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 address the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not claimed 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.
For an analysis of this decision, with particular reference to its potential impact on some IPRs, see:
link to patentspostgrant.com
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.
And note that for AIA applications In re Wertheim was overruled.
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.
“ 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.
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.
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.
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
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.
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.
—
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.
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.
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.
Congress wrote the law differently than what you want.
It happens.
…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 ;-) )
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?
Exact same practice tip for a CIP-child/non-provisional-parent, eh?
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.
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?
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.
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.
Except – as I have pointed out (and invited you to reply [silence]), what exactly that publication means is not what you think it means.
Ned,
35 USC 122 (b)(2)(B)(ii).
Discuss.
(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?
Timing – and impact thereof – only via prosecution.
Hello?
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.
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?
How do you possibly have time to listen to oral arguments?
They can be played “in the background” while you work.
He only spends about 2 hours a week posting here.
MM is clearly a formidable intellect- maybe he cuts and pastes a lot? Maybe voice dictation?
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.
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.
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.
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.
“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.
EG, absolutely correct on all points.
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?
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.
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.
To your question, is X prior art under the EPC? Answer No.
To your question, is X prior art under the EPC? Answer No.
Maybe you want to qualify that answer a bit …?
Ned’s hypo lacks what you call continuity.
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?
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.
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.
“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…?
Okay, so it’s the difference between:
and:
Even though it’s semantically the same result, the latter rationale seems like a more plausible rationale.
Thanks David. I think you summed it up pretty well.
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.
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.
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.
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.
anon, since one only considers the claims in the published application or patent, what goes on in prosecution is irrelevant.
The application is considered – claims and all – throughout prosecution because the “deemed published” with the file wrapper changes throughout prosecution.
Please address this reality.
anon, 102(a)-type publication may occur, but a pending application is not a patent or an application published under 122.
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?
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.
Reed,
Distinctions without differences …?
The date of the later revealed art (in the case of the applied provisional) is….
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.
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.
(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,.)
Anon, the version one downloads from the PTO.
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?
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.
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.
So, again, let me ask of you, WHERE in 122 are you reaching this rule of law that you are depending upon?
Check 102(e). It specifically limits its effect to applications published under 122(b).
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?
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.