Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result

by Dennis Crouch

Dynamic Drinkware v. National Graphics (Fed. Cir. 2015)

The underlying issue in this IPR-appeal is the effective date of prior art: How do we treat prior art patents and published applications that claim priority to provisional applications?

The patent being reviewed – National’s Patent No. 6,635,196 – was applied for on November 22, 2000 but claims priority to a provisional application filed in June of 2000.  National was also able to show that by March 2000 the inventor had completed the invention and reduced-to-practice (RTP) the claimed lenticular lens insert.

The alleged prior art is U.S. Patent 7,153,555 (“Raymond”) was filed in May 2000 and but claims priority back to a February 2000 provisional application filing.  The Raymond provisional is somewhat different from the later-filed non-provisional and so the question is whether the effective prior-art date stretches back to the provisional filing.

On its own, a provisional patent application does not qualify as “prior art” under 25 USC 102 (old or new) and the tens-of-thousands of provisional applications abandoned each year without any further patenting-action are not prior art. However, the Federal Circuit has indicated that (under pre-AIA 35 USC 102(e)) a later-filed non-provisional application will be given the prior-art date of the provisional filing (once the non-provisional is published or patented).  Giacomini.

The somewhat convoluted 102(e) indicates that a US patent application becomes prior art once it is either published or issues as a patent. And, at that point, the reference is back-dated to the application’s filing date.  Section 119(e) describes how an application having a priority claim back to a provisional patent application “shall have the same effect, as to such invention, as though filed on the date of the provisional application” so long as the provisional application sufficiently discloses the claimed invention under Section 112(a).   Weaving these together in Giacomini, the court ruled that an issued patent will be considered prior art as of its provisional filing date – so long as the provisional provides written description support for the invention claimed in that issued patent. In considering the prior art status of Raymond, the PTAB examined the patent claims and compared them to the provisional disclosure — finding that the provisional did not provide adequate support for the claims.

Anyone who works with prior art knows that this setup is an oddball way to addres the situation.  A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed.  My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

The Federal Circuit merits discussion began by stepping through the process of challenging the prior art’s provenance:

  • First the patent challenger raises the prior art and explains its priority claim (here, done in the IPR petition).  Without further challenge, the patent would be deemed prior art as of its provisional filing date.
  • Then the patentee can raise the argument that the provisional priority claim does not satisfy the Written Description. By satisfying this burden of presentation, the burden shifts back to the challenger.
  • Finally, the patent challenger must prove that the provisional provides proper support.

Thus, once the issue is raised the court will (rebuttably) presume that the provisional does not provide adequate support. “[B]ecause the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”  In Giacomini, Federal Circuit seemed to have implicitly come out the other way – counting the provisional as prior art without proof of WD satisfaction.  Here, the court distinguished that situation by noting that Giacomini had waived that argument by failing to challenge the written description support.

As noted above, the rule here is that the prior art date of a patent (or patent application) stretches back to the provisional filing date if the provisional provides written description (and enabling?) support of the claims of that patent (or application).  Confusing that rule, the patent challenger here focused on the particular disclosure-of-concern for its invalidity argument and showed that the disclosure was found in the provisional.  Unfortunately, according to this odd rule, the challenger’s explanation is insufficient.

Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden. A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.

 

With the provisional filing date knocked-out for the Raymond prior art, the unpatentability case crumbled and thus, the Federal Circuit here confirmed patentability of the challenged claims.

= = = = =

  • The result here is silly – and somewhat disturbing – that under the first-to-invent rule the second inventor gets a patent.  Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent.  But, since Raymond’s non-provisional application included additional subject matter, the provisional disclosure no longer counts as effective prior art.
  • The AIA rewrote Section 102 and re-codified the old 102(e) into 102(a)(2) and 102(d).  The new rule is also a bit unclear — indicating that the disclosure found in a patent or published application will be given a prior art date of a priority filing document if the patent or application is entitled to so claim priority and the priority filing “describes the subject matter” being relied upon as prior art.
  • One element that is unclear from this is whether being “entitled” to claim priority/benefit requires 112(a) support of the claims. The court explains in a footnote: “Because we refer to the pre-AIA version of § 102, we do not interpret here the AIA’s impact on Wertheim in newly designated § 102(d).”
  • Post-AIA: Of course, regardless of the Wertheim issue above,  the outcome of this case flips post-AIA because the prior art cannot be avoided simply by showing an earlier date of invention or reduction to practice. Thus, the patentee would lose here because its priority filing date is subsequent to the prior art’s effective date.
  • My take is that, once the provisional becomes public that the law should regard a provisional application’s prior-art status as of its filing date.  The PTO should also be creating a public database of provisional application filings that can be searched and relied upon as a prior art tool.  For American companies, the failure to make this change means that many of their provisional application disclosures often will not prevent third-parties (half of which are non-US companies) from obtaining patents on identical innovations.

 

198 thoughts on “Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result

    1. 17.1

      Thanks, Paul.

      The fact that the PTO are not examining and the applicants are not demurring against a reference cited as of its provisional’s filing date for whether the patent or application’s claim are not supported is well known. Why this is, is unknown. But Wertheim and Giacomini have been about for some time. Decades for the former.

      But for petitioners not to know the law? Typically these guys have very experience counsel filing their petitions.

        1. 17.1.1.1

          102(d), right?

          Well the way it reads is a problem as well. All that is required for prior art effect is for there to be, in the case of § 120, a common inventor and codependency, and in the case § 119, a common inventor and a filing date within one year of the priority date.

          There is the further requirement that the subject matter be disclosed in both the priority application and the priority-claiming application.

          But there is no requirement for an actual claim to be made in addition to there being no requirement that any claim be effective. In my humble opinion, this is potentially disastrous. How can one reliably say that one’s patent is valid if one cannot use the records of the patent office to even search for the prior art if the effective prior art date of a patent or an application that potentially is a reference is not of record in the patent office?

          Just an example. My patent discloses and claims invention X. Joe Blow’s patent discloses X, but it is filed six months after my applications filing date. Joe Blow’s patent contains no priority claim. However, what if someone discovers an abandoned application (provisional or otherwise) with an earlier filing date that discloses X that has a common inventor and which could have been claimed as a priority application. (This sometimes happens intentionally when one does not want to have his term limited by the filing date of the earlier application – one simply allows that earlier application to go abandoned while filing another application with the same subject matter.)

          Chaos.

          1. 17.1.1.1.1

            if one cannot use the records of the patent office to even search for the prior art if the effective prior art date of a patent or an application that potentially is a reference is not of record in the patent office?

            Interesting – but not unlike the existing problem with the fact that one can request non-publication of one’s NON-provisional application.

  1. 16

    It might help to recall that provisional applications were originally introduced into the US patent system to correct a perceived handicap to US inventors in relation to their foreign counterparts. It was part of the Uruguay Round Agreement Act (Pub. Law 103-465), Title V, Subtitle C, Sec. 532(b) “Establishment of a Domestic Priority System”. This appears to be at least one reason why the priority/benefit effect language was inserted into 35USC119 instead of 35USC120, and no change to pre-AIA 35USC102(d) or (e) was made at that time. Effectively, the provisional application was intended to be treated as a domestic equivalent to a foreign application, and both its priority and prior art effects of subsequent US applications claiming 35USC119 priority were intended to be equivalent.

    Thus, just as a US application claiming priority from a earlier foreign application had prior art effect (as opposed to the distinct priority effect upon its own patentability) only to its US filing date, and not back to its foreign filing date, the US provisional application itself was likewise intended not to have any prior art effect. I’m not sure Congress got the language right, since it is unclear how far “have the same effect as” extends, and in particular whether it extends bey0nd the priority effect upon the application’s own patentability to also (perhaps unintentionally) also include prior art effects to others.

    A detailed explanation of the statutory language in 119(e) should be found somewhere in HRept 103-826, parts 1 or 2, but unfortunately I can’t seem to find a copy.

    1. 16.1

      But, then, Mark, there was that whole Brouhaha with the EPO about whether a provisional application was a regular patent application under US law so that it might form the basis of Paris Convention priority.

      We assured the EPO it was.

    2. 16.2

      RE: — the US provisional application itself was likewise intended not to have any prior art effect. —

      At the time, I remember words to the effect that the provisional filing date was a shield, but not a sword.

      As to Wertheim, from the USPTO


      In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon
      Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926),
      for its conclusion that the patent must actually be entitled to the
      benefit of the prior-application for any subject matter in the
      patent to have a prior art date under 35 U.S.C. 102(e) as of the
      filing date of the prior application. The legislative history of the
      AIA indicates that: Paragraph (2) [of AIA 102(d)] is intended to
      overrule what remains of In re Wertheim, 646 F.2d 527 (CCPA 1981),
      which appeared to hold that only an application that could have
      become a patent on the day that it was filed can constitute prior
      art against another application or patent. See 157 Cong. Rec.
      S.1369-70 (Mar. 8, 2011). The Office has previously indicated that
      the reasoning of In re Wertheim, 646 F.2d 527 (CCPA 1981), did not
      survive the amendment to 35 U.S.C. 102(e) in the American Inventors
      Protection Act. See, e.g, Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606
      (Bd. Pat. App. & Inter. 2008). In In re Giacomini, 612 F.3d 1380
      (Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit
      (Federal Circuit) held that a patent was effective as prior art as
      of the filing date of a provisional application claimed under 35
      U.S.C. 119(e).

      –link: link to uspto.gov

      1. 16.2.1

        Now this, Larry, explains a lot. The USPTO did not like Wertheim and wanted it overruled. It’s discussion of Giacomini, while accurate, in context, is misleading.

        We shall see about 102(d). The Way it reads is ambiguous as all get out. Does this give the PTO Chevron deference?

        Not if Scalia is writing the opinion.

        1. 16.2.1.1

          It was not just the USPTO which considered Wertheim gone in 1999 before the AIA. From the Finnegan website:


          The legislative history also discussed the definition of new §102(d) and its intended role in
          assessing the prior art impact of patent filings:
          §102(d)(2)] is intended to overrule what remains of In re Wertheim, 646 F.2d
          527 (CCPA 1981), which appeared to hold that only an application that could
          have become a patent on the day that it was filed can constitute prior art against
          another application or patent. [“For if a patent could not theoretically have
          issued the day the application was filed, it is not entitled to be used against
          another as ‘secret prior art,’ the rationale of Milburn being inapplicable.”].
          Wertheim, however, was already almost completely overruled by the American
          Inventors Protection Act of 1999, …which, by making any published application
          prior art [as of its filing date], effectively displaced Wertheim’s requirement that
          the application have been capable of becoming a patent on the day that it was
          filed.

          As to ambiguity, the Finnegan site also mentions


          There is a slight but perhaps very significant difference between the language “entitled…to a
          right” of priority/benefit in new §100(i) and the language “entitled to claim a right” of
          priority/benefit” in new §102(d). There are those who argue that being entitled to actual
          benefit is not the same as being entitled to claim the right to benefit. The legislative history, in
          its famous “why people hate lawyers” moment, discussed this difference:
          In section 100(i), which defines the effective filing date of the patent under
          review, the patent must be entitled to the priority or benefit itself under the
          relevant sections. Here again in section 102(d), however, the application need
          only be entitled to claim the benefit or priority under those sections. This
          difference in language, which offers an excellent example of why people hate
          lawyers, distinguishes between the core requirement of section 120 et al.—that
          the application include an enabling disclosure—and the ministerial requirements
          of that section—that the application be co pendent and specifically referenced.
          In effect, an application that meets the ministerial requirements of co pendency
          and specific reference is entitled to claim the benefit or priority, but only an
          application that also offers an enabling disclosure is actually entitled to the
          benefit or priority itself.

          1. 16.2.1.1.1

            I put that “slight” difference directly to Ned already.

            His answer? He wants to somehow make that clear difference into an “ambiguous as all get out” thingie.

            Welcome to the boards, Lawrence; I hope you can stomach Ned’s “versions” of things.

          2. 16.2.1.1.2

            Perhaps in a first to invent system there is a policy reason to recognize the invention disclosed in provisional application that is abandoned and to which there is no effective priority claim, but I fail to see any policy reason to deny a first filer his patent based upon an abandoned provisional application, even if its contents is later made available by the subsequent publication of a non provisional application or patent that makes reference to it.

            Where is the justice in this?

            Why are we still trying to preserve vestiges of first to invent? The policy behind Alexander Milburn and Dennis’s above complaint is that the first inventor should get the patent and that patent office delays should not count.

            But now, it the first to file a US patent application should get the patent, and he should have the benefit of his filing date for claimed inventions. But we should not go out of our way to maliciously deny that first-filing inventor his patent based on an abandoned, unpublished, provisional application.

            102(d) is malicious since we no longer have first to invent. Repeal it now.

            1. 16.2.1.1.2.1

              Note, the way the statute reads, it makes no difference whether the published application or patent makes a claim for priority or not. None. One cannot look at the patent and file history and determine what the effective prior art date of the patent is — as it is entitled to an effective prior art date of any other patent application, or provisional application, that Names at least one inventor and copendency or being within one year in the case of a provisional. A common inventor. Copendency. One year in the case of a provisional. That is all that is required to make a claim.

              Under the wording of the statute, it does not matter in the slightest whether one is actually entitled to the benefit.

              This is a potential disaster the more one thinks about it.

              This is the consequence of not requiring actual entitlement to the priority claim.

                1. …but hey, do your job well in blowing a hole beneath the waterline of the good ship AIA Titanic, and you just might get your wish (and a lot more, eh Paul ;-) )

  2. 15

    Can we formulate a practice tip from this decision?

    If you are challenging a pre-AIA patent’s validity and you wish to rely on the disclosure of a priority provisional application as of that provisional application’s filing date [note: I’m ignoring the semantic distinction between relying on the provisional and giving the published non-provisional the benefit of the provisional filing date], you need to do the following:

    (1) confirm that the disclosure you intend to rely on to attack the challenged patent is present in both the provisional and the published application/patent [Ex parte Stalego, 154 USPQ 52 (Bd. App. 1966)];

    (2) identify a claim in the published non-provisional application (or patent) that is entitled to the provisional filing date. The subject matter of the claim in the published non-prov app (or patent) need not have anything to do with the disclosure you intend to rely on to attack the challenged patent. The best practice, therefore, is to pick the most-likely-enabled claim (probably the narrowest) with verbatim written description support in the provisional;

    (3) show that the claim in the published non-prov (or patent) finds 112 support in the priority provisional;

    (4) be prepared to argue that the provisional disclosure you are relying on to invalidate the patent is also enabled.

    Am I missing anything?

      1. 15.1.1

        Exact same practice tip for a CIP-child/non-provisional-parent

        I don’t think so. If you wish to rely on the disclosure of a first non-provisional application, where that non-provisional was cited as a priority document for a subsequent application (e.g., a CIP “child”), you don’t need to identify a “supported claim” in that subsequent application. It’s irrelevant. Just identify your invalidating disclosure in the first non-provisional. It’s either there and it’s enabled or it isn’t. If it’s there and it’s enabled, it’s prior art as of the filing date of that first non-provisional.

        If you weren’t asking a question and you were making an assertion, perhaps you were thinking of a specific scenario that isn’t addressed by my response. If so, feel free to share that scenario with everyone.

    1. 15.2

      That sounds about right to me.

      On the flip side, if a patent owner faces a validity attack based on a third party patent that was never published, and the attack relies on that patent’s provisional date, could the patent owner:

      1) buy the third party patent;
      2) identify some feature in the patent that is not disclosed in the provisional and file a narrowing reissue application to add that feature to all claims; and
      3) argue that the priority claim is not effective?

      1. 15.2.1

        That’s impressively diabolical. ;)

        I’m not sure that it works, however, given that the published patent with the original claims is still “out there” even if it’s not legally enforceable as a patent anymore. It can’t be the case that any legal “defect” in a published “invalidating patent” (is there a better term?), e.g., abandonment, nullifies its potential usefulness as prior art.

        1. 15.2.1.1

          MM, I agree, the prior art status of a reference should not change or be changed by later events. It is what it is on publication.

          1. 15.2.1.1.1

            Except – as I have pointed out (and invited you to reply [silence]), what exactly that publication means is not what you think it means.

    1. 14.1

      (B) (i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1). (ii) An applicant may rescind a request made under clause (i) at any time.”

      Anon, seems like the application will be published.

      So?

  3. 13

    Today’s oral arguments in CMG Financial vs. Pacific Trust Bank illustrate perfectly the glacial pace of understanding that results when the CAFC relies on battling attorneys to explain the law regarding subject matter eligibility.

    Let’s get this bit out of the way first: CMG’s financial service claims are going down the tubes as ineligible. There’s a 90% chance it’ll simply be a Rule 36 affirmance of the district court judge’s decision.

    Towards the end of the arguments in a discussion with the defendant’s attorney, Chen notes that financial methods are dying like flies and asks whether a claim to a “new” financial method that fails to recite any non-tangible (i.e., concrete, technical) improvement can possibly pass 101. The answer, of course, is “no” (of if you want to waffle, “I don’t see how it’s possible”) but for some mysterious reason the defendant’s attorney can’t — or won’t — answer the question.

    The recording ends on the usual sour note with the patentee’s attorney reciting the tired script (“claims as a whole!” “claims need to be read as a skilled artisan would read them!”) while everyone ignores the elephant in the room and thinks about a fresh cup of coffee.

    1. 13.1

      When do you counsel clients or do prosecution and/or litigation? How do you possibly have time to listen to oral arguments? Or to read the latest decisions handed down by the CAFC? Or are you not a real attorney?

      1. 13.1.1

        How do you possibly have time to listen to oral arguments?

        They can be played “in the background” while you work.

      2. 13.1.3

        The difference between hearing and listening is appropriate to point out here.

        If you don’t bother critically thinking, lots of things can be streamed simultaneously.

        1. 13.1.3.1

          I’ll be listening to the arguments in Hemopet v. Nestle shortly. Those will be fun.

          link to skeptvet.com

          1. A method of analyzing nutrition for a canine or feline animal, comprising:

          accessing at least one database that comprises first data relating genetic descriptor genomic data to a physiological condition, wherein the genetic descriptor genomic data is obtained from either a bodily fluid or tissue sample;

          accessing second data comprising the effect of nutrition on the expression of the genetic descriptor genomic data;

          analyzing, by use of a computer, the first and second data, relating the effect of nutrition on the expression of the genetic descriptor genomic data for the animal to the physiological condition, wherein the physiological condition comprises gastrointestinal function or immunological function of the animal; and

          formulating a nutritional diet based on the analyzed data.

          Got that, folks? It’s a method of accessing data and [waves hands around] “formulating” a diet based on that information. But wait! The data is “on a computer” so that changes everything. Or at least it made the PTO pretend that he/she was born yesterday. Who ever could have imagined that data would be useful for formulating a diet?

          There’s no question this claim is going down. The only question is: how hard is it going down and how many laughs can be squeezed into the oral argument.

          1. 13.1.3.1.1

            The attorney for patentee tries to argue that “formulating” is physical step. It’s not just “writing the formula down”. She says that it includes “designing” the formulation (whatever that means). But it doesn’t include preparing it.

            Then the attorney tries to argue (because she’s got nothing else): “This is just like Diehr!” She’s back to the argument that the claims describe a “physical process.” But of course it’s not like Diehr’s invention at all. Diehr’s machine transformed rubber. HemoPet is taking data and using the data to come up with “a formula”. This is a huge difference and you can’t dance around it. You can try to dance to around it but you will end doing a magnificent faceplant on the stage, exactly as the attorney for HemoPet did.

            When you start saying things like “the claim only covers [insert generic product here] obtained through the analysis [??]” you are dead in the water and floating down the river to Niagra. Wave goodbye!

            Comedy highlight:

            Judge Taranto: “Your brief is non-compliant because it’s 1 1/2 spaced and we need double spaced.”
            Attorney for patentee: “I can fix that.”
            Judge Newman: “We’ll let you know if we need that.”

            The first intellectual high point of the argument comes around 16:00 where Taranto sagely notes that “This is just a method of reading and analyzing information.” Reyna signs on as well. Newman grumbles that “this wasn’t all known when it was filed, was it?” And the attorney for the defense tells Newman what every well educated high school student knows: the relationship between gene expression and nutrition was known for decades prior to the invention. That was the intellectual high point. Consider that many of us were having more thoughtful discussions here almost a decade ago now. That’s how far behind the Federal Circuit is.

            The second intellectual high point was where Reyna performed the analysis that everyone interested in tanking junky ineligible patents should learn to perform: identify the simplest act that would fall within the claim and ask the patentee to defend the claim scope. Reyna did that and the attorney for HemoPet was forced to dissemble. You can hear her dissemble. If you were in the room, you could probably smell the desperation.

            This was a ridiculous low point:

            Newman: “You couldn’t just push a button twenty years ago and have a complete genome of a dog or a cat appear on a screen.”

            That’s true but only because a complete dog or cat genome hadn’t been sequenced. And guess what? The patentees here never sequenced the entire genome of anything. Moreover, putting information on a screen at the touch of the button was ancient technology twenty years ago — and that’s the highly relevant fact that Newman can’t (or more likely, won’t) wrap her head around.

            1. 13.1.3.1.1.1

              Well, Malcolm, I thought the court might start asking attorneys in appeals like this why the should not be sanctioned for wasting the court’s time.

              The Newman woke up.

  4. 12

    “The result here is silly – and somewhat disturbing – that under the first-to-invent rule the second inventor gets a patent. Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent. But, since Raymond’s non-provisional application included additional subject matter, the provisional disclosure no longer counts as effective prior art.”

    Dennis,

    From my reading of Dynamic Drinkware, that’s not what the Federal Circuit held. There are, in essence, two issues that have to addressed before the Raymond provisional can properly be used as of its filing date as prior art with respect to the Dynamic Drinkware’s patent. First, the non-provisional must properly claim priority from the earlier provisional; if that’s not true, whatever is disclosed in the provisional is irrelevant for prior art purposes. Second, what the Raymond provisional discloses must provide a “written description” of what was claimed in Dynamic Drinkware’s patent; it doesn’t matter what the Raymond non-provisional “claims” provided that priority is properly claimed by the Raymond non-provisional to the Raymond provisional.

    What the Federal Circuit said was that National Graphics had the burden to establish that the Raymond provisional provided “written description” support for what was claimed in Dynamic Drinkware’s patent, but failed to do so. That’s completely consistent with Giacomini where the applicant failed to object during prosecution to the provisional there providing “written description” support for what the applicant claimed and thus the Federal Circuit held that the applicant had effectively “waived” any challenge to that provisional providing such “written description” support. By contrast, Dynamic Drinkware didn’t “waive” and, in fact, objected in the IPR proceeding to the Raymond provisional being relied upon to provide such “written description” support of what Dynamic Drinkware’s patent claimed.

      1. 12.1.1

        Ned, you ask me what I am pushing. It is the difference between two concepts, priority dates for novelty attacks and priority dates for claims.

        To puncture the novelty of a claim I need disclosure of something within the claimed envelope. To get my claim ‘backdated’ to a priority date though I need in the priority document a disclosure of the same invention, which is not the same thing. In other words I’m looking for a needle to prick the balloon and in the other I’m looking for the same balloon.

        S119. Does it make that distinction clearly or even at all?

        1. 12.1.1.1

          Max, this is why I was earlier asking whether the EPO just blew by the whole issue of entitlement to priority.

          Consider the priority applications discloses X. The EPO application discloses Y. Here the priority claim is entirely bogus.

          Next consider that the priority application disclose X and Y, but the EPO application only discloses Y and claims Y. Here the priority claim is good, but what about X? X does not appear in the EPO application? Is X even prior art in Europe?

          The U. S. law since Wertheim requires that the priority claim be effective in order that subject matter disclosed in both the priority-claiming application or patent and the priority application be prior art as of the filing date of the priority application. This is somewhat of a given in continuations where the claims are supported automatically in the parent if they are supported in the application itself. It is not a given however in the case of CIP’s or in the case 119 priority. In these cases, new matter may be added. Here, priority must be analyzed claim by claim. The patents themselves do not have priority just because one claim may have priority. Every single claim has to be analyzed separately.

          This is why I don’t’s understand the new statute and what is it trying to accomplish. Patents do not have effective filing dates. Claims have effective filing dates. What is going on here is a fundamental change in U. S. law.

          1. 12.1.1.1.1

            This is why I don’t’s understand the new statute and what is it trying to accomplish.

            Seems to me it’s trying to make things a whole lot simpler. Priority applications will be prior art as of their filing dates as long as (1) there is continuity and (2) there is shared written description.

            1. 12.1.1.1.2.1

              To your question, is X prior art under the EPC? Answer No.

              Maybe you want to qualify that answer a bit …?

              1. 12.1.1.1.2.1.2

                Indeed, MM, a qualification might make it clearer.

                In writing “No” I was addressing only the “102(e)” prior art effect of Art 54(3) EPC.

                I did not address the more “standard” Art 54(2) EPC prior art effect of that which is “made available” to the public on a date earlier than that of the claim in suit, covering X.

                Suppose the claim we are looking at has a date later than the WO publication of the filing Ned cites. The WO describes only Y, declares Ned, but claims the priority of a provisional that contains in addition an enabling disclosure of X. On the day the WO publishes, its priority document is “made available” to the public, thereby putting X into the Art 54(2) prior art available to attack that claim that covers X.

                Is that perhaps what was on your mind when you asked me for more?

                1. One more thing. a further afterthought.

                  Going back to Ned’s 12.1.1.1 hypo, let us modify it, just a little, to tune it to what Dennis wrote.

                  Pro discloses and enables both X and Y. The PCT filing one year later contains all that disclosure and more besides. It claims Y+, and only Y+.

                  Question: Under the EPC, does the disclosure content X have a novelty-destroying effect as of the filing date of the pro?

                  Answer: A qualified Yes.

                  What’s the qualification? You have to take the PCT into the EPO national phase. If you don’t bother to do that, the prior art effect of the PCT (with embedded pro) under the EPC can bite only wef the WO publication date.

                  The underlying logic is that obviousness is fair only when it’s done relative to rthe sum total of what was “made available” to the public already as of the date of the claim. So stuff filed at the PTO but not yet published doesn’t “count” as 103 prior art. That’s EPC Art 54(3).

                  Novelty (Art 54 EPC) is there for a different purpose entirely, to sort out who filed first, amongst competing filers all of whom filed before any of them “made available” to the public the contribution to the art the subject of their patent application.

                  In short, for sorting out who filed first, the EPC looks at how much novelty the claim of each rival filer has, relative to the disclosure that each of the other rivals with an earlier date is advancing towards issue at the same PTO.

                  This is not the scheme of the AIA. The AIA is much more of a “Winner Takes All and all the others get nowt” scheme. To eliminate mixed ownership thickets, I suppose.

                2. What is interesting here is the contrast between what MaxDrei portrays for EP land as a “availability to real people, on the one hand, and on the other, for the U.S., the notion that obviousness is determined by a reference not to a real person, but to the “legal” person of PHOSITA, and reflects a state of the art.

                  Hence for the U.S., such unnatural abilities as omniscience of a sort, and the ability to have “immediate access” to any and all publications (and deemed publications) in any library (properly catalogued of course) and any language.

                  Anywhere.

                  Even my island and my language that I offered up below.

                  The best way to play the game is to really know the rules of the game.

                3. sort out who filed first, amongst competing filers all of whom filed before any of them “

                  I don’t think that looking at novelty in such an “only interference” mode is at all accurate, nor helpful to the discussion.

                  Is that really what the EP law is for? Or is it for something else, something more, and also covers the case of interferences…?

      2. 12.1.2

        Okay, so it’s the difference between:

        A provisional becomes prior art only if the subject matter is claimed in a subsequent, published application.

        and:

        A provisional becomes prior art only if a subsequent, published application that properly references it for the purposes of priority. And one of the rules of “properly referencing for priority” is that the provisional application must provide subject-matter support for at least some of the subject matter claimed in that published application.

        Even though it’s semantically the same result, the latter rationale seems like a more plausible rationale.

    1. 12.2

      With regard to the quote from the original post, I think Dennis should fix that. It’s simply wrong (see comment 1).

      Buried in the thread I stumbled across another hypothetical (this time posed by “anon”) which further highlights the weirdness of this rule. The situation is the one where at some point in time a patent properly claims priority to a provisional and then later — for non-written description/enablement reasons — the claim disappears. The qualifying date for the patent as a prior art reference shifts back and forth in time, although the disclosure remains constant. That’s weird.

      Note that the AIA eliminates this weirdness through use of the language “entitled to claim a right of priority.”

      AIA:102(d)(2):

      if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

      Dennis mentions that this is “unclear” but this much seems crystal clear to me: if there is shared, enabled “subject matter” described identically in the earliest application and the later-filed application, then the effective prior art date is the filing date of the earliest application.

      1. 12.2.1

        MM, patent claims do not “disappear.”

        Patents have claims. Published applications have claims. There is no shifting at all.

        Now if the non provisional was filed claiming X, disclosed in the provisional, and X is found to be unpatentable over the prior art so that additional limitations must be added that are not found in the provisional, the simple solution is for the examiner to apply that same art to a second claim for X.

        1. 12.2.1.1

          Ned: MM, patent claims do not “disappear.” MM, patent claims do not “disappear.” Patents have claims. Published applications have claims. There is no shifting at all.

          Sure they do, in reissues and re-exams.

          And according to the CAFC’s weird rule, the effective prior date of such a patent will change as a result of the changes to the claims (even where the priority provisional is identical to the patent).

          Note: I’m not suggesting this is a huge problem — because it’s not. All I’m saying is: it’s weird.

        2. 12.2.1.2

          Ned,

          You continue to ignore the aspect that prosecution creates a shifting sands of “publication.”

          Maybe you want to try to use the hypothetical I laid out below (and so nicely noticed by Malcolm), to explain yourself.

          A simple thing to note: as long as the application is alive, the “publication” is fluid.

          1. 12.2.1.2.1

            anon, since one only considers the claims in the published application or patent, what goes on in prosecution is irrelevant.

            1. 12.2.1.2.1.1

              The application is considered – claims and all – throughout prosecution because the “deemed published” with the file wrapper changes throughout prosecution.

              Please address this reality.

              1. 12.2.1.2.1.1.1

                anon, 102(a)-type publication may occur, but a pending application is not a patent or an application published under 122.

                1. I do not think that you are correct.

                  And even for argument’s sake, why take your view of 122, you have just defeated yourself with the 102(a) admission.

                  Also consider that a right to priority may be faulty at filing but can be corrected. Your attempt to “lock” in a specific date and expressly deny the fact that prosecution very much matters is most peculiar.

                  Is there a reason you chase this particular windmill?

                2. Interesting question. File wrapper is 102(a) prior art as of the time it becomes available to the public. Bruckelmyer 445 F.3d 1374 (CAFC 2006). But only the patent application publication and patent can be 102(e) art. And the provisional itself can never be 102(e) art, only 102(a) art.

                3. Reed,

                  Distinctions without differences …?

                  The date of the later revealed art (in the case of the applied provisional) is….

                4. Ned,

                  Please provide a citation for the “version” of 122 you are using to make your statement of law.

                  I do not think that you appreciate the nuances involved here.

                5. Anon — the question regarding when a provisional becomes 102(a) art depends upon if or when it the In re Klopfenstein factors are satisfied. In particular, unlike patents and patent application publications, provisionals are likely never “indexed” and may therefore never satisfy the requirements to be a printed publication.

                6. (Of course, patents and patent application publications do not need to be indexed, since they are listed in the statute, as printed publications do. Sorry for confusing language,.)

                7. A (not so) hypothetical for you Ned,

                  As allowed by law, an applicant fixes a defective claim to priority (or makes one for the first time) AFTER the publication (the one you want to download) and DURING prosecution.

                  Now what?

                8. May I repeat, anon, that applications are not applications published under 122. What goes on in them is totally irrelevant for prior art purposes — even if a priority claim is made late, or the claims are amended to not be supported in the provisional. Irrelvant.

                9. Ned,

                  Please address the item put in front of you.

                  Clenching tight your eyes, sticking your fingers deeper into your ears and chanting louder “na na na na na” is not helping you make your case.

                  CLEARLY, your view of irrelevance is simply wrong. I have presented several avenues and demonstrations of such, and you have not addressed any of them, merely repeating yourself and your conclusion as if that somehow “magically” carries the day.

                  It does not.

                10. That’s great Ned – NOT what I asked for.

                  So (yet again) – where in 122 are you finding your version?

                  You yourself might check out what 102e actually says (vis a vis “description” as opposed to “claim”) – and then fold in the lessons that Mr. Ebert is trying to teach you – or are you going to ig nore his points that you find “inconvenient” as well?

                11. Anon, Published applications (122(b)). Patents. These have prior art effect under 102(e) as of their filing dates.

                  The effect can be extended to earlier applications by 119 and 120/121.

                12. Yet again Ned, that does NOT support your version of 122.

                  This is simply more nuanced than you appear capable of grasping.

                  That is why I ask you to actually walk through my examples. Doing so may – just may – enlighten you.

                  But you have to unclench your eyes, take your fingers out of your ears, and stop chanting.

    2. 12.3

      To all,

      Sorry, my references to National Graphics and Dynamic Drinkware should be reversed: National Graphics was the patent owner, while Dynamic Drinkware was the IPR petitioner.

    3. 12.5

      EG: Second, what the … provisional discloses must provide a “written description” of what was claimed in [the challenged] patent; it doesn’t matter what the … non-provisional “claims” provided that priority is properly claimed by the non-provisional to the provisional.

      Just to be clear about what you’re suggesting here, EG, your belief is that if the non-provisional claims X and properly claims priority to a provisional that discloses X, then the provisional’s disclosure of Y (unclaimed but disclosed in the non-provisional) is nevertheless prior art as of the provisional filing date?

      If you believe otherwise, then what you wrote (“it doesn’t matter what the non-provisional ‘claims'”) isn’t an accurate statement of your beliefs.

      1. 12.5.1

        MM,

        It is, and no different from a non-provisional application which has a relevant disclosure but is unclaimed by that non-provisional application.

        1. 12.5.1.1

          That’s a marginally better rule than the one I understood (where only the subject matter later claimed was deemed to qualify as prior art as of the provisional filing date). I hope your understanding is correct (I’m not aware of a case on a point).

          It’s still an oddball rule.

    4. 12.6

      Agreed, so long as the relevant content in the provisional carried forward in the non-provisional granted patent, should be prior art.

      Determining priority is a claim by claim analysis. Applicants are always entitled to claim priority (so long as common inventor, co-pendency, etc.), but whether any particular claim is entitled to earlier priority depends on the claim and the content in the provisional.

      However, what if the relevant description in the provisional was not carried forward in the non-provisional (i.e. deleted)?

      Starts to smell like “abandoned, suppressed, or concealed”.

      1. 12.6.1

        Starts to smell like “abandoned, suppressed, or concealed”.

        Except that the provisional application isn’t suppressed or concealed. It’s published.

        1. 12.6.1.1

          “Except that the provisional application isn’t suppressed or concealed. It’s published.”

          Malcolm,

          It’s most definitely NOT published. As “splinter” correctly notes, if disclosure in the provisional doesn’t appear in the non-provisional, and there’s also no statement in the non-provisional that the provisional disclosure is “incorporated by reference,” it’s as if that disclosure never existed.

          1. 12.6.1.1.1

            Malcolm, It’s most definitely NOT published.

            I was most definitely referring to the situation where the provisional is published, as is the case for most provisionals to which priority is claimed by a subsequent non-provisional.

            if disclosure in the provisional doesn’t appear in the non-provisional, and there’s also no statement in the non-provisional that the provisional disclosure is “incorporated by reference,” it’s as if that disclosure never existed.

            If anyone can easily find a copy of the provisional online as of date X (e.g., because the document is published as a result of being relied upon for a priority claim) then the disclosure in that provisional certainly “exists” as of date X. How on earth could it possibly be otherwise? Is there a statute that says “Publications are prior art as of their publication date except published provisional applications?” If so, please identify it.

              1. 12.6.1.1.1.1.1

                MM – Yes, provisionals are considered “prior art” when the non-provisional application is granted or published.

                But, if the provisional lapses, for example, it’s not published and not considered prior art.

                So the provisional filing date is not its “publication date” but rather its effective “prior art” date under 102(e).

                Instead, 102(e) allows you to drill back and count the provisional as “prior art” as of its filing date.

                My comment: “Starts to smell like ‘abandoned, suppressed, or concealed’ referred to when the relevant portion of the provisional is omitted in the non-provisional.

                Certainly, if the nonprovisional is never filed, the provisional application lapses and not prior art.

                But unclear how the statute would be interpreted if the relevant portion is deleted and the non-provisional is granted with different claims.

                Semantics, but could be important in some fact situations.

                I understand some want everything to be prior art and/or counted as “public domain” but we still need rules and guidelines for applicants to follow.

                1. splinter, provisional applications are not published under 122. They never become a patent. They are abandoned by operation of law 12 months after filing, if not sooner by the applicant.

                2. Ned,

                  Once again, I find you omitting parts of the law that you deem inconvenient.

                  This does not help your position, nor your credibility.

                  Why not just address the points presented?

            1. 12.6.1.1.1.2

              Malcolm,

              In that sense, you’re correct that if priority to the provisional is properly claimed under 119(e) by the non-provisional, it at least appears in published PAIR. I was referring to a provisional for which priority is not claimed by the non-provisional.

              1. 12.6.1.1.1.2.1

                It is more than just “at least appears.”

                For the provisionals for which priority is not claimed, it very much is as if they did not exist, and including them in a discussion is akin to magic fairy dust or magic wand waving.

                1. anon, if the provisional appears in PAIR, perhaps the crafters of the new 102(d) intended that it be deemed entitled to priority even though it may not in fact be so entitled.

                2. You are kicking up dust again Ned.

                  Pre-AIA, please acknowledge that you understand what it means by “deemed published” and please acknowledge that you understand the date attributed.

                  Post-AIA, please acknowledge the difference in meaning that I have already pointed out.

                  Why is it that you find direct conversation so difficult?

                3. “Deemed published” is something I brought to the table when we were considering publishing applications. I raised the issue of international applications designating the US. These were “deemed” published under 122 when the legislation was finally enacted.

          2. 12.6.1.1.2

            Actually they explicitly are published according to the Office. They’re officially available on public pair if nowhere else. Though I heard that they are published officially right along with the PGPub or patent that is granted.

            1. 12.6.1.1.2.1

              Yes, they are typically published, but typically more than a year after the provisional filing date. We are referring to it’s effective filing date when the provisional is first filed and not yet available to the public.

              1. 12.6.1.1.2.1.1

                I lost track of what point in particular you are trying to make with the “not yet available to the public” and what – if any – difference that has between provisionals under discussion and straight up non-provisionals which may take up to 18 months to be published (if published at all, as the option to not publish still very much exists)….

    5. 12.7

      I respectfully disagree, I think Dennis has the basic holding correct, and is spot-on with his observation that the outcome here is anomalous and in tension with prior case law.

      The “Raymond” patent discussed in the opinion was the asserted prior art patent that claimed priority to a provisional. EG, your summary overlooks the later portion of the opinion where the Federal Circuit very clearly stated that National could not rely on the filing date of the Raymond provisional application unless that provisional provided 112 support for the CLAIMS of the RAYMOND patent. They specifically stated that: “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” They even italicized the word “claims” in that section to make clear that the relevant comparison was between the Raymond provisional and the Raymond claims, not the provisional to the ‘196 patent being challenged.

      This outcome conflates two independent issues: (1) whether the Raymond provisional can supply the priority date for the Raymond claims, for determining what is prior art to the Raymond patent; and (2) whether the Raymond provisional is prior art to the ‘196 patent as of the date of its filing. Obviously the 112(a) issue is relevant for (1), but not (2). The claims in Raymond are irrelevant to whether Raymond provisional is prior art, as of its filing date, for what it discloses.

      The Federal Circuit has thus severely limited the utility of earlier-filed provisional applications as prior art. I agree with Dennis that, for the most part, it’s going to be difficult to rely on the filing date of a provisional for prior art purposes unless the provisional is substantially identical to the later-filed application. You can still always rely on the disclosure of the provisional for prior art, but it’s going to be a lot harder to rely on its earlier date.

      The opinion creates other anomalies, as well. Suppose the Raymond prior art was a published patent application, and not an issued patent? Even if the provisional and non-provisional applications were identical, under the panel’s reasoning, the provisional filing date could not be relied upon because there are no issued “claims” for which the provisional could provide support.

      It is possible that the panel felt constrained by the statutory language of 119(e), which expressly requires 112(a) support for the provisional application.

      1. 12.7.1

        I think, Lode, the claimed invention must be supported in the provisional for the provisional to have the status as a priority application.

        But this has been the law since Wertheim. This is not new.

      2. 12.7.2

        “EG, your summary overlooks the later portion of the opinion where the Federal Circuit very clearly stated that National could not rely on the filing date of the Raymond provisional application unless that provisional provided 112 support for the CLAIMS of the RAYMOND patent.”

        LR,

        On the contrary, it is you who overlooked my first statement in my summary which is that if priority is not properly claimed by the non-provisional to the provisional under 119(e), it’s as if the provisional never existed. Similar to 120, 119(e) is primarily for getting the benefit of the provisional filing date in support of the claims in the subsequent non-provisional; the fact that the disclosure in provisional may then be cited for its prior art effect as of its earlier filing date is secondary. What Dynamic Drinkware essentially asserted was that the disclosure in the Raymond provisional would have anticipated the claims in National Graphic’s ‘196 patent. What the Federal Circuit correctly observed in view of the express language of 119(e) was that Dynamic Drinkware failed to establish that the disclosure in the Raymond provisional actually provided “written description” support for any of the claims in the Raymond patent that allegedly claimed the benefit of that provisional. Again, without establishing that the Raymond provisional provided 112, first paragraph support for any of the claims in the Raymond patent, the express language of 119(e) is not invoked, and it’s s if the Raymond provisional didn’t exist.

  5. 11

    AIA:102(d)

    .—For purposes of determining whether a patent or application for patent is prior art….

    AIA:102(d)(2):

    if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b) or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

    What does this mean?

    1. Does this mean that a patent or a published application has an effective prior art date as of an earlier-filed application if they could have claimed priority to that earlier filed application but did not, or if the priority claim itself was defective in some way? I would suggest this is not a proper interpretation of this sentence because it is so contrary to established law that one would want some clear discussion in Congress of an intention to change established law before we could even begin to consider this is a proper interpretation.

    2. Thus “entitled to claim priority” must mean that the priority claim actually is effective, and we know for a priority claim to be effective, a claimed invention must be supported in the priority application in a manner provided by section 112. Thus a possible reading of this sentence is that if a priority claim is effective with respect to at least one claim, then the prior art date of subject matter disclosed in the priority-claiming patent or application is the filing date of the priority application provided that the subject matter forming the basis of the prior art rejection is described in the priority application.

    3. It also could mean that the subject matter must be described in both the patent or application claiming priority and in the priority application, and the subject matter itself must have a right of priority as specified in 119, 120 and 365 which is limited to “inventions” supported in a manner provided by section 112.

    This kind of ambiguity shows that the AIA was an ill considered effort because it will throw American patent law into chaos for good number of years. There were simpler ways of eliminating interferences. One of the ways was simply to declare that the senior party in an interference always wins.

    1. 11.1

      What does this mean?

      Asked and answered on this thread already.

      You just have to unclench your eyes…

        1. 11.1.1.1

          Ah, my apologies Ned, as here you seem to be making a new point about the AIA change (separate from the rest of the conversation).

          Yes, on the new point, the explicit choice of words of “entitled to” as opposed to any notion of an applicant jumping through the right hoops does in fact change the game.

          Of course, this is supported by the legislative record and the stated purpose in changing the law in many places (think removal of “with deceptive intent” as well as the lessening of the impact of proper inventorship).

          The new understanding is very clear – I feel that you are looking at it through your malady of “6-is-a-genius-because-he-agrees-with-me.”

          1. 11.1.1.1.1

            Contrast “entitled to priority” with “entitled to claim priority.”

            Two very different meanings, and I would posit Ned that your version is not supported with the actual words chosen by Congress.

            That you then have to turn around and add additional words, caveats, and implied meanings not evident should tip you off that you are just reaching too far.

            1. 11.1.1.1.1.1

              Anon, of course there is a difference between “entitled to claim a right of priority” and “entitled to priority.” In the latter, the priority-claiming application is entitled, a least with respect to one claim, to priority and thus the effective filing date of at least one claim is the date of the priority application.

              What “entitled to claim a right of priority” means is completely new in the law. If it means exactly what it says, then there is no actual requirement for a claim to priority. That’s an absurd interpretation. It cannot be right. One could never know then what is prior art or was not prior art. Can you imagine? Complete and total chaos.

              1. 11.1.1.1.1.1.1

                Ned: What “entitled to claim a right of priority” means is completely new in the law. If it means exactly what it says, then there is no actual requirement for a claim to priority. That’s an absurd interpretation. It cannot be right.

                I think it means simply that if the applicant could have relied on the earlier application’s filing date to support a claim (because the earlier application describes the subject matter), that will suffice to establish the effective prior art date as the filing date of the earlier application.

                One could never know then what is prior art or was not prior art.

                “Never”? C’mon. Most of the time the effective prior art date of the application will be crystal clear.

    2. 11.2

      Or maybe the ambiguity is there on purpose. Why? because maybe – the ‘patent system is hopelessly screwed up and expensive’ fits the anti-patent narrative.

      1. 11.2.1

        …by hook or by crook

        Is the phrase that comes to mind.

        Be careful though, as with no doubt you will have those who cannot see that the Large Corp can play the system while attempting to burn that very system down (the “but see how many patents they are getting and close your eyes to the destruction at the same time” gambit.

        Some people just cannot see that some will have both a short game and a long game.

  6. 10

    Wow, 67 comments already. Hot topic eh?

    Looking in from Europe, it reminds me of the change in Englanbd in the 1970’s, from the “prior claiming” regime of the Patents Act 1949 to the “whole contents” disclosure approach of the 1973-written, 1978-in-force EPC.

    There is nothing absurd about a “prior claiming” regime, to sort priority between rival applicants. Indeed, Germany still uses it for its national 10 year term utility patent regime. But since 1978 the wider world has grown used to a “whole contents” approach, so that, by now, a prior claiming approach strikes many international operators as bizarre.

    Better get used to decades of concurrent running of pre-AIA jurisprudence with AIA law. It takes decades before the last pre-AIA patent finally expires and any litigation based on it finally closes.

    1. 10.1

      Max, the AIA did NOT revise 119, 120 or 365 on the requirements for priority.

      What are you pushing?

        1. 10.1.1.2

          Sister anon,

          Once again, you choose an odd juncture as to which to insert yourself.

          MaxDrei’s post here is actually one of his more tame ones, and I found nothing to get excited about.

  7. 9

    Question – if the provisional application discloses embodiment A, and the non-provisional application adds embodiment B but only has claims directed to embodiment A, under the CAFC’s decision, wouldn’t the non-provisional have an effective prior art date to the earlier provisional application for all that it teaches?

    But what if embodiment B is what is being used as the “prior art”? Under the way the CAFC is reading the statute, that does not seem to matter: the patent issuing from the non-provisional application — including the after-added embodiment B — has an effective prior art date as of the provisional application because the “claims” of the non-provisional covering embodiment A have support in the earlier-filed provisional disclosing A, even though B was added later.

    1. 9.1

      Indeed, the prior art date of embellishment B is of no relevance to the provisional covering elements of disclosing A.

    2. 9.2

      Pilgrim, the subject matter forming the basis of the rejection must appear both in the reference and in the priority application regardless of whether the priority application is a provisional or not.

      From a priority point of view, claimed subject matter is entitled under 119, 120 or 365 to the benefit of an earlier filing date if it is supported in that priority document. Once there is an effective filing date of claim subject matter, certainly that claim subject matter is prior art as of the date of its earliest filing date.

      What is not been clearly decided in my opinion, despite dicta to the contrary in Giacomini, is whether unclaimed subject matter in the reference is entitled to prior art status as of the provisional’s filing date. Just how does one show or not show that unclaimed subject matter has written description support including a description of the claimed invention and how to make and use it, etc., when it is not claimed?

      Giacomini also is very loosey-goosey on prior invention. 102G potentially applies only with respect to claimed subject matter. No one knows who invented unclaimed subject matter, but certainly unclaimed subject matter in a provisional is legally abandoned if the non provisional does not claim it on filing. Legally abandoned subject matter, even if it could have been the basis of a prior invention defense, cannot be prior art.

      1. 9.2.1

        Ned,

        You are doing that “locked in” and being wrong no matter what anyone says thing again.

        Please take your fingers out of your ears, unclench your eyes and stop chanting “na na na na na

        Let’s take a look at some particulars.

        You state (my added emphasis):

        but certainly unclaimed subject matter in a provisional is legally abandoned if the non provisional does not claim it on filing.”

        Whaaaat? I just gave you an example (and of course, you played the Vinnie Barabarino meme) of how during the prosecution of the later item (non-prov), the earlier item (prov) effect can dance in and out of prior art status.

        There is NO such rule of law as you put it that an abandonment of material in a provisional occurs based on claims as filed.

        You made that up out of thin air.

        Another beaut from you (my emphasis):

        Once there is an effective filing date of claim subject matter, certainly that claim subject matter is prior art as of the date of its earliest filing date.

        See my post and your reply at 1.2.2.1.

        And another:

        No one knows who invented unclaimed subject matter,

        Wrong point – it is not a matter of who in particular invented that unclaimed subject matter. No one cares. What does matter, and the point that you should try to grasp is that someone other than the later new party against whom the reference is being applied did not first invent – per an effectively published item. And yes, that “effectively” counts even if you wanted to somehow hand wave that away as well.

        Stop for a second Ned, and do not be in a hurry to defend your first position in light of these observations put on the table for dialogue.

        1. 9.2.1.1

          What you do not understand, anon, is that provisionals are abandoned.

          Secondly, a disclosed but unclaimed invention is abandoned. There are, in fact, Supreme Court cases on point.

          1. 9.2.1.1.2

            Let me add this: regular non-provisional applications get abandoned ALL THE TIME.

            Should those too then lose their ability to serve as prior art?

            This point actually is an indicator to one of the more pernicious “grabs” by the government and the forced publication change in law.

            Not only did the government institute a system of “meh, why bother, we already got ours” in the Quid Pro Quo exchange by in effect maxing out their end of the bargain early (publication before grant), any such publication (rightfully or otherwise) stops others from obtaining a patent, by having the pre-grant publications serve as prior art.

            Personally, I am not hung up all that much on this use as prior art, but I mention it to draw a contrast with the artificial distinction attempting to be made between the treating of content of a parent document based on whether that parent was a provisional or a non-provisional.

      2. 9.2.2

        Ned: Just how does one show or not show that unclaimed subject matter has written description support including a description of the claimed invention and how to make and use it, etc., when it is not claimed?

        It’s a five second analysis if the unclaimed subject matter is plainly disclosed in the specification of the provisional.

        1. 9.2.2.1

          MM, being “the same” does not mean that the subject matter is described in the manner provided by 112 — describing the invention, enabling the invention, etc., etc., etc.

          The whole structure breaks down because one does not know what the invention is if it is unclaimed subject matter.

          1. 9.2.2.1.1

            MM, being “the same” does not mean that the subject matter is described in the manner provided by 112 — describing the invention, enabling the invention, etc., etc., etc.

            If the disclosure in the provisional and non-provisional are identical and 112 law remains as it is, you typically aren’t going to have a written description or enablement issue (i.e, an “entitlement” issue) unless it’s a chem/bio case.

            Note that if the provisional’s disclosure is non-enabling as of its filing date, then it’s not going to count as prior art anyway.

  8. 8

    This case is wrong, and Wertheim is inapplicable. In Wertheim, the court was looking at claims copied from a reference also used to reject the claims. That reference was a CIP, and its great-grandparent’s filing date was necessary to predate the Wertheim filing date. So yeah, there, the great-grandparent needed to support the reference claims to be valid prior art, BECAUSE THEY WERE THE SAME CLAIMS IN THE WERTHEIM APPLICATION. Wertheim doesn’t say anything about unclaimed subject matter in a provisional (or nonprovisional ancestor).

    Giacomini is the applicable case, and the opinion here misstates it. The opinion here acts as though the applicant in Giacomini waived the argument that the reference’s provisional did not support the reference’s claims. In reality, the applicant in Giacomini agreed that the reference’s provisional met the claims on appeal (NO party addressed what the reference actually claimed). So, under Giacomini’s reasoning, provisional references were supposed to be 102(e) prior art for all they disclose as of their filing date, regardless of what their children claim. That rule is contravened here.

    Rehearing.

    1. 8.1

      Bally Llama, from Giacomini: “Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.”

      I also agree that Wertheim did not address unclaimed subject matter. That does not mean that unclaimed subject matter in a reference is prior art as of an earlier claimed priority date because that unclaimed subject matter is hardly entitled to priority under 119(e). That is a fricken bizzare notion. It is not entitled to any legal priority. There is no effective priority UNLESS at least one claim in the reference is supported in the priority case.

      Consider prior invention. A patent is potentially 102(g) prior art as of an earlier filing date for “claimed” inventions. It is not 102(g) prior art for unclaimed subject matter. Also consider that provisionals are not co-pending it with non-provisionals. Like all 119 priority, the provisional may be abandoned long before the non-provisional is filed. And if subject matter disclosed in the provisional is not claimed in the non-provisional, it is abandoned under 102(g).

      1. 8.1.1

        Also consider that provisionals are not co-pending it with non-provisionals.

        Wrong.

        But this one is more subtle.

        A non-provisional MUST have been co-pending with the provisional at the time of filing of that non-provisional – just like, exactly like any other vehicle for claiming priority.

        You seem to be kicking up dust on the matter that provisionals have an express one year shelf life.

        Like all 119 priority, the provisional may be abandoned long before the non-provisional is filed

        Absolutely true.

        But have you ever seen such a thing? Can you ever see such a thing? One would have had to have provided a non-prov claiming priority first and then abandoned the prov to see such a thing. WHY would anyone do that?

        Again, this smacks of you desperately making C R P up in an ultimately vain and failing attempt to buttress a world view that you are comfortable with and that you just do not want to think about the counter points put on the table for discussion.

        That’s not a good thing, Ned.

        1. 8.1.1.1

          anon, a provisional must be abandoned prior to filing a subsequent provisional to meet the requirements of the Paris Convention. Thus, like all 119 priority, there is NO requirement for copendency in 119.

          A provisional is abandoned before the non provisional is filed.

          Abandoned applications are just that, abandoned.

          1. 8.1.1.1.2

            You are simply off on the matter of co-pendency Ned.

            While the point you seek to insert about multiple provisionals is true for some other point, that is not the point under discussion here, and one absolutely has to have co-pendency in order to have that priority link.

            It’s rather insulting that you are attempting to sow confusion here.

            1. 8.1.1.1.2.1

              Anon, trust me, 119 priority, whether to foreign applications or to provisional applications does not require codependency. All they require is that the priority-claiming application be filed within one year of the filing of the priority application. That is why one can abandon provisional applications without affecting the right to claim priority to them. But abandonment is required if for some reason one of the provisional’s is outside the one year period. If that application was not abandoned prior to the filing of the subsequent application that is within the one year period, then a proper priority claim under the Paris Convention is no longer possible.

              1. 8.1.1.1.2.1.1

                Wrong yet again Ned.

                All they require is that the priority-claiming application be filed within one year of the filing of the priority application and that the parent be alive when the child wanting priority is filed

                Fixed it for you.

                You will note that any attempt to try to claim priority to a lapsed (either by time or by shortened express abandonment) is a FAIL.

                You must perfect your claim while the link is live.

                1. (and you are still mixing apples and oranges with your attempted insertion of the Paris Treaty tie to earliest (single) extant provisional application)

  9. 7

    A very long time ago, I called the USPTO OPLA to ask if the USPTO had an official position on this issue. The person I spoke with I’m not sure understood the issue and I didn’t get an answer (the OPLA is generally an excellent resource for advanced questions, however please don’t call them unless you have a really good question that isn’t addressed in the MPEP).

    There is an easy (but more expensive) fix for this issue. Don’t file a provisional. File your junky spec as a non-provisional (slated for publication). you don’t even need to file a claim, you can add a dummy claim in response to the notice to file missing parts. Then when you are ready to “convert”, file your full application as a CIP and abandon the original. Sure you lose patent term and you also may face a little embarrassment about filing a junky spec. But this will surely serve as prior art as of its filing date once published.

        1. 7.1.1.1

          Well then, for a small fee I will publish your information in my “public” library on the small island nation of Fthat.

          For merely a small additional fee, I will publish it in the native language of Youscandothat.

          All the best of all worlds.

  10. 6

    Published non-provisional applications claiming priority to a provisional application will likely change claim scope during prosecution. Can those published applications move in and out of being qualified art depending on whether the currents claims are compliant with 112(a)?

    1. 6.1

      Iheart, the published non provisional or international application is the reference. What goes on during prosecution is irrelevant.

      1. 6.1.1

        Ned,

        I think that you were too quick to dismiss that question.

        Let’s throw yet another wrinkle:

        Let’s say that the “magic words” are utilized: claimed priority and incorporated as if written herein.

      2. 6.1.2

        Are you saying that the claims of the published application at the time of publication determine the prior art effect of the provisional?

        1. 6.1.2.1

          I think that he is not saying that at all, but rather, is saying that because the claims of the non-provisional “float,” that the corresponding dates and content effect of the provisional can “float” as well.

          A seemingly very odd result.

        2. 6.1.2.2

          Abstractions, you have to adjust your thinking. We are not talking about the prior art effect of a provisional, but the prior art effect of the published application under 102/119 or 120 or 354.

          For the published application to have the prior art effect as of the filing date of any priority application, ANY, its claim for priority must be effective. Since priority claims are claim-by-claim, at least one claim in the published application must be supported in the priority case in the manner required by 112 in order for the priority claim to be effective.

          Thus what happens during prosecution is completely irrelevant to the prior art status of the published application.

          1. 6.1.2.2.1

            Twice now you have stated the exact opposite conclusion, Ned.

            It matters extremely much what happens during prosecution in that it is prosecution that shapes the very claim that you must successfully map backwards.

            Let me paint a quick hypothetical.

            Prov filed.
            Non-prov filed with initial, fully supported independent claim “A.”
            During prosecution, to “appease” examiner, “A” is amended to “Ab” and new fully supported (back to prov) claim “B” is added.

            For whatever reason, “B” is dropped.

            Maybe it was divided out, but never returned to, maybe it was canceled for expeditious reasons and the client ran out of money.

            But for whatever reason, “B” appears and disappears.

            It is later determined that “Ab” is not actually fully supported by the provisional.

            Now then, you have had the date (and content) of that provisional dance in and out of being prior art, and completely dependent on prosecution.

            Tell me you don’t find that a bit odd…

          2. 6.1.2.2.2

            anon, as always, I don’t know what you are talking about. The topic of conversation is the legal prior art effect of a published application. It has published claims. At least one of it claims must find support in the provisional for their to be an effective priority claim to that provisional.

            Once the patent issues, it too has claims. We assess its prior art status as of the date of its effective priority, but that is determined claim by claim.

          3. 6.1.2.2.3

            I’m just trying to understand what your view on this issue is and whether you agree that the result in this case is silly.

            The issue is when and to what extent will the contents of a provisional application count as prior art as of the provisional filing date.

            Your post at 6.1.2.2 implies that if any single claim in a non-prov is supported by the provisional then the entire contents of the provisional count as prior art as of the prov date, but if not (I.e. The priority claim is wholly ineffective) then the prov date is irrelevant for citability-as-prior-art purposes. Is that correct?

            1. 6.1.2.2.3.1

              A, the one thing I know is that a patent does not have priority. Claims do.

              Whether unclaimed subject matter can ever be prior art as of an earlier priority date is not certain because one cannot make the legal assessment of whether that unclaimed subject matter has 112 support precisely because it is unclaimed.

  11. 5

    I’m a little confused, in part because I thought that the supposed rule that Raymond argued in this case was the actual rule. But given that I’ve been mistaken all this time, I have a related question. Does the earlier provisional prior art date have one requirement or two?:

    1. The claims in the nonprovisional must have written description support in the provisional.

    2. The disclosure in the nonprovisional relied upon for the rejection must have written description support in the provisional.

    The reason I ask is that if #1 is the only requirement, you could end up with an even stranger situation, where the prior art discloses claimed invention ABC and unrelated widget DEF, the provisional application for that prior art only discloses ABC, and therefore, the prior art gets the earlier date even though DEF isn’t disclosed in the provisional at all. This seems unlikely, but then again, I thought that #2 was the only requirement, and that turned out to be wrong.

    1. 5.1

      APoTU, the rule is this:

      1. The disclosure in the reference must also be in the provisional.
      2. The claim for priority must be effective.

      112 is required for 2.

      The courts are getting Wertheim just a bit confused.

      1. 5.1.1

        This is actually a really helpful statement. So establishing that the patent is entitled to the priority date of the provisional is necessary, but not sufficient by itself without also showing that the disclosure in the reference is in the provisional. This is my understanding as well, but the opinion does a terrible job of explaining this, and comes across as very misleading.

          1. 5.1.1.1.1

            JCD, it is basic 102(e) law that subject matter not carried forward cannot and thus not appearing in the reference cannot be the basis of a rejection in the first place.

            Also consider that priority is on a claim by claim basis.

            But, if a priority claim is good for even one claim, the whole contents of the priority reference “may” be available for prior art purposes such that even unclaimed subject matter carried forward may be available for prior art purposes. This precise issue has not been decided.

    2. 5.2

      APoTU, don’t you find it interesting that the PTAB and the Federal Circuit know all about Wertheim, but professors at law and even the examining corps do not?

    3. 5.3

      Interesting thread here which brings up another question – if a foreign patent application can be relied on to establish priority then why not require a certified English translation of the foreign patent application? We basically take the applicant at their word that the U.S. Application is a carbon copy of the foreign application.

      1. 5.3.1

        Mr. Joe, it seems the PTO must supply a translation of a foreign language reference. So, it is relying on the foreign priority date of, for example, a US patent, it must supply you a translation.

        Give the examiner a call if the examiner fails in this.

        Also consider that US provisional do not need to be filed in English.

        1. 5.3.1.1

          …another difference without a distinction, Ned.

          Sure, the initial provisional need not be in English – but fill in the rest of the story and let everyone know what is necessary if that non-English provisional is wanted to be relied upon by the applicant.

          Things like this Ned greatly lower your credibility – and unnecessarily so.

      2. 5.3.2

        A certified translation IS required when the foreign priority document is actually needed for a priority date (if its not in English to begin with).

  12. 4

    In addition to the other “Shoulds” mentioned above and below, when the Office relies on the provisional date of a cited document in making a rejection, the Office should be required to cite the portion of the provisional application that allegedly supports the rejection.

    Currently Examiner’s cite, for example, paragraph 37 of the published application or column 6, lines 10 – 27 of the published patent,, without even looking at the provisional, let alone actually identifying support for paragraph 37 or column 6 in the provisional, even though it is only by virtue of the provisional application that the cited document might be considered PRIOR art.

    That is outrageous.

    1. 4.1

      Les, I have raised this point here many times. Random has said that most examiners simply do not review priority documents for support, but assume that support is there, effectively shifting the burden to the applicant to show lack of support.

      Assumption/Presumption?

      Well, the courts have ruled that the Office does not have to prove enablement, nor the level of skill of one of ordinary skill in the art. So they might say this as well.

      But consider that the applicant proves that the reference is not entitled to the priority claim per Wertheim. Then the examiner must conduct a new search for a better reference or allow the patent to issue. This is inconsistent with compact prosecution.

      1. 4.1.1

        Les, I have raised this point here many times. Random has said that most examiners simply do not review priority documents for support, but assume that support is there, effectively shifting the burden to the applicant to show lack of support.

        That’s not what I said, I said Examiners generally give the Applicant the benefit of HIS claimed priority because they don’t check the Applicant’s priority document. Significantly more will check the priority document of a reference they are citing.

        If you’re wondering why that is, you have to remember who’s ox is being gored here – If an Examiner cites a reference which challenges the Applicant’s priority document, he has, at a minimum, a fight with the applicant and if he fails in it its a second non final. The alternative is citing slightly “worse” (and that’s debatable, since there’s no question of it’s priorness) art.

        Conversely, if an Examiner has ONLY (or intends to use) a reference that only counts as prior art due to its 102e date, the Examiner is highly motivated to make sure it is proper prior art because any screw up results in a second non final. The alternative – an improper allowance – is virtually never going to be caught. Someone would have to find the exact same art you did, check its priority document and present a case that every reasonable examiner would know that it is proper prior art before they can say you screwed up. No quality control comes close.

        An applicant could submit a hot dog as their provisional and they would get the date, but the provisional of a reference being cited as prior art needs to be brick solid.

        1. 4.1.1.1

          Random, I stand corrected.

          However, in my personal experience, the examiners do not check. I have overcome a number of rejections by showing the reference is not entitled to the priority claim for one reason or another. If the Office is now doing a better job, well, bravo!

          1. 4.1.1.1.1

            Examiners arent the best at straight 112, 1sts to begin with so it wouldn’t surprise me if they failed in their checking as well.

    2. 4.2

      Currently Examiner’s cite, for example, paragraph 37 of the published application or column 6, lines 10 – 27 of the published patent,,

      But that’s the proper thing to do, because it is the published application that is the rejecting document, not the provisional.

      without even looking at the provisional,

      This is a screw up, but it’s a screw up you enjoy right? If there’s no support you’re getting a free round of prosecution.

      That is outrageous.

      No more so than any other reference that is an insufficient citation.

      1. 4.2.1

        I should also point out that the provisional doesn’t even come up during our searches. We don’t have a provisional database. We search only published applications, and we may find language that we like and notice that we don’t have a 102a day but we do have a 102e day. Whether we pull the provisional to follow up on that seems like common sense to do so to me, but I guess not all examiners.

        1. 4.2.1.1

          Interestingly we have discussed this point before and at sometime in the rather recent past this was a change by the Office.

          In other words, the Office used to do exactly the thing that you are saying that they do not do.

          Given the oddity of SAWs (and all of the remaining SAWs like programs still functioning), it is odd that this one program which seems rather useful is one that was voluntarily and quietly curtailed by the Office.

          Anyone (internal to the Office) have any tidbits…?

          1. 4.2.1.1.1

            and at sometime in the rather recent past this was a change by the Office.

            The office never had a database of provisionals. The office used to have a database of non-published non-provisionals, which it no longer keeps up nor searches. The office does HAVE the provisionals of course, and you can get them (rather easily) on a case-by-case basis, but you cannot and never could (to my knowledge) search them. Provisionals are simply never transferred from their submitted pdfs.

            it is odd that this one program which seems rather useful is one that was voluntarily and quietly curtailed by the Office.

            Usefulness is an ill-fitting term. SAWS is an example of the office (in my words now) actually examining. SAWS is truly an example of “careful what you wish for” for some practicioners who complain about quality. We have too many cases to actually examine everything, so we used to actually examine a very tiny (EXTREMELY tiny) number of cases and did our best with everything else. Other programs provide various levels of what examination should be but are too resource intensive to apply everywhere, so they are randomly selected, indirectly applied or self selected in one manner or another.

            Everything is, of course, a matter of resources you throw at it. The standard quality control that every single action goes through is exceedingly light, which leads to Examiners knowing that, for example, certain “mistakes” will never be caught, which biases people toward erring on the side of the uncatchable act. Finding the proper priority date of the claim you’re examining is de facto uncatchable, so the proper priority date becomes whatever the applicant won’t argue with. IMO, there’s not even anything wrong with that, because the examiner time is better spent elsewhere than arguing over <1 year of priority. Infinite time, is it wrong to not argue it? Sure. The office has nowhere near infinite time to apply to each incoming application. Perhaps at some point in the future, but not with the backlog now.

            1. 4.2.1.1.1.2

              We have too many cases to actually examine everything, so we used to actually examine a very tiny (EXTREMELY tiny) number of cases and did our best with everything else.

              That is absolutely and utterly unacceptable.

              And quite contrary to law and rules guiding the Office behavior.

              That you don’t seem to recognize this, let alone seem to think that it is a good and necessary thing, speaks volumes as to where exactly the problem is at.

              1. 4.2.1.1.1.2.1

                That you don’t seem to recognize this, let alone seem to think that it is a good and necessary thing, speaks volumes as to where exactly the problem is at.

                Everyone would like to have perfect quality, but given that even the CAFC can’t achieve it I doubt you’d find that a bunch of non-lawyers Examining 10k+ times as much can achieve it. Nor would most inventors be happy with the extended pendancy that would certainly result from it. I certainly would be in favor of a different track of examination that would allow people interested in the gold standard to get it.

                Regardless, it’s exactly what you would think it would be – all actions receive some scrutiny, actions by junior examiners receive more (and more as they get more junior), there are mechanisms by which people can be supported passively, or they can actively ask for help, everyone gets graded, etc.

                You can’t receive equal quality for the simple reason that examiners are not the same, which is no different than any judge you’d get in court. In any case, it isn’t the examining corp that sets the standards – if you’d like to voice that we should examine slower and take our time to increase quality your complaints should be directed higher up the totem pole than me. I, like most examiners, are acceptable to my boss. If their standards are too low for you take it up with them.

                1. There are SOOOO many things wrong with your position (and your attitude), that you will have to wait a few days for me to write them up.

                  In the meantime, ponder why the Office so quickly ran away from SAWs when that thing caught the public eye.

      2. 4.2.2

        “This is a screw up, but it’s a screw up you enjoy right? If there’s no support you’re getting a free round of prosecution.”

        Its a waste of my time and the clients money. If its a screw up, and Examiner’s check the provisional anyway, why not let me know where you think the support for the cited portion is so I can evaluate the reasoning and if need be, show you the error of your ways.

  13. 3

    “My take is that, once the provisional becomes public, etc. as of its filing date.”

    One cannot cite a provisional application as prior art as of its filing date. It may have a 102(a) date as of its “publication” by being referenced in an issued patent, but it does not have a legal status as an issued patent or as a published non provisional application.

    Congress can change the statutes if it so chooses, but not the courts.

    1. 3.2

      Congress can change the statutes if it so chooses, but not the courts.

      LOL – now, where have I seen that before?

  14. 2

    Dennis, it is downright appalling that you show no familiarity with Wertheim. link to scholar.google.com It has been the LAW for decades now that a reference is prior art as of its own date of entitlement to benefit of the filing date of its claimed priority document.

    You present this case as if the law were changing. It is not changing, trust me.

    THIS has nothing to do with dates of invention. This has to do entirely with the right of priority.

    Regarding POLICY, the first inventor to disclose an invention to the public is entitled to his priority of invention as of his date of reduction to practice, etc., given all the other restrictions required by 102(g). However, the petitioner did not raise 102(g) invalidity. A 102(g) defense cannot be raised in an IPR by statute.

    Under the AIA, prior invention is no longer a defense to validity. Who gives a flying F who invented first?

    1. 2.1

      Ned, maybe you can clear this up or confirm that it’s a bit “oddball” …

      Consider the scenarios below where Patent A claims X.

      Scenario 1: Patent B claims only Y but its specification discloses both X and Y. The utility application leading to patent B was filed after the application leading to Patent A. Patent B, however, claims priority to an earlier-filed provisional (i.e., earlier than Patent A’s critical date) that is identical to the specification of Patent B.

      Scenario 2: same as Scenario 1 except Patent B claims only X.

      Scenario 3: same as Scenario 2 except the specification of the provisional doesn’t disclose Y.

      Scenario 4: same as Scenario 1 except Patent B claims “X or Y” (one claim) and the provisional doesn’t disclose Y.

      Isn’t it a bit “oddball” that (assuming I understand the rule correctly) Patent A goes down in Scenarios 2 and 3 but not Scenario 1 or 4?

      1. 2.1.2

        MM, not odd at all, unless one is considering who invented what first — but that is a 102(g) prior art issue, not 102(e) or the new 102(a)(2).

        The question is whether the reference is entitled to the benefit of the claimed invention under 120/121/119 — this is a statutory requirement of 120/121/119.

        There is a distinction to be made between a claim for priority and actually having priority. If there is not actual priority, there is no effective filing date in the priority document.

        As to why the applicant did not claim an invention he or she may have had a right to claim, that is a different issue. Perhaps because that would involve naming an additional inventor — perhaps one who had no obligation to assign. Perhaps the disclosed subject matter was not even the invention of the applicants named in the provisional. There can be host of reasons why the claims do not include invention X.

        One takes the references as is, not what it might be.

        As I said, there might be a case for prior invention, but who is the inventor of X if no one is claiming X as his invention in the referenced patent? A patent cannot be cited under 102(g) for anything unclaimed. This too has long been the law.

        1. 2.1.2.1

          There can be host of reasons why the claims do not include invention X.

          No doubt.

          But it still seems odd that the mere failure to claim subject matter X in a patent that claims priority to a provisional which discloses X means that the provisional’s ability to invalidate a third party’s claim to X is nullified (at least where the provisional was unpublished as of the critical date of the third party’s patent claim). I get that it’s a result of the way the statute is written. It’s still weird.

          1. 2.1.2.1.1

            MM, you seem to start from the point of view that the provisional is prior art. It is not. Neither is it evidence of prior invention unless the inventors claim the subject matter disclosed to be their invention. What that other subject matter is a puzzle. Even prior inventions can be abandoned so that they are not prior art.

            1. 2.1.2.1.1.1

              But also consider that for inventions unclaimed in a non-provisional are “abandoned” to the inventor after two years. And such DO serve as prior art.

              You have some decent thoughts here Ned – but they are not put together completely correctly.

      1. 2.2.1

        Dennis, the principle of Wertheim is that CIPs are not presumed to be entitled to priority because new matter may be added. The same is true of the relationship between 119 priority document and a non provisional.

        The principle being the same, the rule is the same because both statutes, 12o/119 have the same language concerning a right to priority.

  15. 1

    DC: Anyone who works with prior art knows that this setup is an oddball way to addres the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed. My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

    Hear, hear!

    The PTO should also be creating a public database of provisional application filings that can be searched and relied upon as a prior art tool.

    Absolutely yes (note correction in bold).

    Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent. But, since Raymond’s non-provisional application included additional subject matter, the provisional disclosure no longer counts as effective prior art.

    Is that second sentence accurate? The “problem” isn’t the “inclusion”of additional subject matter in the non-provisional but rather the fact that the non-provisional failed to claim the critical subject matter (i.e., the subject matter that would knock out the asserted patent) that was “merely” disclosed in the provisional.

    Unless I’m misreading something, it seems to me that the result here would be the same (i.e., the provisional is not prior art) even if the non-provisional specification was identical to the provisional specification, just as long as the non-provisional fails to claim the critical subject matter.

    That leads to the point I raised in the earlier thread: presumably this problem can be fixed in certain circumstances by filing and obtaining the necessary claims (e.g., in a continuation of the non-provisional, or perhaps a reissue). Then the possibility exists for real weirdness such as the PTO denying the newly presented claims as obvious (where the granting of those claims would otherwise result in the provisional anticipating the already-granted claims of the challenged patent).

    1. 1.1

      A provisional should not be considered prior art unless the applicant has waived the 18 month non-disclosure period and the provisional thereby published. The effective date for purposes of prior art should be the date the provisional was actually published.

        1. 1.1.1.1

          Would a wrinkle cause more confusion..?

          I.e., would it matter for the date of the prior art what the purpose of the prior art was? That is, (with nod to MaxDrei), is the prior art date one say for obviousness – as opposed to novelty – and being geared to actual access?

          Or,….

          Should the date be more “esoteric,” and reflective of the “state of the art,” regardless of any actual person’s capability of seeing the item?

          That may be a driver to Bottom Line’s views.

          1. 1.1.1.1.1

            anon, you are making an assumption that a provisional application is prior art.

            Patents and published applications are prior art — as of their effective filing dates according to case law and the new 102(a)(1). A provisional application is never published under 122.

            Prior invention requires an enabling disclosure and proof of reduction to practice. A patent not claiming an invention alleged to be 102(g) prior art cannot be the basis of proof of 102(g) prior invention.

            A provisional application is not public use, nor public knowledge.

            There is no legal basis for a provisional application being prior art — that is, until it is referenced in a published application or patent, where it becomes 102(a) prior art.

        1. 1.1.2.1

          Never say never…

          “Deemed published” is for all intents and purposes, “published.”

          Let’s not forget that although rare, converting a provisional is an allowed path.

          1. 1.1.2.1.1

            anon, we have to distinguish publication under 122 with “deemed published” by being referenced in a published patent or application which is a 102(a) event. Let us call the latter, “made available.”

            1. 1.1.2.1.1.1

              You attempt to make a distinguishing point where there is NO effective difference – by design of law.

              1) why?
              2) this avails you nothing.

        2. 1.1.2.2

          They are at least as published as a PHD thesis with a single copy sitting on a dusty shelf it the University Library of the issuing institution.

    2. 1.2

      MM: “DC: Anyone who works with prior art knows that this setup is an oddball way to addres the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed. My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.”

      Hear, hear!

      Not you too? MM, notice how Dennis conflated a patent with a provisional application?

      A provisional application is not, and can never be, a reference!

      1. 1.2.1

        Ned: A provisional application is not, and can never be, a reference!

        Of course it can. Once it’s published it’s as good a reference as any other publication.

        notice how Dennis conflated a patent with a provisional application

        There’s no “conflation”. I would have written “A patent’s disclosure or a patent application’s disclosure for prior art purposes …” but I think it’s clear what’s being discussed.

        1. 1.2.1.1

          MM, any published document is good as of its date of publication for what it discloses. A provisional application cannot be cited as 122 publication or as an issued patent. That is what I meant.

          As such, it has no status as a publish application or an issued patent.

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