by Dennis Crouch
Perhaps the greatest impact of the shift to a first-to-file system is that the US’s traditional one-year grace period has been greatly reduced. Prior to the America Invents Act (AIA), it was fairly straightforward process for patent applicants to take advantage of a one-year pre-filing grace period – with the basic result of negating would-be prior art created in the one-year time period prior to filing. Under the AIA, a grace period still exists, but only as to pre-filing disclosures either (1) made by (or derived from) the inventor or (2) subsequent to a prior disclosure by or from the inventor. This means that – under the AIA – a third-party disclosure made even one-day before your patent application filing date will normally negate your patent. From an international comparative law framework, the AIA grace period is still more forgiving than that of most other countries whose grace period only applies when an invention is disclosed pre-filing through malfeasance such as theft or fraud.
I should note here that the particular scope of the grace period under the AIA is somewhat unclear and will require interpretation by the courts. A reasonable reading of the statute would have the potential of greatly narrowing and limiting grace period so as to make it essentially ineffective.
Universities and independent inventors have pushed to restore the grace period to its prior expanse. Because these entities tend to lack fully-internal product development and funding regimes, they typically look to make pre-filing disclosures in order to at least test the waters of economic and practical viability.
Taking a middle ground, a bipartisan set of Senators and Representatives have proposed the Grace Period Restoration Act of 2015. [Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), along with United States Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI)].
I have not yet seen the text of the proposal, but the basic idea is that the amended statute would not fully restore the grace period to pre-AIA days but would clarify the AIA grade period in the following ways:
- Clarify that no pre-filing disclosure by the inventor within the one-year will jeopardize patentability either on anticipation or obviousness grounds
- Clarify that the inventor’s pre-filing disclosure of the invention in a printed publication (within the one year grace period) immunizes the application any subsequent disclosure by a third-party.
The proposal here is being framed as fixing an unintended error in the AIA, and I think that is a largely correct historical statement and that there may be support from leaders in both the House and Senate. However, there will be push-back by those who (1) prefer a system better harmonized with the rest-of-the-world and (2) prefer a system where it is easier to invalidate a patent.
The discussion here, between Ned and random, reminds me of the discussion in Europe in the 1970’s, when the European Patent Convention came into force.
As between the rival filings of different inventors, how to adjudicate priority?
Well, one can use a “prior claiming” regime as in the UK Patents Act 1949. But this leads to absurd results and legal complexity as exemplified in the Kromschroeder cases.
Or one can adopt the “whole contents” approach of the EPC, now adopted world-wide and also (if I understand it right) in the AIA.
At the time, UK patent practitioners were totally perplexed, even bamboozled, by the EPC “whole contents” approach. This might be Ned today.
Younger guys, for whom prior claiming was “before their time” could not understand why the oldsters had a problem with whole contents thinking. How else can one sensibly adjudicate priority, they wondered.
German patent attorneys have it particularly hard. Their 20 year patents under the EPC are adjudicated under the “whole contents” approach but their 10 year patents (Gebrauchsmuster) are still adjudicated under a “prior claiming” regime.
Come on Ned. Whole contents is not that hard to understand. You just have to rid yourself of any “prior claiming” thinking.
Max, you must have missed the substance of the debate. I agree with and argued to Random that once a right to priority is established – not just claimed – established, the whole contents of the priority document is available.
The whole debate here is that the distinction between a claim to priority, and the right to priority.
Random has vociferously argued that one does not have to establish a right to priority in the first place.
Now Max, how does one establish a right to priority in Europe as opposed to a claim to priority? I presume that one must establish that the priority document supports at least one claim in a fully enabled matter. Is that right?
Thanks for the answer Ned but I do not understand the distinction you make. I guess you mean the difference between i) merely asserting a right to priority and ii) being entitled to benefit from the priority date.
In Europe, we look at an individual claim and ask what is its “date” ie is it the filing date or is it some earlier declared “priority date”. We do this Claim by Claim. Suppose Claim 1, to a medical guidewire, generally recites “biocompatible metal” and dependent Claim 2 recites specifically stainless steel. The prio doc discloses only the specific stainless steel but the PCT has Claim 1 and includes a nitinol example for good measure. Well, in Europe, claim 2 has the prio date but Claim 1 only the filing date
In Europe, you claim a priority by claiming it, under Art 88, EPC:
link to epo.org
The right to claim that priority is set out in Art 87 EPC:
link to epo.org
By Art 89 EPC that declared priority date “counts” as your filing date.
note in Art 87 the all-important words “same invention”. The caselaw of Europe is very strict about whether the priority document is an application to protect the “same” subject matter as that of the claim in view. In my example above, a claim to a gw of bio-compatible metal is not the same invention as a stainless steel gw.
Usually, it is not until a third party disputes the entitlement of claim 1 to the priority date that the priority issue is examined at all. When that happens then, yes, the owner of Claim 1, needing the priority date to protect the validity of the claim, will have to see off those attacks by demonstrating that i) the prio doc is indeed an application to protect the “same invention” as Claim 1 and that ii) the prio doc provides an enabling disclosure of that same invention.
Is any of this problematic for you?
Not at all.
Let’s talk a hypo.
Assume the priority document of a reference describes a transporter like we see in Star Trek, but simply uses an black box in the disclosure with the words “n-dimensional tunnel mechanism” with no description of what that is, or how to make and use it.
The referenced patent that claims priority to the aforementioned priority document describes how to make and use and n-dimensional tunnel mechanism; and claims a transporter. I would hope you would agree that the referenced patent is not entitled to the priority of the priority document.
The patent under question for validity purposes has a priority date before the referenced patent but after the date of the priority document. It discloses and claims a transporter having an n-dimensional tunnel mechanism.
I would hope you would agree that the referenced patent is not good as a reference as of the date of the priority document principally because the referenced patent does not in fact have priority in fact because the priority document is not enabling with respect to an n-dimensional tunnel mechanism.
Hypo…?
Ned, I really wish that you would put your strawman away.
You are the only one being hung up on whether or not the item in the past has the appropriate capability of supporting the later item’s right to claim priority.
No one else’s is discussing that point.
It is NOT “the substance of the debate” – at all.
You are in the weeds and cannot seem to understand that EVERYONE is asking you to get out of the weeds.
In Europe, a prior doc D1 discloses X. X would be novelty-destroying if it were enabled. But D1 is not a novelty destroyer if D1 does not enable X.
Is that your point Ned?
Ned: “Let me assure you that we do not have two or three or more effective filing dates for patents depending on whether we are considering prior art, claims or just the patent. We have just one.”
Random: “Any given subject matter has only one effective filing date. The effective filing date of Subject Matter X can be entirely different than the effective filing date encompassed by Claim Y. When the document is being used as prior art, you simply don’t consider the effective filing date of Claim Y, you consider the effective filing date of the subject matter you are citing to.”
Question for all, does “effective filing date” mean something different depending on whether one is looking at prior art or priority?
Example: A patent discloses X, but claims priority by mistake to someone’s else’s provisional application that discloses Y. No common inventor. No continuity of subject matter. No support for any claim.
Can is seriously be contended by anyone that the patent can be cited as a reference for its disclosure of Y as of the filing date of the provisional?
Next consider a patent that has a claim for priority to a provisional application that does not provide 112 support for any claim, not one. What is the effective filing date of that patent?
Ned,
Get a grip on yourself.
Your strawman here of an improperly claimed priority has NOTHING to do with what Random is trying to tell you.
Any wrongly claimed priority is exactly that: wrong; and thus ineffectual for any purpose. No one except you is even suggesting otherwise.
You are again showing the same type of confusion that you have shown in conversations with me.
I almost (almost) feel sorry for Random as he tries to impress upon you a very very simple idea.
In the famous last words of anon/Rich/David, when in doubt, read the statute. If that doesn’t help, read the cases.
Effective filed is defined and as defined is consistent with the case law.
If a claim in a patent is effectively filed in a parent, that subject matter has an effect filing date of the parent.
(i)
(1) The term “effective filing date” for a claimed invention in a patent or application for patent means—
“(B)
the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
Notice, anon, the word “entitled” Notice anon the words “such invention.”
WRT the latter, we have this
“(j) The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent.”
A claim to priority does not mean that a priority claim is effective. In order to be effective, a claim in the patent must have 112(a) support in the priority case, and further, if there is a chain, the benefit chain must be valid and the subject matter must be present in the each member of the chain.
“Effective filed is defined and as defined is consistent with the case law.”
Ned – you really should stop arguing with only points that you raise and debate.
It looks rather comical for you to wrestle with your own strawman.
anon, I’m sorry, but Random said this:
The reference is a published application claiming priority to a provisional application that discloses subject matter Y. the published application does not disclose the subject matter Y. Random claimed that he could cite the published application for disclosure of subject matter Y as of the date of the provisional application.
What is your view, anon?
Ah, okay if you’ve got a problem with me saying “the published application does not disclose” instead of “the non-provisional itself does not disclose” I see your point there. The non-provisional incorporates the provisional. The publication discloses to the public that Y is known, and the earliest filing date of Y is the provisional date.
I can at least understand this mistake on your part. That is a far cry from talking about the claims of the non-provisional.
Are you now saying that if the non-provisional also disclosed Y you would understand that the prior art date for it (regardless of whether the non-provisional claims it or not) is the filing date of the provisional?
Btw, I say it’s a mistake on your part because you’re forgetting that 1) a claim to priority is a de facto incorporation by reference and 2) information incorporated by reference is the same as actual text. I admit I could have worded the published application/non-provisional thing better.
De facto?
One has a right under the rules now to amend into an “application” subject matter from a priority document.
But that is not the case with respect to an issued patent.
And that is not the case with respect to a published application.
Random, do you agree or disagree with a simple proposition that there is a distinction between a claimed priority and a right to priority?
Sure there’s a difference, but we’re getting way into the weeds here. I’ll agree that there could be a difference based upon me saying that the non-provisional didn’t mention the subject matter. That doesn’t change the vast majority of cases where the non-provisional WILL mention the subject matter, and that causes the reference to be the filing date of the provisional, which is the major distinction between the current way of doing things and what you propose.
(i)(1) defines an effective filing date for a claimed invention.
Does 102(a)(2) ask for the effective filing date for a claimed invention in the reference ? No, it asks for the effective filing date of the description itself. It is clearly meant to give a prior art date of the provisional for all of the subject matter described by the provisional.
Your reading would be ridiculous – it would mean that 102(a)(2) couldn’t be used to reject anything that isn’t the subject of a claim, because nothing but claims get effective filing dates according to you. We don’t reject claims with claims (at least under 102/103). We reject claims with descriptive prior art disclosures. You want to turn 102(a)(2) into some form of a double patenting rejection. It is not that. Moreover, the logistics would be downright st*pid – What if the reference is still pending, do we take the claims as filed or the claims that currently exist? Can one applicant pay another to cancel a claim and thus remove prior art for him?
Everyone knows that if P teaches A and NP teaches AB (and the NP publishes), I can reject future A’s as of the P date and future B’s as of the NP date. This is not a difficult concept, it’s kind of basic AIA.
A claim to priority does not mean that a priority claim is effective.
That’s just a totally different issue entirely. Nobody but you is talking about the priority date of a claim. Everyone else is talking about the earliest effective prior art date of a reference.
If that doesn’t help, read the cases.
If your interpretation is correct, the office has probably erred hundreds of thousands of times in the past few years. Show me one case that premises an earlier prior art date based upon claims in the non-provisional.
Random, in most cases one does not have to establish a right to priority of a reference because they are continuations. But with respect to CIP’s and to 119 type priority, one cannot assume a right to priority.
Once priority is established, I agree that the whole contents of the priority document is available provided it is also set forth in the reference.
“We conclude, therefore, that claims 48-51 are entitled to the benefit of their foreign priority date under section 119 only if the foreign priority application properly supports them as required by section 112, ¶ 1. ” In re Gosteli, 872 F. 2d 1008 – Court of Appeals, Federal Circuit 1989
Thus, if NO claim in the reference is supported in the claimed priority case, the benefit claim is not effective. The so-called priority document is not in fact a priority document.
The PTO simply assume that priority is established. It is up to the applicant to demonstrate lack priority benefit in point of fact. I presume the simplest way of doing this would be to show that the priority document simply has no enabling disclosure even though the reference itself might.
Thus, if NO claim in the reference is supported in the claimed priority case, the benefit claim is not effective. The so-called priority document is not in fact a priority document.
This I simply don’t agree with. If a NP claims priority to a P and the P describes the element (and, to remove another argument lets say the NP describes it in the exact same way) the P date is the prior art date, no further requirements. Show me a case that says otherwise.
The entire office would disagree with you.
Random, That is why we have a court system.
The principle is easy to understand. The reference is the patent or published application. The question is what is the effective date of this reference for prior art purposes. If this reference is not entitled to the priority date of a claimed parent for whatever reason, there is no basis in the law to extend its prior art date back.
The way you phrase it, it seems that you are citing the priority document as the reference, and not the other way around. Thus, all you look for is whether this document is claimed as a priority document in a published application or patent. You don’t even bother to consider whether the subject matter is carried forward or whether the priority claim is effective.
This is backwards, truly.
Take your bow and arrow example. A patent discloses and claims a particular arrow, but has no disclosure of particular kind of bow.
The patent claims priority to a provisional application that discloses a particular kind of bow, and a generic arrow. Because the particular arrow of the patent is not supported in the provisional in the manner provided by 112(a), the patent is not effectively filed as of the date of the provisional.
(Note, that both 119 and 120 both allow the benefit of an earlier filing date for “inventions” that are supported in the manner of 112(a). If no claimed invention is supported, there simply is no statutory basis for 119 or 120 benefit.)
Because there is no benefit under 119, the patent cannot be used as a reference for
1) the particular bow; or
2) the particular arrow
as of the date of the provisional.
Next, assume the particular arrow is disclosed in the provisional. The patent now is now entitled to benefit of the filing date of the provisional for all the patent discloses that is also disclosed in the provisional.
Thus, the patent is an effective reference for
1) the particular arrow; but
remains not effective for
2) the particular bow.
I have had numbers of occasions where examiners have cited patents or applications as of the date of a provisional for subject matter not supported that provisional. In every case, I have been able to get the examiner to withdraw the reference if the filing date of the provisional was critical.
I have never had an examiner cite a reference not disclosing the subject matter that forms the basis for the rejection. Not once.
So, it may not be that the entire office agrees with you Random.
Ned, you keep on beating up on the strawman of an improper prior art connection.
No one else is in that discussion.
The entire point revolves about the correctness of the claimed priority being a given fact in order to discuss a different point.
It’s hilarious how much you just don’t seem to get it.
anon, not really.
If 120 priority is claimed, and there is co-pendency, subject matter carried forward, common inventors, there is no problem at all because the claims in the reference must be supported in both the reference and the parent.
But when we get into CIPs and 119 priority, there is no assumption of benefit of the filing date. Random denies that there be actual entitlement to the benefit. I just gave an number of examples where the is clearly no entitlement just to illustrate the point.
Anon, now to you personally. If an examiner cited a patent against as of the filing date of a provisional filed more than a year prior to the filing date of the patent, what is the basis of your traverse?
What if the provisional had no common inventors?
What if the provisional did not disclose the subject matter in the patent forming the basis of the rejection?
What if the patent did not disclose the subject matter of the rejection but the provisional did?
What if the provisional disclosed nothing that was enabled.
What if the provisional disclosed no utility for a new composition?
Etc.
Ned, you STILL keep on beating up on the strawman of an improper prior art connection.
No one else is in that discussion.
The ENTIRE point revolves about the correctness of the claimed priority being a given fact in order to discuss a different point.
It’s hilarious how much you just don’t seem to get it.
anon,
Random’s whole premise is that one does not have to have actual benefit of a filing date of claimed priority application for a reference to be prior art as of the filing date of its claimed priority application. He seems to think that 102 has an entirely independent and distinct statutory basis for priority for prior art purposes.
Perhaps you jumped into the convo late.
Oh, just in case you still do not agree, would you agree that in the following the prior art date of the reference is not as of the filing date of a claimed priority application in the following cases:
120 benefit claim. No co-pendency.
120 benefit claim. No common inventors.
120 benefit claim. Reference application is not filed in the US.
119 benefit claim: Referenced application filed more than a year prior.
119 benefit claim: Reference application never filed due to failure to pay filing fee.
119 benefit claim: Reference application has no common inventors.
Another problem with university patenting efforts is the issue of “common inventive entity.” (names another inventor). University practice of listing authors is completely different than the definition of inventorship under patent law, and as such, publications by a different set of authors (even a single person such as a lab tech or graduate student) can create “prior art” as being from a different inventive entity. Authorship of university papers is not a different inventor, but the USPTO treats them as such.
Europe eschews a grace period for utility patents but deliberately wrote one into its much more recent pan-European design patent regime.
Designers need a grace period. To give one to inventors is a bad idea because it does more harm to inventors than to anybody else. Ask Julio Palmaz the inventor of the transluminal stent.
I welcome this debate. As the English say “You pays your money and you takes your choice”. What is the choice? A: First to File, B: First to Invent, and C: First to Publish.
ROW has always had A. The USA has always (pre AIA) had B. But is C the best? Given that the very purpose of a patent system is to get enabling disclosures out to the public as early as possible, one would think, yes.
But to get these enabling disclosures out, an incentive is needed. System A delivers that incentive with certainty. The one who is first to file an enabling disclosure of a contribution to the useful arts that is new and not obvious gets 20 years of exclusive rights.
With systems B and C, one struggles to define that “bargain” (between the inventor and the public) clearly enough to deliver a level of certainty that is delivered by system A. Uncertainty will favour trade secrets over filing patent applications, so uncertainty impedes the progress of the useful arts.
The past is no guide to the future. Just because the USA had system B and now dominates in technology does not prove that the reason for the world dominance was system B. Nowadays, the big filers are international, and set up inventor shops where they flourish best. So it is, that 50% of all filings at the USPTO and at the EPO are non-domestic filings. Favouring domestic over non-domestic filings might have been in the national interest in former times but I doubt it is any longer, going forward.
I’m really not convinced that the national interest is best served by encouraging one’s iniversities to publish before filing at the PTO.
^^^ All kinds of flotsam from the foreigner (whose interests mayhap are NOT to have US be the world dominant innovation engine).
An inventor walks into the the patent department of big company or law firm and submits his invention disclosure for patenting. It is date stamped. That disclosure fully supports the broadest claim in a later non provisional application.
If the date-stamped invention disclosure is filed with the non provisional, Max, why should it not be give credit? Why must it be actually filed in a patent office and given the patent office’s date stamp?
What mechanisms would there be to establish and maintain trust of the date stamp of patent department of big company or law firm?
What benefit does this have over filing a provisional application if the disclosure fully supports the broadest claim in a later non provisional application? Provisional applications are cheap. Why wait to submit the document at the time of filing the non-provisional?
OK, then notarized.
But, just how many patent departments/law firms file an invention disclosure on the very day they receive it?
I know of one — the one I used to manage. But I know of no other.
Because the inventor made the conscious decision to keep the invention secret for a while, even though the law firm could have instead filed a provisional application the very same day that the inventor plunked down his invention disclosure.
On the other hand, imagine there’s a second independent inventor who arrived at the same invention later than the first inventor, but who opted to engage the government in the quid pro quo of the patent process first. That is what FITF is supposed to encourage – disclosure of one’s invention to the public sooner rather than later.
A provisional application is never published.
Technically false Ned, as provisionals are deemed published when a child that claims priority to a provisional is published.
True, but that is “deemed.” And the date of publication is the date of publication of the application or patent, whichever, not the date of filing of the provisional as Random claimed.
See my response to your posting at 1.1.1.3.1.1.2. Here, I will copy the aia:
(a) NOVELTY; PRIOR ART.–A person shall be entitled to a patent unless–
(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.
Let’s say there’s provisional P and non-provisional NP. P teaches about subject matter X. Under 102(a)(2) I can cite to the NP, assuming it publishes, and because X is supported by the P, gain the effective filing of P.
It’s not a question of publication DATE of the application, so long as it HAS been published. It is true, as you say, that P is “deemed published” as of the publication date of NP. But the statute does not limit me, when applying it as prior art, to the date something is deemed published. I’m entitled to the date a published item was filed in the office . The filing date of P establishes the effective disclosure to the public of X, and that’s what I get to use.
Good question Ned. Why not a “First to Date-stamp” system.
Rank the following date stamps in order of the level of trust you have, that they can never be back-dated:
1. USPTO
2. The PTO in China
3. A company incorporated in one of the States of the USA
4. A company incorporated somewhere in China
I had a patent case in London once, in which the outcome depended on the date stamp carried on an engineering blueprint belonging to an Italian company. The process of discovery (alien to the law of Italy)revealed that the stamp had been back-dated.
I have not yet had a case in which a PTO date stamp turned out to have been surreptitiously back-dated. I expect that I never will.
One should be careful to implement a patent law that nurtures trust, not one that will inevitably dilute it. Why? Because it is trust that keeps the wheels on the waggon of civilisation. This is why I do not like your scheme Ned.
Max, perhaps lack of such reliability is what really doomed interference’s and first to invent?
I wouldn’t know about that Ned. Not for me to comment.
Ned: perhaps lack of such reliability is what really doomed interference’s and first to invent?
I don’t think there can be any doubt about that.
^^^ LOL – leave it to Malcolm to Fail even on such a collateral point.
You do know that the “spin” of “inter fences are bad” was just that – spin – right?
How else do you explain the fact that the mechanisms of this denigrated system were basically adopted whole (or made even worse) in the AIA?
You apparently stopped after your first three words of “[Malcolm] doesn’t think“
What is the most common example that the “clarifications” would fix? I’m not seeing a major difference.
“being framed as fixing an unintended error in the AIA, and I think that is a largely correct historical statement”
Alas, I cannot agree, as here and elsewhere (including my calling each of my representatives and explaining this outcome), this “unforeseen” consequence was – in fact – entirely foreseen.
DC: the AIA grace period is still more forgiving than that of most other countries whose grace period only applies when an invention is disclosed pre-filing through malfeasance such as theft or fraud.
Seems like most other countries have this figured out.
What’s the deal with American innovators? They need to be able to “test the waters” before they can be bothered to describe their invention in detail, in writing, and file a provisional at the USPTO? And that, apparently, takes an entire year. Or so we’re told.
The quote from the DC is not accurate wrt the laws of other countries.
Can you correct it?
here is a summary sheet wrt grace periods in monst WIPO countries \
link to wipo.int
malfeasance/theft is one circumstance which can trigger the grace period, but by no means the only circumstance
Thanks Will
Dennis enquires what is the correction to his:
“the AIA grace period is still more forgiving than that of most other countries whose grace period only applies when an invention is disclosed pre-filing through malfeasance such as theft or fraud.”
I would simply replace the word “most” with “those”.
The way I see it, looking out from Europe, only the EPC has no grace period.
Whether the grace periods given all over Asia are more or less liberal than the one under the AIA I am not competent to assess.
But even the EPC has, in its Art 55 (link below), a provision to save those suffering from malfeasance:
link to epo.org
What’s the deal with American innovators? They need to be able to “test the waters” before they can be bothered to describe their invention in detail, in writing,
I’m sure its the same thing that causes American Entrepreneurs to always complain that they can’t compete because they are hamstrung by American policies as if Europe or China had so much more economic freedom.
And to H with Harmonization!!!!!
I agree. Any harmonization, other than maybe procedural, I am categorically against. There is no divine guidance on the best way to run a patent system. This isn’t about protecting human rights or something.
Each country has different needs, wants, and priorities, and each country should express those wants in its patent system.
And, what harm is there to Americans who would retain their traditional grace period in full flower, while still eliminating interferences?
Corroborated conception documents can and should be treated as provisional applications provided they are filed and are of record prior to publication.
The would might actually like and adopt such a form of grace period. But, why not be the pioneers?
And, what harm is there to Americans who would retain their traditional grace period in full flower, while still eliminating interferences?
None, unless you want to take into account the 99% of the people who don’t have patents yet would benefit from the earlier pressure to disclose. You could make the same argument for expanding the grace period to two years or five, or expanding the patent term by just as much, as long as we agree we’re not going to consider the public welfare.
Corroborated conception documents can and should be treated as provisional applications provided they are filed and are of record prior to publication.
When an examiner picks up a case with a provisional, he can search properly because he knows the effective filing date. When an Examiner picks up a case that hasn’t been published yet but allows for corroborated conception, you mind as well tell him to search without knowing what the filing date is.
A provisional will be made public if the patent is pending. A “corroborated conception document” may or may not be filed based on the art cited against it. More importantly, a publication will ALWAYS be made public. Which benefits the public the most? Which is the easiest to fake?
?
You got to be kidding, Random. The examiner should never assume a provisional is entitled to the filing date of the non provisional. Never. It has a CIP relationship to the non provisional. New matter might and normally is added.
The examiner should cite art prior to the non provisional filing date and force the applicant to prove his or her entitlement to priority.
The conception document should be treated the same way. It must be on file, and dated, but not be given any weight until the applicant actually relies on it to remove art. Then he or she should prove full 112 support for the claims at issue.
There appears to be a lot of bad examination going on in the PTO even by good examiners.
I think a lot of it is caused by the poorly designed examination process.
You got to be kidding, Random. The examiner should never assume a provisional is entitled to the filing date of the non provisional. Never. It has a CIP relationship to the non provisional. New matter might and normally is added.
That was not what I was saying. Because the record is complete when it gets to the Examiner, the Examiner can say that subject matter X gets this date and subject matter Y gets that date. You want to put the Examiner in a position where he has to assume that the entire grace period may be open to the Applicant, i.e. you would effectively eliminate pre-AIA 102(a)s from existence, because no Examiner is going to base a rejection on art that can be so easily sworn behind.
The examiner should cite art prior to the non provisional filing date and force the applicant to prove his or her entitlement to priority.
You realize we have the provisionals right? We don’t have to test you, we know whether or not the document is sufficient when we pick up the application.
The conception document should be treated the same way. It must be on file, and dated, but not be given any weight until the applicant actually relies on it to remove art. Then he or she should prove full 112 support for the claims at issue.
Except the provisional WILL move the AIA 102(a)(2) reference date back upon a patent that claimed priority, prior to examination, that becomes published. Your suggestion a) won’t move the date back at all because it doesn’t move the effective filing date, b) won’t even allow the document to be prior art and c) even if it were construed to move the filing date, the ability to only file it after examination has started makes a difference to other applications.
The examiner should cite art prior to the non provisional filing date and force the applicant to prove his or her entitlement to priority.
Also can I point out that even if we couldn’t decide for ourselves whether the provisional is enabling, the policy is to not test it unless you have no other choice. That’s a good policy, because if it turns out you used the NP date when the P date was valid you’ll be doing one of those uncompensated second non-finals.
The system worked pre-AIA because it’s relatively rare to move the effective filing date once examination has begun. People apparently don’t file the affidavit and swear behind because that is a difficult standard to meet. How rare? I personally have seen exactly one in three years. How often do I see provisionals? Maybe every fifth application. Other than that affidavit we know what the correct effective filing is prior to our search. Post-AIA even fixes the bug more – there’s virtually no way for you to swear behind the art we find so long as the first thing we search is your inventor (and if you do we can at least say its our fault for not finding the publication). You would eliminate that because virtually every major company can file a document, prior to publication, which would move the effective filing date – you’d see it happen constantly.
That’s a lot of pointless work for the Examiner to do. Moreover, assuming such a (and I say this in all fairness) ridiculous thing started happening, the Examining corp would just stop citing things within the grace period, because nobody is going to risk doing free work when it’s safe to just stretch the interpretation of older art.
You check for 112 support for all claims? And all possible limitations added from the spec?
This is possible only if the provisional and the application are the same.
Random, “because if it turns out you used the NP date when the P date was valid you’ll be doing one of those uncompensated second non-finals.”
Exactly why your compensation system is part of the problem. Whatever numskull designed the system, may he be recorded in history for what he is and was. We do not today laud Nero.
You check for 112 support for all claims? And all possible limitations added from the spec?
Most provisional documents are not very long (at least in my experience), it’s a lot easier to just read the provisional and see what subject matter it discusses and then you know what gets the earlier date.
Regardless, it’s not asking us to do anything we’re not supposed to do with the non-provisional anyway. There’s no special skill, so why would we need to “test” the Applicant over it?
Whether it actually gets done is a matter of which Examiner you have though. There’s a significant percentage of people who automatically give the P date because they never make a 112, 1st rejection anyway. (And that logic isn’t even internally consistent, but whatever)
And… I’m off the Ned Heller train.
The whole point of first-to-file is make it administratively easy in inference determinations. If we bring in “conception documents” that defeats the purpose. Do the conception documents have to entail the entire invention? Or just the “point of novelty?”
Yeah! restore the grace period.
If harmonization is such a SUPERGREATGOODBETTERBEST thing, then let the inventors in the rest of the world have a grace period, too.
Achtung!
Heute the US, morgen die gonze Welt!
Actually, I we should allow non US inventors to take advantage of our grace period only in exchange for reciprocal rights. No more unilateral surrenders. Here me France?
Should be “ganze.”
J, treat them exactly like provisionals. Moreover, require that they be filed.
Filed like a provisional, acts like a provisional, quacks like a provisional…
Is it not a provisional?
Not sufficient.