The Removal of Section 102(f)’s Inventorship Requirement; the Narrowness of Derivation Proceedings; and the Rise of 101’s Invention Requirement

By Dennis Crouch (October 5, 2012)

In a prior Patently-O essay, I wrote that the removal of the inventorship requirement of Section 102(f) opens the door to patenting obvious variants of inventions created by someone else. In that essay, I mentioned the newly designed derivation proceedings, but opined that they would not be much use in this situation. I wrote that "it appears to me that those actions (even if timely filed by the originator) would be unsuccessful because derivation proceedings are limited to cases where the derived claims are "substantially the same" as the originator's innovation. The substantially the same limitation is much narrower in scope as compared with the potential wide variety of obvious variants." 102(f) Essay.

I received a response to that essay from Professor Sarnoff who reports that he and Chico Gholz have a soon-to-be-published article in IP Today addressing the PTO's new rules for triggering derivation proceedings. The punch line of their article is that the legal scope of derivation proceeding is even narrower than I suggested—thus allowing for a third party to patent quite minor variations of ideas obtained from someone else. (I encourage you to read the article once it is published.)

The America Invents Act of 2011 (AIA) entirely rewrote the section 135 of the patent act. That provision previously detailed the interference process and now focuses exclusively on derivation proceedings as they will apply to patent applications filed on or after March 16, 2013. New section 135(a) limits derivation proceedings to instances where an alleged wrongdoer files an earlier patent application "claiming" the original inventor's (but late filer's) "claimed invention." In their article, Gholz and Sarnoff correctly argue that there is not much room for variation here. Under the statute, the derived invention (as claimed) must be for the same subject matter as the original invention (as claimed), even if their language differs. This further confirms what I see as the problematic naming of "derivation proceedings." In my mind, the meaning of the word derivation suggests some amount of modification. While a derivation depends upon having an original source, the final results are ordinarily a modification of that source. With Gholz-Sarnoff, we learn that this ordinary meaning does not fit to the Derivation Proceedings as defined by the AIA. A better term for the AIA defined action might be "False Inventorship Claim Proceeding."

Gholz and Sarnoff recognize that the PTO took a different view when it codified the rules at 37 C.F.R. §42.405(a)(2). That provision broadly authorizes derivation proceedings when the petitioner's claims are "substantially the same" as the alleged deriver's claims, with "substantially the same" defined in 37 CFR 42.401 as "patentably indistinct." Gholz and Sarnoff argue that the PTO is wrong in this interpretation and that the Federal Circuit will eventually overrule the PTO's misapplication of the law.

Further, as noted by Sarnoff in his Patently-O article and as reiterated in the new Gholz-Sarnoff article in response to the views of Armitage, the original inventor may not have conceived of the obvious variant and thus may not be able to provide the required oath in regard to the obvious-variant claim so as to trigger the derivation proceeding.

In our prior e-mail communications (repeated here with permission), Sarnoff has also explored other ways to block patenting of the obvious variants. He writes:

  1. A person who conceives of an obvious variant is normally treated as an inventor of an invention (just of an obvious one), so lack of inventorship under Section 101 may not be a successful approach to invalidating the claim made by the deriver, although the deriver will likely be entitled at least to joint-inventor status; and
  2. Current inventorship law may not necessarily treat the originator of the underlying invention as a joint-inventor of the obvious variant of which the originator did not conceive, even if the originator added a significant contribution to conception by the deriver, and thus it may not always be possible to correct inventorship to permit the originator to obtain joint inventor status and joint ownership of the obvious variant.
  3. However, the courts have sometimes extended unpatentability to obvious variants even when the statute does not clearly provide for it, as they did in In re Foster, 343 F.2d 980 (C.C.P.A. 1965) (extending Section 102(b) to claims that were obvious in light of statutory bar art). [Note, this explains Professor Sarnoff's prior equivocation that I discussed here. DC.]

The bottom line here that I began with my recent essay and continue with this additional discussion revealed by Gholz and Sarnoff is that the elimination of section 102(f) and the narrow scope of derivation proceedings have created a potential problem by offering a roadmap for bad behavior. The law now apparently sanctions the patenting of minor variations of innovations created by someone else. This raises several levels of concern. Most directly, we are concerned about (1) how the obvious variant patent negatively impacts the idea originator and (2) how the obvious patent burdens the public who must either license or avoid infringement.

The current law basically places the burden on the idea originator to protect his or her rights by (1) keeping the idea secret and then relying on contract and trade secret law to protect that secrecy; (2) quickly filing for patent rights; or (3) quickly going public with the idea in a way that creates prior art. Any of these overlapping choices can be sufficient to block or invalidate an obvious variant patent. I am also not overly concerned that this approach unduly shifts a burden to the idea originator. My problem with that approach – as suggested by Anon – is that the idea originator might not be proactive enough to take the actions necessary to protect the public's interest in not being burdened by patents covering obvious innovations.

New Pressure on Section 101: This whole scenario then puts tremendous pressure on courts (including the Supreme Court) to expand the powerful (but ungainly) tool of 35 U.S.C. § 101 and use that fundamental statute to block these derived variant patents that are not otherwise prohibited by statute. The Supreme Court is unlikely to stand for the patenting of obvious variants of ideas derived from another. And, the most straightforward way for the court to act is with the return of something akin to the invention requirement that was thought to have been eliminated by the 1952 Patent Act. That action would likely add steel to the link between newness and subject matter eligibility in a way that many of us see as problematic. (Perhaps under the framework of "inventive contribution.") The better approach is a statutory change that shifts rights with fewer ripple effects.

Sarnoff's perspective is that Section 101 should have an active and engaged role in the patent eligibility doctrine. In his recent article on the post-1952 invention requirement, Sarnoff writes (with apologies to Dr. Strangelove): "[T]o those who believe in using private property to motivate creative advance, using eligibility determinations to restrict access to the patent system is the bomb that threatens our future viability. For the reasons discussed [in the article], I believe we need to learn to stop worrying and to love that bomb." Joshua Sarnoff, Patent Eligible Inventions after Bilski: History and Theory, 63 Hasting Law Journal 53 (2011).


  • In addition to raising this interesting topic, I should (and do) also thank Gholz and Sarnoff for their editorial suggestions on this essay.

80 thoughts on “The Removal of Section 102(f)’s Inventorship Requirement; the Narrowness of Derivation Proceedings; and the Rise of 101’s Invention Requirement

  1. 75

    Except it is not because the Court (in Golan) says otherwise.

    Your mere exclaiming “Hallmark” is simply not convincing.

    At all.

  2. 74

    Let’s discuss a real case.

    Lets do that right after you discuss the points I have already made.

    (Still) your turn.

  3. 73

    Max, if anything, we should have fixed 102(g) by adding some presumptions to eliminate all the record keeping requirements.  For example, we might have provided that a conception date is good without proof of diligence if reduction to practice or the filing of a patent application toke place within a year.  

    Now, the law is ambiguous.  The ex employee can file on company trade secrets and the patents he obtains are not clearly invalid.  His patents on obvious variations of company processes seem to be authorized under the new statute, and may block the company's future product development.

  4. 72


    Let's discuss a real case.  A process to make X is a company secret.  The inventor of process X is Saint.   Employee Anon know of the X process.  He leaves company to join Pirate inc.  There he works on process X, makes improvement Y.  He files two applications:   A first that discloses and claims X.  A second that discloses X, and improvement Y; but claims improvement Y.

    Both applications disclose X.  That disclosure is a violation of Anon's duties to company.  Anon is subject to a trade secret misappropriate case for his disclosure and use of the trade secret.  Anon can be enjoined and should pay damages.

    Next, company files suit under 116/256 seeking to correct inventorship of the two patents.  For the one, the suit seeks to substitute Saint for Anon.  The second seeks to add Saint as a co inventor.

    IMHO, both 256 actions will be successful.  Saint, who is under obligation to assign to company, obtains ownership or co-ownership of both.  Pirate Inc. wishes it never hear of Anon.

    You turn.

  5. 71

    anon, you continue to exist in some fantasy world regarding Pennock.  It is a foundational case.  It lead to public use and on sale being in our statutes.  It lead to the interpretation that known and used must be publicly known.  And it created the on sale bar based on its interpretation of the public use requirement to implement the constitutional requirement of promoting the useful arts.

    Keeping an invention secret without as long as possible and then filing for patent protection is the what is wrong with pre-filing commercial exploitation.  That was condemned by the Supreme Court.  It is not expressly authorized by an act of Congress.

    Unconstitutionality jumps out at one instantaneously.  One does not lightly overrule a Supreme Court case that is based on the constitution.  That is the hallmark of unconstitutionality.  HALLMARK!

  6. 70

    Second, Coke's wishes about patenting its secret process are irrelevant.  Because it kept is process secret, that process is not prior art.  Anybody can patent the formula.  The only way Coke can prevent that is by publishing the formula.

  7. 69

    Anon, I did answer at 07:24 pm. 

    Crown filed second had Pirate did not derive from Crown.  Crown loses because Pirate's patent application, when published, is statutory prior art.  This has nothing to do with whether Pirate is a proper inventor.  You raise red herrings.

  8. 68

    Actually Ned, I think things just got very much simpler.

    Comparing rival PTO filings is piss-simple compared with comparing lab notebooks.

    Once everybody gets into the rhythm of telling the PTO as soon as an enabling disclosure has emerged, a lot of difficult issues fall away.

    More work for filing and prosecution, less for litigators? Only a thought.

  9. 67

    inventor can obtain valid patents on our trade secrets and non-disclosed inventions

    “on our” ??

    Excuse me, but shouldn’t the inventor have a say on his inventions? Last I checked, the real chain of title still starts with the actual inventor.

    Of course, I realize that what you did not include in your post can change the picture – things like contracts and obligations to assign…

  10. 66

    Your thinking of the construed statute does not evidence an understanding of the leeway granted to Congress as demonstrated in Golan v. Holder.

    Your cries of “Constitutional Infirmity” sound to the cries of “wolf.”

    You have NO foundation for your argument, as I have shown that Pennock gave complete faith and power to the law as written by Congress.

    Further, you continue to ignore the general doctrine that the Court will not find a Constitutional Issue if at all possible. Your desire to “read into” old case law based on a statute now rewritten to find some infirmity simply is not compelling. At all.

  11. 65

    The concept of adverse possession cannot apply to my hypo, given that there was no “real property” of Coke (i.e. Coke did not have a patent, did not Want a patent).

    Further, the “adverse possession” scenario simply does not take into account the other claims “to the land” – those of Rick Crown.

    Instead of changing my fact pattern in my hypo, please address the actual points I raise.

  12. 64

    Max, indeed. A lot of American thinking about commercial relationships relies heavily upon our patent system having a first to invent feature. For example, when an employee leaves from one company and goes to the next company, we are all concerned about that employee disclosing trade secrets. But we are less concerned about the employee patenting our own inventions, either of the trade secret variety or because they are not yet disclosed in products. We are confident that any such patents will be invalid due to prior invention and due to 102(f).

    Now it appears, by design, by the repeal of 102(g) and by the repeal of 102(f), that the exiting inventor can obtain valid patents on our trade secrets and non-disclosed inventions, including obvious variations that may negatively impact our own business in substantial ways.

    What are we going to do? Life just got a lot more complicated.

  13. 63

    Paul, is interesting that that section says nothing at all about common ownership. Further, it only contains a directive to the patent office. It does not provide a legal grounds for invalidity.

    Recall that if prior invention remains prior art under 101, cf. In re Clemens and In re Bass, where the prior invention is communicated to the applicant, there has to be a statutory exclusion to exempt certain kinds of prior invention from being prior art not only for anticipatory purposes but for obviousness purposes. Those statutory exclusions are gone for 103 purposes, and never existed for anticipatory purposes.

  14. 62

    Adverse possession.
    Ever hear of it?
    Read what you posted, but change the facts to a person having title to land, but does nothing when a pirate takes it over.
    Suppose the land is between the road and the beach.  The pirate charges a toll for beach access.  Can the public complain that the pirate doesn't own the land?

    Really the dispute is not whether the public should pay, but who should get the money. So long as the public cannot be double charged, how is the public harmed?

    Regardless, after a few years, a statute of limitations to complain expires, or equity imposes latches. The pirate legally then owns the land.


  15. 61

    If I correctly understood some of Ned’s arguments above, he is saying that the AIA will remove the prior elimination of 103 prior art between employees of the same company or other co-owners of inventions. But note that The AIA includes the following statement regarding section 102(c):
    “CONTINUITY OF INTENT UNDER THE CREATE ACT- The enactment of section 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108-453; the ‘CREATE Act’), the amendments of which are stricken by subsection (c) of this section. The United States Patent and Trademark Office shall administer section 102(c) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office.”

  16. 60

    anon, how many times do I have to point out that the SC was interpreting the statute to be consistent with the constitutonal purpose? 
    I the AIA cannot be so construed, though, it has a problem.

  17. 59



  18. 58



  19. 57

    Great thread. Here some more thoughts:

    In the FtF world, one tells the Patent office BEFORE one tells anybody else. As soon as you tell somebody else, you lose control. Your invention: if it’s interesting enough to pirate it’s important enough to file on. One man’s VC is another man’s “pirate”.

    Filing is cheaper in the FtF world. I think it was FtI that pushed up the cost of filing in the USA. Because there was no need to file till all the details of putting the invention into practice had been worked out the expectation grew, that a fit patent application ought to be replete with such detail. No such expectation ever gestated, in the FtF ROW, where filing a priority-date-defining new patent application is relatively cheap, as it has always been.

    It is NOT hard to imagine a world in which ambitious, or just diligent, decent, ommercially aware, people who come into knowledge of a neat step forward in a technical field immediately convince themselves that they have invented something, and promptly file a patent application on it. And once they have something pending, they will inevitably get proud and possessive. I see trouble brewing.

  20. 56

    Again Ned you miss the point.

    inventorship can be corrected at any time per 116/256 to “make” it valid


    Not “at any time.”

    Further, “can” does not mean “will.” – I have given several reason why this might not happen. Why the party responsible for bringing a derivation action may simply choose not to (or may be simply unaware of the need to do so. Did any of that sink in with you?

    So why is Pirate’s patent invalid

    Off in the weeds yet again. Did I EVER say the patent was invalid? Did I? Why do you keep on throwing this back into the conversation like it means something? STOP. (plus you really need to stop saying “the Pirate’s patent – it is clearly not his).

    Further, the fact that an entity may not want a patent seems to be lost on you. What if that entity that Pirate ripped off does not believe that after the decades of use that it should even have a patent? WHat if that entity is a dogmatic anti-patentist? You are going to force them to take the patent? You also neglect the fact that Coke did not put the formula into the public, that is was only through malfeasance that the invention was put out there. You also neglect the fact pattern as I laid out that Rick Crown, while a second filer, filed before publication of the purloined patent but cannot squeeze into the PUR protection. He is indeed screwed, and suffers direct “but for” harm from the Pirate.

    Further, what if Coke was not a party to the suit brought by Pirate against Rick Crown? Are you going to have a court action involving patent rights with an award to a non-party after that non-party may have quite missed the window on the legally approved method of correcting patent “ownership” through derivation proceedings? For arguments sake, say that all of this happens after the time for filing a derivation has long passed. What then?

    Further, you still are not recognizing the public protection aspects. Do you expect them to disappear because you are not addressing the points I raise? Should I keep raising them even though you ignore them now. What happens in a thread three months from now when the same point comes up? Should I raise them again so that you can ignore them again?

  21. 55

    Ugh!” is right.

    You do not address the points when I make them, I chase you around with them. Then on another thread, you invite the me to go and repost my arguments – why? So you can evade them again?

    I quoted from Pennock the very phrase that states unequivocally that the Supremes were looking at and only looking at the statutory regime that Congress had put in place:

    because, we are of opinion, that the proper answer depends upon the true exposition of the act of congress” – Note that it is the act of Congress being evaluated, NOT the founders under the constitutional clause.

    Further: “If it be a use within the meaning of the statute

    – the statute.

    Guess what – the statute was rewritten. It has a new meaning. The case you quote does not stand for what you are trying to pass off. The case you quote depended explicitly on what Congress wrote.

    Must I chase you around again to get you to recognize this quote from Pennock? What will it take you to stop misapplying the law?


    What Congress decided.

    What Congress wrote.

    Guess what? Congress has decided something else. You keep proclaiming a constitutional infirmity with a case that explicitly relies on what Congress decided to enact.

    You have no basis at all in Pennock to declare an unconstitutional issue.

    As my friends from Boston say: You can’t get there from here.

  22. 54

    Dennis, 102(f)/103 cases are rare only because Congress acted to exclude common owners and co-researchers. In re Clemens made it clear that prior invention communicated co a co-worker was prior art. I attended many meetings in the patent community where In re Clemens and Bass were discussed with great concern.

    The exclusions in 103 are gone. No exclusions in 102 apply to anything like 102(f) art, and certainly do not apply to 101 art.

    If 102(f) is resurrected through without the exclusions that were enacted in 103, we are going to have a major problem on our hands. A nightmare really.

    See, Section B.2.

    In re Clemens, 622 F. 2d 1029 – Court of Customs and Patent Appeals 1980,5#r%5B22%5D

  23. 51

    That world already does exist, to a limited extent. I have seen it with some Japanese companies and some other foriegn “partners” or suppliers. Hence, disclosing inventions to someone from another company while they are still secret, especially on a non-confidential basis [with no trade secrecy legal protection], without first filing at least a provisional application, or publishing, already is potentially dangerous, and is strictly forbidden in most cases by well run companies.
    It will become more dangerous under the AIA. But not just for the interesting reasons Dennis debates above, but because any public disclosure after next March may create instant 102 and 103 prior art against anyone.

  24. 49


    Your Example of Rick Crown:

    1. Coke using coke formula 100years.
    2. Pirate steals formula, files application on date 1.
    3. Rich Crown independently invents formula, files on date 2.

    Both claim the formula.

    Rick Crown cannot complain that Pirate derived from Rick Crown. Agreed that he cannot.

    You contend that this is wrong. Why? If Pirate gets the patent, the inventorship can be corrected at any time per 116/256 to “make” it valid. That is what the statute says. So why is Pirate’s patent invalid and just how is Crown harmed. No one stole from him and he is not the first filer?

    If in court Crown, whose patent has been denied, raises the issue that Coke invented Coke, not Pirate, wouldn’t the judge simply order the correction of inventorship in favor of the Coke inventors? Rick Crown still could not obtain a patent over Pirate’s application or patent.

    Where is the harm to Rick Crown?

  25. 48

    The Supreme Court has already spoken on this.
    Based on a statutory scheme no longer in place.

    Ned, you are getting deeper in the weeds and now are misrepresenting law. You have already agreed that particular cases were overruled. Please adapt your legal arguments so that they stay in bounds with the actual law.

  26. 47

    Fish, I think we deal with Armitage’s plan the way he laid it out. Inventorship issues are gone from validity. Gone. Period.

    A valid patent can issue to one who is claiming the same thing as invented by another, or an obvious variation. To say otherwise would be to create all the problem we once eliminated by excluding 102(f) and (g) prior art in the case of common owners and co-researchers. If an omitted inventor has a complaint, he as a cause of action under 116/256 to have himself named as a co-inventor or THE inventor.

    I hope that we keep this simple and keep 101 out of this.

    IMHO, the constitutional problems are caused by limiting “on sale” to public activities only. Trade secret usage under the AIA is not a bar to an applicant, meaning he can get a patent regardless of how long he has been using the invention in secret. The Supreme Court has already spoken on this.

    I think the SC will construe on sale to include secret use regardless of the otherwise language.

    The link to the piracy situation then becomes this: if the pirate stole from one who has been using an invention more than an year, the patent is not valid because the invention has been in use more than a year.

  27. 46

    On the constitutional question, we also need to think about this on two levels:

    Prof. Crouch,

    How are either of these two items related to a constitutional question (as opposed to a statutory one)?

  28. 43

    Paul, however, Kappos and the PTO now contend, see the Madstad case, that 101 effectively replaces 102(f).

    Now think. Do the exclusions that were formerly in 103 and are now in 102 about common ownership and joint research apply to 101 prior art?


    Thus, if Kappos is successful in the Madstad case and successfully argues that 101 is the same thing as former 102(f), we no longer have the exclusions that colleague prior art cannot be used as prior art. If it is prior art, then the courts will soon declare that obvious variations cannot be patented. (See, obviousness type double-patenting.)

    We therefor have to hope that Kappos does not succeed and that Kappos is wrong in his contention.

  29. 42

    As I have made abundantly clear, whether he does or does not is not the point.

    Get out of the weeds Ned.

  30. 41

    There is quite a large contingent of people who pushed the AIA through that will disagree with you.

  31. 40

    Lets just imagine a world where “we all agree” on anything.

    Do you have room for a few more angels on that pinhead?

  32. 39

    I suggest that “clearly disproven” cannot be based on the reasons for such as they are given.

    To think this way is to ignore human nature. As an example, look at what happened with false marking when the realization of the law changed.

  33. 38

    “Lets just imagine that we live in a world where we all agree that it is a legitimate practice to receive a non-public idea from a third party and then patent an obvious variation of that innovation.”

    I don’t like that world.

  34. 37

    Also see my Rick Crown example.

    Clearly, the fact pattern may involve more than simply the (or more correctly, one of the) true inventors (completely independent of each other) and a derivor of just one of those true inventors (who for any numbers of reasons – dogmatic anti-patent view, trade secret considerations, heck even poverty or plain indifference) may not to “do justice” in pursuing a derivation proceeding.

    Quite to the point here, PUR is another reason why someone may choose NOT to do justice against a derivor. In my example, Rick Crown is still screwed.

  35. 34

    Dennis, since the SC was not construing a statute that unambiguously authorized indefinite trade secret use followed by a patent, we can only guess what it would have held had it had that case.  As you note, there is only a fine line difference between the two.

    On sale historically is a person bar.  It does not apply to independent 3rd party inventions.  That would flummox Pennock's other holdings that use and knowledge had to be public to be good prior art.  See, Hand's explanation of Pennock in Metallizing.

    Regarding the on sale bar, it is prior art to the barred party.  I think the bar applies according to 103.

    It should also bar a deriver who claims the same or obvious variant.   But then, 102(f) has been repealed and Armitage added "otherwise available to the public" to overrule Pennock.

    We have a real constitutional problem here.


  36. 33

    Paul. Thank you for this comment and reality check.  I agree with you that 102(f)/103 cases have been historically rare and will continue to be rare.  However, I would contend that changes in the law will/would change practice and make this an important concern, especially for start-ups seeking funding or contribution from third-parties not bound by contractual restrictions. (In most cases, potential VC will not sign such a contract.) 

    Lets just imagine that we live in a world where we all agree that it is a legitimate practice to receive a non-public idea from a third party and then patent an obvious variation of that innovation.  Many VCs that I know would patent that thing themselves. Even in cases where they join forces with the start-up, the patents would give them leverage and control against both the founders and other investors. 

    Now, the solution here may be to remind start-ups to file their patents before seek outside money.  Of course, patenting takes money (especially doing it right). 


  37. 32

    Anon, then make yourself clear.

    We have a trade secret prior user.  We have a patent that covers the trade secret use, independently invented.

    The patentee, by enforcing his patent, really helps the prior user.  Is that your point?

  38. 31

    Congress has limited powers.  

    Obviously, though, Roberts does not agree; and so those of us who believe that Congress does not have unlimited powers have that man to deal with.

  39. 30

    Anon, I have quoted the relevant passage from Pennock numbers of times, I will do so now, once again.

    "If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly, and make, and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any farther use than what should be derived under it during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries."

    Pennock v. Dialogue, 27 US 1 – Supreme Court 1829, at 19

  40. 29

    The presumption in this post and subject legal articles is that the elimination of present 102(f)/103 prior art rejections or defenses will have a significant impact.
    I suggest that is clearly disproven by the fact that 102(f) rejections have has been so rarely used that it was not until 1997 in OddzOn Products, Inc. v. Just Toys was there a case of first impression as to whether 102(f)/103 even existed as prior art!

  41. 28

    Ned – I don't believe that Pennock v. Dialogue draws the constitutional line that you suggest. The 1829 Supreme Court  interpreted the statute at the time that blocked patents that were "known or used" before the application was filed. In the case, the court first determined that "by the public" should be implied into the statute.  Then, the court held that pre-filing but non-enabling commercial uses by the patentee should count as public uses.  

    Although the case does not directly cite the US constitution, it does refer to "the progress of science and the useful arts."  This suggests a constitutional question. The court writes: 

    If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should for a long period of years retain the monopoly and make and sell the invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure, and then and then only, when the danger of competition should force him to procure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use than what should be derived under it during his fourteen years, it would materially retard the progress of science and the useful arts and give a premium to those who should be least prompt to communicate their discoveries.

    I see this statement as an example supporting their interpretation of the statute rather than rule saying that "a statute to the contrary is unconstitutional."  Perhaps this is a fine line. 

    On the constitutional question, we also need to think about this on two levels: (1) does the secret commercial use invalidate later patent application on the identical invention? (2) is invention being secretly commercially used available as evidence of obviousness against similar inventions by the commercial user? 

  42. 27

    The political support for “our” patent system is fast eroding (see the vast amount of space today’s New York Times devotes to the topic), and problems of the sort highlighted here are certainly not apt to help shore things up. Maybe what is called for is a complete do-over, with a completely new set of statutes and a broader selection of courts with the jurisdiction to interpret and apply them at the appellate level.

  43. 26

    Dan, this point has been raised countless times in recent double-patenting cases, most often involving Lilly.

    The point made is this: If the reference patent is not prior art to the patent having the alleged obvious variation, the patent would be entirely valid if held by a third party.


    Application on A filed.
    Application on A’ filed, e.g., A’ being a new, but potentially nonobvious use of A.
    A’ issues.
    A issues.

    The courts have held, IIRC, that the patent on A is invalid absent a terminal disclaimer. Had A been held by an independent party, it would have been valid.

  44. 25

    anon, what you say here is that the later patent, independently invented, is, in practice, unenforceable by anyone other than the prior user because of the prior user rights.

    No Ned, I expressly do NOT say that.

    At all.

    I also see you straying back to the red herring of “validity.”

    You really need to learn to not muddy the waters with the whole “validity” thing as it has absolutely nothing to do with the actual points under discussion. Every time I see you veer into the weeds with “validity” I must presume that you are just not getting the more important points under discussion.

  45. 23

    I do not have a photographic memory of the explication, nor do i have time to re-teach you. It is captured and if those others wanted to comment, they could have done so at that time.

    As for you disagreeing, no one except you controls that.

  46. 22

    I think that you are right Dan. And, as you suggest, it creates an untenable position that will likely be resolved by the courts. Perhaps the best approach is to find that this activity would also fall within the nonstatutory obviousness-type double patenting doctrine. 

  47. 21

    anon, what you say here is that the later patent, independently invented, is, in practice, unenforceable by anyone other than the prior user because of the prior user rights.

    Universities excepted.

    So, why should you object if the prior user should take ownership from a pirate who exposes his trade secret? Why should you insist that the patent be invalid?

    I think this is contrary to 256 that states that a patent is not invalid if inventorship is corrected. I assume the prior user has a right to take over. But, 256 does suggest that until he does, the patent may be unenforceable. Holding it invalid flies in the fact of the literal command of 256 that the patent shall not be invalid when corrected.

    Your view on 256?

  48. 20

    Dennis, correct me if I’m wrong, but it seems to me that the case law on obviousness-type double patenting wasn’t legislated away by the AIA. Hence in principle situations could arise in which the original inventor himself would be precluded from claiming obvious variations of his invention in a later-issuing application, whereas – ironically – for the reasons you’ve explained, a third party could obtain a patent on those variations.

  49. 19

    anon, while I agree that it has, I also contend that this action by itself redenders the AIA unconstitutional.

    You may have your cake, but you may not eat it too.

  50. 18

    anon, rather than saying that to me, who does not agree with you, why  don't you restate your position here for all to see and comment on if they so choose.

  51. 17


    I have explained to you in the past why overruling Pennock does not raise a constitutional issue.

    I suggest you search for and review my comments.

  52. 16

    Quite in fact Prof. Crouch, it is an incorrect assumption, as Ned as already admitted that both Metallizing and Pennock are overruled by the AIA.

    The very title of the new 102 plainly states that the “loss of rights” section is fundamentally altered (as in, “gone“)

  53. 15

    Dennis, Indeed it is.  This is where I draw the line on constitutionality.  I think it is plainly unconstitutional to allow someone to practice an invention in secret indefinitely and still obtain a patent.  The Supreme Court give us that opinion in Pennock v. Dialogue, and it was not dicta.

  54. 14

    The problem is that PUR actually promotes secrecy at the cost of the patent system. Anything difficult to reverse engineer (i.e. the very things society most gains from disclosure) is “better” protected under PUR than by sharing. If PUR is achieved, there is no limit to location or quantity (until the sale of the asset), and the sale exhausts the patent right of the actual patent holder (who sees zero dollars). Moreover, as PUR only arises as a defense, it can be used to submarine torpedo competition who actually go to the trouble (and expense) of obtaining (and enforcing) a patent against any other would be competitors.

    The freerider effects are immense.

    Now on top of this the very organizations most likely to be able to pursue the (at least as expensive as interference) path of derivation may also actually be able to snag co-inventor rights without footing any of the patent prosecution bill or submitting any (real best mode AKA Trade Secrets) in the process.

  55. 12

    anon, I have to thank you for this post.  It links in to the 102(f) issue the status of the derived invention.  If the derived invention has been used in secret for generations, and let us say that "on sale" bar still applies the way it used to, the deriver cannot stand in a better position than the drived-from party.  Thus, if the invention, albeit secret, of the derived from party is barred under 102(a), the deriver should not be able to obtain a valid patent. 

    Excellent!!!  Bravo!!

    Now if on-sale does not apply, the derived patent is valid and the original inventor may still intervene.  

    Regarding PUR, how does the derived patent affect PUR?  The prior user can still make and sell and his customers can still use.  Where is the problem?

  56. 11

    Anon, assume you are right that prior invention remains in the law to the extent that the patent application is filed by one who learns of the prior invention.

    Does this apply when the prior invention is made by coworker?

  57. 10

    Dennis, we need to point out that the exclusions of common ownership and joint research have been repealed in section 103. If prior invention becomes prior art through 101, which you seem to be advocating, you will upend the statutory framework big-time. To fix this “screw-up,” we would have to pass statutory exclusions of common ownership and joint research not only against 102, but against 101.

  58. 9

    Is or something here that I am missing?

    Ned – yes.

    See my example of Rick Crown. Your insistence on “derivation” as an answer fails precisely becuase you are maintaining that third parties cannot be affected.

    They can.

    They are.

    Even above the examples I have given, you still have problems. Let me give you a tease of an idea that I am still putting together: PUR.

    Ok, a little more of a tease. Given that you agree that certain cases have been overruled, the same end effect will be reached if you take from the derived any valid patent obtained and give to the one derived from. Imagine for a moment that the invention derived was not eligible under the old rules of law because the one derived from had been practicing the invention in secret (for this example, lets say the invention is a process) for years or even decades.

    Why bother with the patent system at all when PUR protects you so completely, and now with your direction, valid patents (prosecuted on someone else’s dime) can also possibly be obtained?

    One cannot help but think about the glorious equine victory trophy signed into law. Who again were the prime backers of this?

  59. 8

    I see it now. But I’ll still read OddzOn. Thanks Ned.

    I have in the past suggested that the AIA variant of “First to File” is more aggressive, turbo-charged and unforgiving than wishy-washy, meak and mild ROW FtF. I was thinking that because every earlier PTO filing by another can be used as the basis of obviousness attacks. Now here I see another reason, to file earlier than in ROW, and file more often than in ROW, or suffer the consequences.

  60. 7

    s/b deriver.

    The second filer finding his invention described in an earlier-filed application, but not claimed, should be able to “remove” that application as prior art against him if he could demonstrate that that subject matter is his invention. This is provided by current law, and I see nothing in the new statutes which would change it.

    Is or something here that I am missing?

  61. 6

    anon, why doesn’t the owner of the underlying subject matter have a cause of action for trade secret misappropriation? And if he does, shouldn’t one of the remedies be assignment of the misappropriated patent to the owner of the underlying subject matter?

  62. 5

    Max, but the problem here is that it is not prior art over something in the public domain. It is prior art only over subject matter that was learned from another such as by a confidential relationship.

    For a better discussion on this I suggest you read the Federal Circuit case on point:
    OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396 – Court of Appeals, Federal Circuit 1997
    link to

  63. 4

    Dennis, I agree with Chico that the derivation statutes are narrow. This is consistent with Bob Armitage’s intent to overrule OddzOn Products.

    Most of us apparently do not fully understand what Armitage was trying to do. Even the patent office cannot accept that a driver claiming obvious variations has a right to claim them and not be harassed by the inventor of the basic invention.

    I would presume that this would also extend the actions under 116 or 256 by a the original inventor of the basic subject matter. Since he is not an inventor of the obvious variation, he may not have co-inventorship rights.

    I don’t think the solution lies in 101, but in an interpretation of section 116/256 that would allow the inventor of the unclaimed basic invention to have himself named as a coinventor where the claims in the target application or patent are not patentably distinct, i.e., are obvious variations of the underlying subject matter.

    Barring that, I don’t think such patents are invalid. I think that we should permit the original inventor of the underlying subject matter to have himself named as coinventor to actions under 116/256 or in the case of a derivation proceeding if appropriate. But I do not believe that third parties should have standing to complain. The fight, if anything, is between the inventor/owner of the underlying subject matter and the pirate. The inventor/owner should be able to correct inventorship and the resulting patent should be valid as provided by sections 116/256. The public is not burdened by a patent on an obvious variation of something in the public domain. It was not in the public domain. Rather the original inventor is burdened.

  64. 3

    If the claim embraces something obvious, it’s unambiguously and unquestionably simply not patentable. End of story, no?

    What’s to stop such claims being held unpatentable or invalid on that ground? Why do we need to concern ourselves with anything else?

    I’m having difficulty seeing the difficulty here. Is it perhaps that obviousness is just too difficult?

  65. 1

    A better term for the AIA defined action might be ‘False Inventorship Claim Proceeding.’

    Even that fails to a large degree – see my comment written after the date of your byline:

    If he files second, why not permit him to invoke a derivation proceeding?

    Upon review, there are problems with this path of your logic Ned, beyond the already mentioned fact that the derivation procedure requires the non-pirate to join in the patent process, something he may be fundamentally against.

    Truth in point is that “invention” may in fact be completed by more than one person independently of each other (in the race analogy, many can be invited to partake in the race). The problem with derivation is that you have to prove that the sham Pirate derived from you personally.

    But what if the sham Pirate derived from another?

    In my Rick Crown example, what if it was Coke that the sham Pirate ripped off and not Mr. Crown? Coke already has no interest in pursuing patent rights to pursue the derivation path (for starters, such a path would mean that Coke itself would have to surrender its Trade Secret). Further, Mr. Crown, even with evidence that the sham Pirate ripped off Coke, could not prove (even if he wanted to pursue a patent and apply the derivation path) that the sham, Pirate derived from Mr. Crown himself, because in fact, the sham Pirate did not derive from Mr. Crown himself.

    Bottom line, the derivation process is not enough protection.

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