In the move to a first-to-file patent system, the U.S. narrowed its pre-filing grace period previously codified under 35 U.S.C. 102(b)(2010). The new law enacted as part of the Leahy-Smith America Invents Act (AIA) continues to permit a one-year grace period but limits the scope of coverage only to a pre-filing “disclosure . . . of a claimed invention” (A) “made by the inventor or joint inventor or by another who obtained the subject matter directly or indirectly from the inventor” or (B) made subsequent to an (A) disclosure. 35 U.S.C. §102(b)(1)(A) and (B)(2015). There are a number of questions up for interpretation regarding the AIA grace period. Examples: Does the grace period apply when the inventor’s initial disclosure is slightly different than the invention being claimed? Does the grace period apply when a third party publishes a modified version of the inventor’s original disclosure?
The proposed Grace Period Restoration Act of 2015 (H.R. 1791 / S. 926) is designed to “correct the drafting problem in the Leahy-Smith America Invents Act relating to the grace period.” In particular, the bill would add a new section 102(b)(3) that creates a stronger first-to-disclose system.
The general hypothetical setup here is that we have a pending patent application or perhaps an issued patent (the claimed invention) that is being challenged based upon prior art whose effective date is less than one year before that of the claimed invention in question. Pre-AIA, the applicant might be able to negate the that reference by showing prior-invention through a process often termed “swearing behind” the asserted art. However, under a first-to-file system, invention-date is no longer directly relevant.
The proposed AIA-amendment here would allow the patentee to negate the prior art so long as the claimed invention had been previously – but still within the one-year timeline – “publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.”
Thus, if the inventor (1) first discloses the invention in a way that satisfies the enablement and written description requirements of section 112(a) and (2) subsequently files the patent application within one-year of the disclosure; then the inventor will be immunized against any prior art whose effective date follows that disclosure. To be clear here, the immunizing would require “public disclosure in a printed publication” and could either be done by an inventor or someone who obtained the information an inventor (either directly or indirectly).
The proposed language:
102(b)(3)(b) PUBLIC DISCLOSURE.—A disclosure by any person shall not be prior art to a claimed invention under subsection (a) or section 103 if
(i) the disclosure is made under subsection (a)(1) or effectively filed under subsection (a)(2) 1 year or less before the effective filing date of the claimed invention; and
(ii) before the disclosure described in clause (i) is made or filed, and 1 year or less before the effective filing date of the claimed invention, the claimed invention is publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.
Here, I have only excerpted the most relevant portions of the statutory proposal. In his remarks, Professor Hal Wegner has identified the proposed amendment as largely serving the purpose of “expand[ing] the definition of novelty under 35 U.S.C. 102 to roughly 1200 words, an unreasonable mass of verbiage that the sponsors couldn’t figure out.”
As proposed, the new grace period definition serves as a layer in addition to the grace period already available under 102(b). The grace period already in existence is narrower in some ways but broader in others. For instance, the triggering initial public disclosure need have been disclosed in a printed publication.
Time will tell whether the proposal has legs. It it does, I hope that we will first see a less cumbersome rewrite.
The iniquity of any grace period is that it encourages naive or ignorant inventors to suppose that they can have their cake and eat it too. They can’t.
Those who thus encourage them are not really interested in using a patents system to promote progress in the useful arts but, rather, to shift the balance in favour of Big Corp.
In politics, such manouevres are given the accolade “triangulation”. It’s a disgrace. They should be ashamed of themselves.
Max, one of the problems I see here is that the statute itself is enormously complex and counter intuitive. Ask a patent attorney to explain the new statute to his client — and he or she will simply throw up their hands.
A simpler approach is needed — thus my proposal below. I thought you would be intrigued on just how simple one can make it if one really tries.
I especially thought you would like the removal of patents and publications as effective art as of their priority dates. Priority dates comes into play only if two patent applications/patents are claiming the same invention. This tracks Euro-law very well, I think.
Ditto removing the concept of “on sale.” What really is required is a public disclosure or use.
Ned, we agree that it is important to keep the statutory provisions simple enough that non patent attorneys can relate to them. In 1973 both UK and Germany had a grace period but look what they did in 1973, when they wrote the EPC. Its grace period (Art 55 EPC) was wide enough to deal with derivation and no wider than that. You shouldn’t encourage university researchers to publish before they file at the PTO. Their premature publication destroys their potential rights, and those of their university, and so harms the national interest. It just benefits trans-national Big Corp and helps other countries.
Ned, forget “prior claiming” please. Both Germany and the UK had a “prior claiming” regime to deal with rival Applicants for the same invention. But that approach was binned. Instead, the EPC has a “whole contents” approach. As one who had to master “prior claiming” in order to pass his UK qualifying exams, I find “whole contents” streets better, fairer, more logical and apt, and just as easy for non patent attorneys to relate to.
Somebody (was it Einstein) once said (in effect) that new scientific theories take over only when youngsters are trained in them. Older scientists, brought up on the older theories, never move to the new theories, they just retire, clinging to the old superseded theories. I think it is the same with patent law.
Max, it may surprise you to find that many Americans, especially startups and universities, give a rats ass about non-US rights. All they want is a U. S. patent. Whether or not their business eventually gets off the ground is a thing of the future. But for immediate concern, one only has to protect against piracy in the United States.
It is simply not true that a U.S. centric approach favor big corps. That is exactly backwards. A patent in the United States effectively controls the entire world from the big business point of view because big business cannot develop a world product without the United States.
Max, when we have grace periods, we effectively have priority that relies on something else than an actual filing date. We have a first kind that may or may not be prior art to a first filer other than the person who creates the prior art. Depending on the answer to that question, there may be two validly issued patents. Thus the answer must be determined in a single forum.
Today we are discussing a second form of grace period. This too will grant another form of priority, not based on an actual filing. The resolution of whether this “publication” is sufficient not only to support a filing date, but to be effective prior art against another, should be determined in one forum , not two.
And then we have a general problem double patenting to deal with because we exclude so much art because of common ownership, etc.
All told, unless we have some kind of interference where we can sort these rights, there is going to be a lot of double patenting going on, not only in big companies that remove prior art because of common ownership, but among rival inventors completely unrelated to each other. Interferences are the only just way to resolve competing interests to the same invention.
No, it doesn’t surprise me Ned. Of course, when piracy within the USA is the threat, the vital need is an issued US patent. Whether an issued US patent is enough to stop world-wide competition, that might depend which industry you are considering. Within Europe, a patent in Germany is all you need in the auto industry but you need a bit more if your industry is pharma.
You write that the grace period will result in much double patenting. I expect you’re right. In your proposal for 102, you write that the enabling disclosure of the claimed subject matter has to be “by” the Inventor. Suppose the Invention is a surgical Instrument and its Inventor is an employee of J&J. Do disclosures of the instrument by any element of J&J “count” as being “by” the Inventor?
Max, of course it does.
That is why we don’t have to include excruciating detail in statutes. They embrace common law. They are written in context.
That is Judge Rader’s opinion in BMC resources was so off-the-wall. He interpreted “whoever” in section 271(a) as being a single person when the U. S. code defined “whoever” to mean one or more. Such “reasoning” by a federal judge is almost inexplicable.
A better idea?
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was publicly known or publicly used prior to
(A) the effective date of application for patent in the United States; or
(B) the date of its public disclosure in a manner that enables one or ordinary skill in the art to make and use the claimed invention by an inventor within 1 year from the date specified in subsection (A); or
(2) the claimed invention was previously patented in the United States.
Then provide that a patent applicant or patentee may have a right of action to remove a patent previously granted to another based on 1) derivation; 2) his own earlier right of priority. If two applications are involved, the first filed will be senior party will be granted the patent unless the second-filed proves earlier priority or derivation.
A terminal disclaimer would still be allowed in the case of obviousness-type double-patenting.
Publicly known and public used is sufficient to cover publications. On Sale is eliminated except to the extent there is public knowledge or use. As well, 102(e) prior art is entirely eliminated in favor of the double-patenting approach. Only if two inventors are claiming substantially the same invention do we get into filing or priority date contests.
*** Corrected, corrected version **** [out of the box. intended to promote discussion]
Consider designing a Grace Period that will maximize innovation (yielding winning inventions that society uses). For example:
“Activities by an applicant(s)/inventor/co-inventors(s) or derived from the them, in the grace period “T” (e.g., T = 1 year; optimize) before the invention was filed will not be a bar to patentability”.
If no application was filed for an invention after the grace period for public disclosure, the invention is considered dedicated to the public.
That is, all public-disclosure that occurs in the grace period is allowed, as long as an independent third-party did not publish or file first.
Note: This an out of the box alternate to absolute novelty at time of filing.
——————————————————————————
Caution on the idea that there is just a winning invention.
Even in a simple case, a winning invention often evolves through multiple intermediate inventions that are found to be failures, often during post-invention validation/testing where there are risks of an unwanted public disclosure.
Requiring a high quality Provisional (PPA) [with ultimate claim support] at every intermediate failed invention, drains resources & slows the process of getting to the winning invention.
Let the applicant(s)/inventor(s) strategically file (fewer) intermediate Provisionals based on risk of an independent third party either publishing or filing first.
Of course, Applicant(s) will try to minimize actions that might result in third party problems.
Actions by the applicant(s)/inventor(s) in the grace period (e.g., validate/test invention) do not need to be a bar to patentability:
Testing in public would not be a bar.
Video/audio by others of testing in public would not be a bar.
Text by others of what they saw would not be a bar.
Asking for feedback would not be a bar.
Discussing in public would not be a bar.
Even if it happens, a publication by applicant(s)/inventor(s) [or derived] would not be a bar. …. etc
This proposed grace period is especially useful for those with less resources, the ~0%-80% side of the 99%, newbies, start-ups, etc.
———————————————————————-
Note: In more complex cases, there may be forks, branching and branch recombining happening and there may involve multiple winning inventions.
*** Corrected version **** [out of the box. intended to promote discussion]
Consider designing a Grace Period that will maximize innovation (yielding winning inventions that society uses). For example:
“Activities by an applicant(s)/inventor/co-inventors(s) or derived from the them, in the grace period “T” (e.g., T = 1 year; optimize) before the invention was filed will not be a bar to patentability”.
If no application was filed for an invention after the grace period for public disclosure, the invention is considered dedicated to the public.
That is, all public-disclosure mistakes that occur in the grace period are forgiven, as long as an independent third-party did not publish or file first.
Note: This alternate to absolute novelty at time of filing, is intended to speed up innovation.
——————————————————————————
Caution on the idea that there is just one invention, as the invention process usually involves many intermediate failed inventions along the way.
Even in a simple case, a winning invention often evolves through multiple intermediate inventions that are found to be failures, during post-invention validation/testing where risk of an unwanted public disclosure is greater.
Requiring a high quality Provisional (PPA) [with ultimate claim support] at every intermediate failed invention, drains resources & slows the process of getting to the winning invention.
Let the applicant(s)/inventor(s) strategically file (fewer) intermediate Provisionals based on risk of an independent third party either publishing or filing first.
Give applicant(s)/inventors more flexibility to advance their invention(s) more quickly at lower cost/effort, while still obtaining a patent.
Of course, Applicant(s) will try to minimize actions that might result in a third party problems.
Actions by the applicant(s)/inventor(s) in the grace period (e.g., validate/test invention) do not need to be a bar to patentability:
Testing in public is not a bar.
Video/audio by others of testing in public is not a bar.
Text by others of what they saw is not a bar.
Asking for feedback is not a bar.
Discussing in public is not a bar.
Even if it happens, a publication by applicant(s)/inventor(s) [or derived] is not a bar. …. etc
The grace period is especially important for the disadvantaged, those with less resources, start-ups, newbies, etc.
Even experts make mistakes and may be saved by the grace period.
———————————————————————-
Note: In more complex cases, there may be forks, branching and branch recombining happening and there may involve multiple winning inventions.
Disregard. See 12 for corrected, corrected version.
BIOSIG INSTRUMENTS, I N C . v . N A U T I L U S , I N C .
link to cafc.uscourts.gov
On remand, the same panel that decide that the claims were not indefinite again found they were not indefinite after remand from Supreme Court. The claim term at issue regarded a “space relationship” between electrodes on the grips of heart monitor associated with exercise apparatus intended to cancel out background noise. The court ruled that any one of ordinary skill in the art would know to adjust the electrode spacing of the left and right hands until the background signals dropped to zero when subtracted from each other.
However it was interesting that the patent owner’s expert said they did more than just adjust the spacing in order to get the signals to drop out. They also did adjusted the grip materials, etc. None of what they actually did was disclosed the specification.
The Federal Circuit observed:
Available design variables are
then adjusted until the differential output is
minimized, i.e., close to zero, and the ECG to
EMG ratio is determined to be sufficient for an
accurate heart rate determination. J.A. 200–01.
The Federal Circuit seemed to decide that regardless of how these other variables were adjusted, or even if they were the only things adjusted, any spacing whereby the concerned background signals dropped out was covered. Thus, if one came up with a totally inventive alternative way of cancelling the background noise, that alternative would infringe even though no adjustment was ever done to the spacing.
This case might return to the Supreme Court.
Hey, Random, I was thinking of you when I read this “brilliant” piece by the Federal Circuit. I cannot wait for your review.
Consider designing a Grace Period to increase/maximize innovation:
“Activities by an applicant(s)/inventor/co-inventors(s) or derived from the them, in the period “T” (e.g., T = 1 year; optimize) before the invention was filed will not be a bar to patentability”.
If no application was filed for an invention after a period “T” of public knowledge, the invention is considered dedicated to the public.
Under FITF the applicant(s)/inventor(s) must still be first inventor to file.
That is, all public-disclosure/screw-ups/mistakes that occur in the period “T” are forgiven, as long as you are still first to file.
——————————————————————————
Give applicant(s)/inventors the greatest flexibility to advance their invention(s), while still obtaining a patent.
Let the applicant(s)/inventor(s) weight the risk of an independent third party filing first.
Of course, Applicant(s) will try to minimize actions that might result in a third party filing.
But actions by the applicant(s)/inventor(s) in period “T” are not a bar:
Testing in public is not a bar.
Video/audio by others of testing in public is not a bar.
Text by others of what they saw is not a bar.
Asking for feedback is not a bar.
Discussing in public is not a bar.
Even if it happens, publication is not a bar. ……
The grace period is especially important for the disadvantaged, those with less resources, start-ups, newbies, etc.
Even experts screw up at times and might be saved by grace.
The “grace period” as envisioned by the AIA (in both the original and the proposed amendment) and some commenters here is just a pillow to soften the blow for those opposed to first-to-file.
Consider designing a Grace Period to increase/maximize innovation:
There is nothing in your proposal that would “increase/maximize innovation.”
The grace period is about giving people who are ignorant of the law a second chance. “Innovation promotion” has nothing to do with it.
The grace period is especially important for the disadvantaged, those with less resources, start-ups, newbies, etc
The “disadvantaged”? Do you mean handicapped people or people incapable of understanding what “file before you disclose” means? Who are these “disadvantaged people” and how much innovating are they doing that we need to create a loophole in the law for them?
start-up
Virtually every “start-up” whose success depends on one mor more valid patents is savvy enough to understand what “first to file” means. As everyone who’s paying attention knows, an increasing number of “start-ups” are shell companies created by perfectly seasoned patent attorneys for the purpose of manipulating loopholes in the broken the patent system.
those with less resources
What does “having less resources” have to do with following a basic and easy-to-understand rule? As with the “newbies” exception, if these are the targeted constituents, then define them and use those definitions to exclude those who don’t fit within the parameters from taking advantage of the handholding provision. Again, it should go without saying that the parties who take most advantage of the “grace period” — by a massive margin — will be the parties filing the most patents. Those parties aren’t “start-ups”, “newbies” or “disadvantaged.”
I disagree that ANY grace period is (or even should be) about inoculating anyone about ignorance of the law.
Good point.
My proposal is not really about mistakes or not knowing the law.
See corrected, corrected version at 12.
the ~0%-80% side of the 99%
My proposal is not really about mistakes or not knowing the law.
See corrected, corrected version at 12.
Disregard. Please see corrected version at 11.
Disregard. See 12 for corrected, corrected version.
This proposal reminds me of the language in the 6 month grace period provision of the EPC:
link to epo.org
which plays a real life role once in every blue moon.
Still, I suppose it’s attractive to a populist legislator, to include a big bold grace period. You show the people that you’re alive to the importance of blue sky innovation and to the need to protect its fruits.
How is the language reminiscent?
The 6 month grace period you refer to does not appear to have any third-party effects whatsoever, and merely allows under an extremely stringent set of circumstances the filer to show his item to the public prior to filing – it is only an inoculation of the strict time sense for the filer.
I was alluding to the “due to or in consequence of…”language.
This proposal would in effect create a first-to-publish system by restoring the ability to swear behind independent third party prior art.
This would not just fix a “drafting problem” in the AIA, and would run counter to the objective of international harmonization set out in the preamble of the AIA.
One issue created by AIA for unwary inventors is the unintended crowd-sourced prior art created in commentary sections of Kickstarter et al. Example: inventor creates invention and publishes on Kickstarter seeking funding. People discuss, in the commentary section, variants or additions to the invention already contemplated by the inventor, but not disclosed in the published campaign – e.g., “wouldn’t be cool if…”. Prior art, right?
People discuss, in the commentary section, variants or additions to the invention already contemplated by the inventor, but not disclosed in the published campaign – e.g., “wouldn’t be cool if…”. Prior art, right?
It’s plainly not prior art as to any disclosure by the inventor but it certainly is prior art as to these alleged “contemplations.”
Disclosing your invention before you file your application is always risky and, in the absence of a very well-drafted non-disclosure agreement, unwise.
I agree with your comment MM. Within the context of discussing what the system “should be” within the US, my goal was to highlight an unfortunate (from my perspective) and an unexpected (from a layman’s perspective) result of our current laws. Obviously my example does not relate to or impact large businesses with established patent pipelines, but it certainly has consequences for the first time patentee. I personally don’t think the current law achieves the appropriate result in this particular example.
I think not, as that is one particularly easy example to show the “derived from” element is reached.
The real problem was when someone instead of putting a comment on such a board, instead ran off and invented that obvious variant and won the race to the patent office and the first to publicize cannot show derivation and loses his original invention because the obviousness of the variation works in both directions, and since the “protection” was not available to the first to publicize, the AIA rendition of grace period was gossamer thin.
It is incredibly f001-hardy to believe that any invention that proves out to be worthwhile in any art field that has multiple players (and remember that the notion of “race” involves multiple racers), will somehow “magically” not be mired in “me-too-but-I-did-not-“see”-that-first-to-publicize” obvious-neutron-bomb that removes patent possibilities for all concerned (and plays directly into the hands of Big Corp who benefits most from such patent-annihil@tion).
Assuming you are sitting within one year of your future nonprovisional filing, and you have in front of you a document that satisfies 112 that your client intends to publish:
1. As of now, shouldn’t you go ahead and file a provisional?
2. If the bill passes, shouldn’t you still go ahead and file a provisional?
Sounds good, but see below and the (not-so-silly) aspect of claims.
It is a struggle to keep teaching clients that a provisional should be written with as much care as a non-provisional, as so many simply think that their PowerPoint slides will do.
Anon,
I agree. But then, and i dont understand this, why not go ahead and file a nonprovisional?
Filing it is not bad – it’s the mindset of “quick and dirty and that’s good enough” that many clients (for whatever reason) struggle with.
I blame – in part – the “sniff it must be bad” attitude fostered here.
A few reasons. They might want to see if they will be using the invention a year from now. There may be standardization involved, and if the idea does not make it into the standard, it has less wo rth and may not be wo rth filing. Are there competing ideas (e.g., several applications filed concerning different techniques for solving the same problem/performing the same fun ction)? If so, which ones will become important for offensive reasons (you think you’ll use it) or defensive reason (you won’t use it but it’s a good idea you don’t want anyone else to use, as it designs around your main idea). Other ideas may not be worth much and can be left to go aban doned.
A few reasons. They might want to see if they will be using the invention a year from now. There may be standardization involved, and if the idea does not make it into the standard, it has less worth and may not be worth filing. Are there competing ideas (e.g., several applications filed concerning different techniques for solving the same problem/performing the same function)? If so, which ones will become important for offensive (you think you’ll use it) or defensive (you won’t use it but it’s a good idea you don’t want anyone else to use, as it designs around your main idea). Other ideas may not be worth much and can be left to go abandoned.
It is a struggle to keep teaching clients that a provisional should be written with as much care as a non-provisional,
It’s actually really easy. It takes one sentence, followed by the reminder that “you were warned.”
Real people in real life who come up with an idea that may be patentable usually are shocked to learn that they may have forfeited the right to any kind of patent by publicizing it (including simply sharing with friends) before they file.
They never heard of provisionals.
They have never heard of Dennis Crouch, Ned Heller and, or 6. Should we not care about them anyway?
“They have never heard of Dennis Crouch, Ned Heller and, or 6. Should we not care about them anyway?”
I’m always surprised to find out just how well known I am. Ned must simply be known everywhere he goes in IP circles by now, I’m sure D is.
6, I was pretty well known back in the day — maybe not to the same degree as Bob Armitage — but he did make me chair of the patent law committee of the AIPLA when he was president.
Yeah what happened? You just drop out of the scene or what?
6, actually, I went on to become a member of the board. After that, I got bored with the AIPLA no longer being in a leadership position and just stopped attending their meetings.
But once the move to FTF got heated up, I found myself at odds with the AIPLA, since I continued to believe in FTI — sans interferences, though, which were a problem.
Then I went to a couple of meetings and found the a tremendous amount of antagonism against “trolls,” but at the same time, and inconsistently, the organization supported business method an software patents, the primary source of the the troll patents.
The AIPLA had become a joke in my view –hopelessly tangled in contradiction with only one clear position — whatever IBM wanted, IBM got. Mossinghoff’s statement at the anniversary meeting at the PTO about how the 9-0 Alice decision was like the split decisions from the 30’s and 40’s that caused the bar angst is a case in point. He says the Alice case is a problem, when the whole point here is that IBM and its allies are wrong and have been wrong all along that a programmed computer defined patentable subject matter without more.
I think these folks, like Mossinghoff, are intimidated. They cannot think clearly.
And, as I said, the AIPLA has become a joke.
“And, as I said, the AIPLA has become a joke.”
Well that’s what happens when ned heller leaves lol!
Same thing with the Office with Jon Dudas’ departure?
6, Bro, did you catch what your man-crush had to say about those who are against IP..? To the question as to the reason for anti-inte11ectual property sentiments, he responded:
“If you are against inte11ectual property is has to be because of greed of ignorance.”
Then he says “Hit the gym.”
No joke – over at Quinn’s place. Looks like he is trying to shed that puppet image of the “Reject-Reject-Reject” era…
Lol took me awhile to find the article. You should just tell me the titles of the articles you quote on there.
Anyway, I quite agree with him, the gym is where a lot goes down “at the high levels” from what I hear. Especially in the early morning time. Appropriately so imo. Less formal atmosphere gets the job done. And I definitely agree with him giving people the advice to go to the gym, no matter who they are.
I also agree with him somewhat on the greed or ignorance part, but not quite so whole heartedly. Those are potential reasons, but other reasons exist outside of those two.
So just to be clear, this would in effect make three different grace periods applicable to pending applications (depending on which grace period applies, when the application was filed, and what regime the application or patent is examined, validated, and/or enforced under). Talk about making a complex system even more complex… why can’t they just live with that they have? Fixing a drafting error is a little bit of a polite way of saying let’s do the whole first inventor to file but not disclose but sometimes disclose but only in a certain time but only in a certain way rigmarole… just to keep American exceptional-ism because we can’t follow the rest of the world and we’d like to make it even more difficult to follow ourselves — just make people understand that public disclosures are bars and if they disclose then they can’t get back what they’ve given… would be simplest to give up the ‘grace’ period in as graceful a way as possible.
“just make people understand that public disclosures are bars and if they disclose then they can’t get back what they’ve given”
In case you forgot, the whole point of the system is to encourage disclosure asap. While the row may not give two fcks about that, I think the congress in our country probably does.
I have to chuckle as I am agreeing with 6 and saying screw ROW.
It’s time that people remember that patent law is sovereign law and that the U.S. should be trying to make it so that innovation is MORE rewarded here.
O’Sully, I fully share your concerns. We need to take a look at 102 as a whole.
1. What should be included in prior art and why.
2. What about patents that issue that cover the same invention. What are we going to do?
3. What do we want in exchange for a grace period?
1. I think prior art should be limited to public knowledge and use. The new statute says this, but in nonstandard language, in its retention of archaic items like “patented,” “printed” and “on sale.”
2. The limitation to public knowledge and use eliminates the use of secret prior art of any kind. Thus anything not otherwise published or placed into the public domain cannot be prior art. This would eliminate patents and patent applications being prior art as of their filing dates. It would overrule Milburn.
3. But what then of two patents claiming the same invention? Why not directly address the issue and declare that the one with the earlier priority date prevails. But, this will require a showing by the second-to-file that he or she is entitled to priority. This time however one can only rely on their filing dates or the sufficiency of the public disclosure to prove entitlement, not conception and reduction to practice.
4. We also have to deal with derivation in the case of two patents claiming the same invention. I do not think we have to however deal with prior art that is derived from the inventor as a statutory exception.
5. In order that one receive a grace period, one has to disclose something that enables the public to make and use the invention. Anything less than that would be or should be treated as ineffective. There is no quid pro quo. Thus a disclosure by the inventor that enables one to make and use is what should entitle the inventor to the grace period. Otherwise no dice.
Also, a disclosure that is derived from the inventor that enables should be treated in the same way. Thus the focus on derivation “prior art” should be not only be on whether it came from the inventor, but whether it was enabling. If not, the public has not received anything by which the inventor should be accorded a grace period.
A simpler approach. A draft is below.
Decent proposal.
However I think they should add 112 (b) in as well.
This is so much better than the “shielding” concept that the current law sets out, where there’s some sort of weird piecemeal comparison between the reference and the applicant’s prior disclosure, so I hope they get rid of the AIA’s 102(b)(1)(B) and (b)(2)(B) as part of this legislation. After all, they say this fix is to avoid lots of costly lawsuits, and those subsections are really just asking for chaos.
How many university (or other) disclosures satisfy 112(a) for claims not even fathomed at the time of the typical disclosure event?
This appears to open a new can of worms, and prudence still limits “sharing” of any sort until an application has been prepared (with claims), so that proper 112(a) support can be determined.
How many university (or other) disclosures satisfy 112(a) for claims not even fathomed at the time of the typical disclosure event?
Even Tony Stark couldn’t afford all the Iron-y of this statement.
See if you understood how 112(a) worked, that disclosure of one thing cannot support “one thing plus all the things that perform the same function”, you would recognize there’s no scope problem here. A university CAN’T satisfy 112(a) for the subject matter you’re talking about.
not even fathomed
If only there were some sort of requirement that you prove personal possession (i.e. “fathom”-ing) of the full range of your scope in order to meet 112(a), amirite?
Alas, your views on 112 remain off, with your fixation on some sort of code-level detail that is simply not required, and your inability to understand the ladders of abstraction that more than 95% of claims with any value utilize.
And not surprisingly, you still side with Stark (I’m on the good Captain’s side!)
anon, can you claim subject matter you haven’t described?
Can you claim subject matter you have not enabled?
The fact that a functional claim reads on one embodiment does not mean that the specification enables every and all ways of achieving the claimed result.
Clearly Ned, you do have to understand what the ladders of abstraction mean, and how badly – in context – our pal Random has missed that understanding.
You are chasing the wrong windmills here my friend.
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