O and the whole patent bar an MPEP cite or Fed. Cir. case on point.
“on the assumption that support exists”
Assumptions do not carry a prima facie case. Period.
There is no need to address this by rule, the law is already clear. If an applicant wants to use something, the applicant is free to provide the translation. If the Office wants to use something, it must provide the translation.
Shatner, I am afraid that you did not read my posts as a whole or if you did, you did not understand them. I specifically referred to a Harvard Law Review article to describe the enablement requirements for 103. Why don't you click the link and read the article, particularly at page 558.
When you have read the article. Please report back.
Thank you.
irresitable because of its ironic truth
Again, the political rhetoric drowning the actuality of thisbill Law is astounding.
Native, I've thought about objecting that the examiner has not presented a prima facie case if he doesn't show support in the priority document (provisional application) but I have always taken it upon myself review the provisional and object that there is no support if that is the case in fact. I think that is how things will work with foreign priority documents as well. The Examiner will cite the US patent effective as of the foreign priority date on the assumption that support exists. The will force us to obtain a translation to rebutt the examiner if there is no support or insufficient support.
Native, I think this issue is of such importance that the Director should address it by rule. What I would do, were I the Director, is exercise my authority under 119 to require foreign applicants to file certified translations of priority documents as a condition of obtaining the patent grant. (This will at least defer the translation costs for a number of years.) Otherwise, we will be shifting costs of translations away from foreign applicants and onto US applicants generally, meaning, US inventors.
The question: Can science fiction be used for 103 rejections.
The answers:
MM: Yes
Ned: Yes
Think about it. Science Fiction is FICTION, make believe, not real.
Seriously folks, get a life.
I understood what the situation was.
My question still stands. Isn’t there a requirement that English be used?
I know that an application is itself required to be in English (or its equivalent, that is, a translation provided and sworn to its accuracy).
I know that an Examiner is required to present his response so that an applicant can make a decision how to proceed.
If the Examiner is allowed to cite a reference that is not understood, then the Examiner has failed to carry his burden of persuasion.
In order to carry his burden, the Examiner must provide a rejection that can be read.
Therefore, the rejection must include a translation, if the Examiner is relying on some portion of the earlier cited reference for that earlier date.
Please note that there is a difference in citing a reference that is an application, that is a publication and that is a patent. If the Examiner is reaching back to the earlier priority date, then the Examiner must provide proof that that earlier version supports his argument. The Examiner therefore must be the one that supplies the translation.
I repeat my earlier response as it fits in here as well.
Prior art is a knockout if it makes the invention “available to the public”.
An inventor can shield himself from third-party prior art if he can arrange to “publicly disclose” the invention (as eventually claimed). This is an alternative to filing a patent application. Effectively, a public disclosure generates a virtual filing date.
These quoted phrases are different expressions. The concept that an inventor can shelter himself against subsequent prior art by arranging to “publicly disclose” an invention is a novel construct for a patent law. I don’t know what will be required to constitute an effective, protective public disclosure. But European jurisprudence requires that prior art be enabling, at least in the sense that the invention must have been “made available to the public” in order to qualify as prior art.
I’ll let you tell me what we can expect the US courts to do with this legislation. But the safest procedure is to file 1st with the best disclosure that you can generate and then upgrade the disclosure with further filings when you see that this is appropriate. Unfortunately, written documents don’t always tell the full story, but a public demonstration of a working embodiment with full access to members of the public must qualify as an adequate public disclosure. That’s why I suggest that these combinations of procedures are the safest course.
Paul F…
Thanks for your very pragmatic take on things as they seem to appear to be right now. However, as you allude to, there is much to be clarified between when the gavel went down on the *Legislation* that is be *phased in* over the next 2 years or so. One aspect that has me pretty nervous is what will happen with the Prior User Rights, as the language included in the bill seems to be somewhat contradictory and ambiguous. What in the world did they mean by “or otherwise available to the Public”? Would that be an enabling demonstration or just an article in a Trade Journal, or just a rudimental document about when they started doing what? Maybe just the NPA itself with all the claims included would suffice for an answer, provided they happened to file in time.
I would like to Second Paul’s suggestion that practitioners get a bit pro-active if no other reason than their clients’ best interests, by going to the comment section at the USPTO and get busy trying to mitigate at least a little bit of the damage that the AIA might inflict upon smaller entities. link to uspto.gov
The new 9-month only Post-Grant-Review program has me especially nervous, as it seems to shield challengers for the most part, and would seem to be somewhat of a loose cannon until Congress can spell things out a little more clearly. Notably, any number of entities can challenge, but they all just get one bite at it, but I for one can think of at least two ways around that. Since they never even finished the language of the bill in the first place, there would seem to be no particular fine print to examine, at least as far as I have been able to discern.
Please go and comment if you get a chance, as Director Kappos has been asking sincerely for guidance for about 3 months about how to implement the AIA, and I really think he deserves some intelligent professional opinions to help him and et al try to get things right at the Get-Go.
Best wishes,
Stan~
I have been away from my desk and am flattered to see such an exchange. This is a very import part of the new legislation. Here’s my understanding.
Prior art is a knockout if it makes the invention “available to the public”.
An inventor can shield himself from third-party prior art if he can arrange to “publicly disclose” the invention (as eventually claimed). This is an alternative to filing a patent application. Effectively, a public disclosure generates a virtual filing date.
These quoted phrases are different expressions. The concept that an inventor can shelter himself against subsequent prior art by arranging to “publicly disclose” an invention is a novel construct for a patent law. I don’t know what will be required to constitute an effective, protective public disclosure. But European jurisprudence requires that prior art be enabling, at least in the sense that the invention must have been “made available to the public”.
I’ll let you tell me what we can expect the US courts to do with this legislation. But the safest procedure is to file 1st with the best disclosure that you can generate and then upgrade the disclosure with further filings when you see that this is appropriate. Unfortunately, written documents don’t always tell the full story, but a public demonstration of a working embodiment with full access to members of the public must qualify as an adequate public disclosure. That’s why I suggest that these combinations of procedures are the safest course.
I look forward to where this thread may eventually lead.
Wrong master inventor creates the lions share of new jobs when the patent system starts working correctly and thats not yet
I think I get it now, Ned.
Malcolm, Max and I were taking about two filings by the same inventor and the first filing potentially being prior art to the second under 102(a)(2). It is not. But in Europe, under the analog provisions of the EPC, it is.
As noted upthread, this is true in the EP for novelty purposes only (not inventive step). As for clueless applicants being “appalled”, well, maybe they should have done just a tad more legal research before dropping the big bucks in the EP.
Here is a very appropriate and timely comment published today by Hal Wegner:
“Last month in GPX Intern. Tire Corp. v. U.S., __ F.3d __, 2011 Westlaw 6371903 (Fed. Cir. 2011)(Dyk, J.), the court provides guidance on its view of statutory interpretation, particularly legislative reenactment, as well as Chevron deference.
The statutory interpretation issues aired in this case will be replayed over and over and over again in the coming decade as the Federal Circuit will be called upon to interpret less than artfully drafted statutory provisions in the new Leahy Smith America Invents Act, Publc Law 112-29 (2011).”
It’s spam Paul.
Re the extensive above arguments about whether or not a public disclosure has to be “enabling” or not to trigger the only remaining grace period [or filing applications by the inventors of what was disclosed within one year], and to what extent something that might not meet 112 requirements for a provisional could overcome prior art filed or published before the period claimant’s belated filing date?
That is precisely why my AIA summary indicates that this new grace period is ambiguous, both as to what is required to trigger it, and its effect. The statute itself is not specific. Senator Hatch in the Congressional Record at or slightly after the Senate passage does use the word “enabling” but others in that same reported discussion of the AIA did not. [Just to add to your confusion.] The PTO will have to have to making calls on that when they start examining AIA applications in a few years, and those who have guessed wrong about what this statute means will risk losing later. Which is another good reason not to rely on this grace period unless forced to, e.g., by some professor-inventor who insists on publishing before filing for his own self-interests rather than his university’s.
This is a good example of an ambiguity needing fixing in a technical corrections bill.
IANAE. I agree — but only to an extent:
There is always an internal debate about the risk of not filing. The risk is that someone else will discover the process and will file suit based on the fact that you are both producing the same product and therefor must be using the same process. (Discovery will soon demonstrate whether or not the the process is actually being used.)
In contrast, if the public domain product does not provide any reliable information about the process being use, it might be better to keep the process secret even under today's law.
Malcolm, Max and I were taking about two filings by the same inventor and the first filing potentially being prior art to the second under 102(a)(2). It is not. But in Europe, under the analog provisions of the EPC, it is.
We were not talking about 102(a)(1) at all. But, I will agree with you that if the earlier filing was published more than a year prior to the second filing, the first filing is prior art to the second filing based on its publication date.
But, the whole topic of discussion between Max and myself was the self-collision problem of two patent application that are potential prior art to each other based only on 102(a)(2) type considerations. We were not talking about the earlier filing being prior art because it was published. We were noting the difference between US law and Euro law on self collision only.
I would argue that only fools will file on trade-secret-protectable processes in the future, as they will not obtain exclusive rights if they do disclose.
I would argue that only fools file on them now. If you could have kept it secret, then so can an infringer. And what do you care if someone else gets a later patent, so long as you can keep your own infringement secret?
Contradict yourself, ever?
Your last two sentences here make sense, but that’s about it.
So much for fulfilling the constitutional mandate by rewarding inventors with EXCLUSIVE rights in exchange for their disclosure.
I would argue that only fools will file on trade-secret-protectable processes in the future, as they will not obtain exclusive rights if they do disclose. Instead they will be granted a piece of all but worthless paper named a patent; worthless because of the uncertainty of prior user rights. One can even argue that the law may allow you to practice the trade secret invention for as long as you can keep it secret and still allow you to obtain a patent once the secret has leaked. Why rush?
Excuse me, Ned? Please confirm that your earlier statement (“FTI remains in the statute to the extent that one’s own earlier filings are not prior art”) is incorrect (or misleading at best) to the extent it ignores the fact that the grace period is limited to one year.
My 2:04 pm is accurate. Your earlier statement is not.
"to the extent that"
Obviously, we are talking about 102(a)(2), the new equivalent of the former 102(e). It reads,
"(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."
The new statute, like the old, applies only when the referenced application is by a different inventive entity.
Yes, complete public policy consistency is not an AIA feature. There are features benefiting patent enforcement by eliminating defenses as well as features expanding some.
Although I supposed one could note that the prior users statute is only for prior COMMERCIAL users who have at least given the public the benefit of the invention in their commercial products, even though they will now get to conceal the invention in how to make the product without having to worry much any more about someone else re-inventing and getting a patent on the same invention later on and suing them.
It appears that FTI remains in the statute to the extent that one’s own earlier filings are not prior art.
For the love of patent jeebus, Ned, can we please try to keep the basic facts straight? Inventors have one year to seek patent protection for their inventions that they have disclosed to the public, directly or indirectly. It’s called a “grace period.” After that year, those publications (whether they are published as patent applications or journal articles) are certainly prior art against new attempts ((i.e., non-continuation/divisional filings) to patent any inventions disclosed therein.
Surely there have been additional jobs created for all those charging for all the CLE courses that patent attorneys and agents will need for working under the AIA? Perhaps even some more jobs in the malpractice insurance industry?
[Sorry, just a bit of irresitable sardonic humor.]
Yet small entities create the lion’s share of new jobs.
At least with respect to “small entities” who rely on the patent system, this statement is completely false.
Keep shilling, though.
You are fully entitled to your opinion, and parts of it may have some validity, but quoting speeches from some patent-law-clueless-politician as a source of authority as to what the AIA is all about is not going to convince anyone. Especially given the overwhelming support this legislation got from both political parties after its six years of prior Congressional Committee debate and amendments [during which most the patent bar was basicly ignoring it].
What is needed now is specific, concrete suggestions for a “technical corrections bill” to “fix the fixable.” “Just vote no to anything” is no longer an option for legislation that is already law.
“when a key purpose of a patent system is disclosing useful arts to the public rather than keeping them secret.”
Curious, then, why are we rewarding Trade Secret Holders with the advanced Prior User Rights section…?
Understood, but the argument for the other side is that it is not “fair” to award patents to those who delayed filing as compared to someone who filed, OR publicly disclosed, faster, when a key purpose of a patent system is disclosing useful arts to the public rather than keeping them secret.
Also, many inventors are enamored of “first to invent” [as an appealing slogan] because they erroniously think that having a bare conception [without an actual reduction to practice or continuous dilligene], gives them a “first to invent” date for their bare conception date, and that is simply not the law, which is 35 USC 102(g) and its case law. It’s their myth that is being ended.
Funny No its a tragedy because now job creation wont happen until genuine progressive reform happens
“I thought the goal of the IPO and AIPLA was harmonization?”
Why would you think that? Forever and a day has it been pointed out that the AIA would not be a harmonization with ROW.
Are we to be surprised now that AIA does not harmonize? I think not.
Agreed. And you could add the new AIA grace period for public disclosures. [Note that “achieving full harmonization” was NOT among my list of top AIA features. But you have to admit that it will be somewhat closer in other prior art respects.]
Ahmen, and thank you.
Spock, you are now confusing prior art with the applicant's public disclosure. The prior art as a whole must be enabling, but a particular reference does not. Read the linked article beginning at page 558.
The question is whether one's own prior disclosure must be enabling to remove a reference that alone is not.
Glacier, there is no requirement to file in the U.S. if you file in another country, as long as you get a foreign filing license for your draft application from the USPTO first, which is not difficult. [In fact, filing only in some small foreign country with a fast laying-open proceedure in an language most people cannot read can provide a defensive publication value with a low risk of any competitor reading it until you need to use it.]
But what was the other “requirement” you were referring to?
That would be incorrect sir.
Your way of thinking would make each piece of science fiction ever written have a critical date as of the date of writing of the science fiction when in the future that science fiction is no longer science ficiton but science fact due to a later person’s actual invention.
Such is eminently illogical.
Max, I thought David was arguing that the applicant's prior public disclosure had to be enabling of what it disclosed in order to remove a reference that had an effect prior art date subsequent to the public disclosure and prior to the applicant's filing date.
I don't think the statute can be read that way. All I think the statute requires is that the applicant disclose what the reference discloses, do so first, and do so publicly.
Sure it can.
Ref 1 illustrates the transporter. But it discloses no means to build it.
Ref. 2 illustrates how to build it.
Together 1 and 2 disclose and enable the transporter.
Now, can I remove 1 if I earlier publish the all the details of Ref. 1, but not Ref. 2? Ref. 2 enables both my prior public disclosure and the prior art ref. 1.
I say yes.
The statute does not say no.
science fiction cannot be used for 103 rejections, can it?
Why not? Science fiction is often a very straightforward expression of how we would like the world (and everything in it) to be. Why should it not be used as evidence of motivation to combine prior art, if nothing else?
Max, thanks.
It appears that FTI remains in the statute to the extent that one's own earlier filings are not prior art. I wonder why we didn't change that in going to FTF? Oversight? I thought the goal of the IPO and AIPLA was harmonization?
No one?
I think every congressman, senator and even the President mentioned that “job creation” was going to be a benefit of the AIA.
Exactly how the AIA was supposed to lead to this was not mentioned by anyone, at least with a straight face…
Perhaps Mr. Lincicum is mistaken and the leading to absurdities belongs to the inclusion under 103 of anything “not enabled.”
After all, science fiction cannot be used for 103 rejections, can it?
Funny how no one mentioned “job creation” as a benefit of the AIA.