Steed: Proving Conception

In re Steed (Fed. Cir. 2015)

This decision offers an example of failures of the first-to-invent regime. Basically, Steed (acting pro-se in a pre-AIA application) attempted to swear behind a 102(e) prior art reference.  However, prior conception, diligence, and reduction-to-practice all must be proven with documentary evidence. Here, the applicant submitted a Section 131 declaration attempting to show prior conception, diligence, and reduction to practice, but the evidence submitted was ultimately found lacking.

Through a series of cases, the courts have defined invention more as a process than a point in time.  This process is triggered and begins with an inventor’s (or inventors’) conception of the invention that includes a “definite and permanent idea of the complete and operative invention,” including all of the elements of the eventually claimed invention.  Although conception seemingly occurs in the mind of inventors, the evidentiary requirements demand written proof of conception.  Although invention is triggered by conception the process is not deemed complete until the idea has been actually reduced to practice (RTP).  Today, few patent applicants actually reduce their idea to practice prior to filing (certainly not covering all of the claimed arrangements), however, the the courts have deemed the filing of a patent application satisfying the patentability requirements to be a constructive reduction to practice.   In essence, the courts have noted that the elements of invention were not actually completed, but we will close our eyes and simply assume the legal fiction.

Here, the patent applicants had a number of documents showing that they were working on a variety of ideas. However, nothing submitted was sufficient to show that the applicants had conceived of the whole idea (with the claim limitations being sought) prior to the critical prior-art date.

The point here is that it is hard to prove a prior invention date unless you have kept very good records enough to prove an early conception date of the invention that you are now claiming.

= = = = =

An odd aspect of the case involved the PTO’s argument that the pro-se inventors had waived their arguments associated with proving an early date of actual reduction to practice. Basically, in briefing the applicants had stated that their evidence showed a prior constructive reduction to practice even though it was clear that the applicants were attempting to prove prior actual reduction to practice.  Since the applicants had used the wrong word, the PTO solicitor argued that the applicant waived their right to argue actual reduction to practice. On appeal, the Federal Circuit rejected the waiver argument, but ultimately found that the applicants had not proven actual reduction to practice.

= = = = =

One take-away from this case is the importance of relying upon highly qualified patent counsel. Although the AIA has largely eliminated the particular issues in this case, a large number of pitfalls remain to trap the unwary.

 

93 thoughts on “Steed: Proving Conception

  1. “PTO’s argument that the pro-se inventors had waived their arguments associated with proving an early date of actual reduction to practice. Basically, in briefing the applicants had stated that their evidence showed a prior constructive reduction to practice even though it was clear that the applicants were attempting to prove prior actual reduction to practice. ”

    So typical of the PTO. The Applicants must be perfect. Yet the Office can issue Office Actions that approach incoherence and we are just stuck with it…

  2. Another issue that flows from the AIA’s elimination of the ability to swear behind references occurs within context of public disclosures of the invention in crowd funded websites or in venues where readers are able to comment on the disclosure. Here, an inventor may disclose his or her invention of A + B + C, and commentators may post comments such as “It would be cool if A + B + C also included D”. Even if the addition of “D” was already conceived of and recorded or built by the inventor (but not publicly disclosed), the comment is now a prior art event that cannot be remedied with a Rule 131 affidavit.

    1. Yes, but the same thing could easily happen even for a pre-AIA application or patent. “Recorded OR built” are definitely not valid equivalents for a valid first to invent position.

      1. Your version of “valid” is simply not in accord with the pre-AIA law.

        Exactly how long have you been away from prosecution, Mr. Morgan? More years than you spent in it?

      2. My point here is that after AIA, publicly disclosing part of your invention in a public forum can be incurably catastrophic unless you already filed an application that discloses every aspect of your invention that others may comment on.

        1. I don’t think the average patentee is aware of the risk of presenting a teaser of a new product in a public forum that allows others to comment, pose questions, or riff.

  3. Patent attorneys in the USA cannot understand how fussy the First to File jurisdictions are, about the exact disclosure content of the as-filed documents of a patent application. But that is inevitable, and results from the fact that concepts such as “conception” “diligence” and “reduction to practice” are of no relevance whatsoever. In a First to File jurisdiction, all there is, to settle the question “Who Gets What”, are the respective Patent Office filings. No wonder then, that they are examined so minutely.

    If you think interferences are tricky, Dennis, wait and see how messy it gets, resolving priority between Inventors in a First to File Regime.

    1. Thanks MaxDrei – I do “get” and understand that.

      What is especially interesting is that in the run-up with the passage of the AIA, one set of “reasoning” was the exact opposite of what you state: here the Congressmen (and certain pundits) advocated that the “interference” and other attributes were too cumbersome and that the “First Inventor to File” would be far easier to work with. They thought this AND thought that they could maintain all the traditional US trappings, hoping (typically not a great planning technique) to have the best of both worlds.

      1. Nothing wrong with aiming at “the best of both worlds”. That is what Europe did in 1973, when it wrote the substantive law of patent validity for the European Patent Convention. Those from the UK thought that nothing of UK law could be dispensed with. Those from Germany thought all their provisions sacrosanct. They were both wrong.

        But even with the irreducible minimum of legal complexity that is the EPC, it is still tricky to divvy up rights between rival independent applicants who all thought they were both first to invent and to file. Decisive is what they chose to teel of their inventions, in their respective Patent Office filings.

        Now of course, all those PTO filed docs are available to the public. So anybody embarking on an FTO study can straighaway access all the documents that matter. Some players like FTO studies to be definitive. Other parties want the opposite. It is for the pols to set “public policy” and decide whether or not to favour those who want definitive FTO opinions. I presume those that need good FTO are thinking of investing in innovation, and so should be helped.

        1. presume those that need good FTO are thinking of investing in innovation, and so should be helped.

          I do not think that such is a fair presumption to make.

          If anything, the opposite presumption is more likely, as the one wanting to operate is more than likely not thinking that they have innovated (hence no investment in innovation) and more likely just want to be “clear.”

          Now if you amended your post to add “and file for patent protection themselves,” THEN the presumption of investing in innovation may inure.

          Bottom line is that a prior art search and a freedom to operate search are (subtly) different.

    2. Max, most of the complexity of inventorship from first to file outside of the U.S. is due to the mere “novelty only”value of filing first in the time period before publication. Under the AIA the first to file gets full prior art benefit as of their filing date, including foreign priority.

      1. So much for harmonization, Paul.

        The whole point of going to FTF was to harmonize with Europe and the ROW.

        Then we shot ourselves in the foot allowing non-public information to be prior art for obviousness purposes, something that had been an anathema to the patent bar since Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S. Ct. 335, 15 L. Ed. 2d 304 (1965). link to scholar.google.com (“Petitioners’ primary contention is that the term “prior art,” as used in § 103, really means only art previously publicly known.”) (Also, this case illustrates just how shabby the drafting of the ’52 Act really was.)

        Paul, given the importance of the issue and the AIPLA long position against secret prior art, is it not remarkable that that organization did not file an amicus brief supporting the petitioner?

        1. The whole point of going to FTF was to harmonize with Europe and the ROW.

          Only for the extremely gullible people, as the AIA never had a version that would have achieved that “objective.”

          Never.

          1. anon, it was my understanding that we got the Euros to agreed to support GATT-Trips in exchange for agreeing to to do a number of things, including publishing apps, twenty years from filing and eventually, going to FTF. Harmonization.

    3. Max, what happens if A is claiming invention X, B is claiming invention Y, but invention Y is disclosed in A’s first-filed application? (We are assuming that neither application was published before the other filed.)

      1. I’m not Max, but I think I can answer that one. If prior-filed App-A discloses later-filed App-B’s claimed invention Y in an anticipatory (novelty-destroying) fashion, then App-A is useful as novelty destroying art.

        But App-A cannot be used in an inventive step analysis. This often plays out when the disclosure of App-A is initially argued to fully disclose invention Y, but B successfully demonstrates the App-A disclosure is only Y-prime (not quite fully disclosing Y).

        The typical US examiner would then simply say, well, you’re still obvious because (yada-yada-yada, wave hands, wave hands). But the EPO examiner or opposition division can’t do that. App-A is either novelty art or it’s nothing.

        1. Mellow, I see.

          But there is no good policy reason for this, is there? The policy should be to prevent two patents on the same invention. The first to file and claim the invention should prevail.

          1. Ned,

            Your last sentence is more deceptive than it appears at first blush.

            You have used a compound verb: “file and claim” which is not in accord with the law.

            The verbs are distinct.

            You have file.
            You have claim.

            One does not get a patent (nor should they) if one has been beaten to the patent office (file) whether or not the second verb (claim) is present.

            Your subtle manipulation opens the door to the problematic second comer stating that a first comer “but the first comer didn’t actually claim an invention that we as second comers did claim

            THAT is no way to run a patent system.

            1. anon, “Your subtle manipulation opens the door to the problematic second comer stating that a first comer “but the first comer didn’t actually claim an invention that we as second comers did claim”

              THAT is no way to run a patent system.”

              Why?

              1. Because it does not accord with the law – either written or intent – of novelty.

                You put far too much emphasis on the second portion of the compounded verb (claim) whereas novelty is not addressed only by that which is claimed.

                You just have to treat each verb on its own.

          2. “But there is no good policy reason for this, is there? The policy should be to prevent two patents on the same invention. ”

            Hi Ned. I addressed the specifics of your question, which set forth that there were two differing inventions claimed, X and Y.

            For the case where two applicants are claiming the same invention, and filed at the same time, see Max’s comments about priority resolution.

            For the case as in your hypo but where the two applicants A and B are indeed claiming the same invention, you have already stated that A has priority of filing, so only A gets the patent (and there is also the point that A’s application specification must be novelty destroying art for B’s claims).

      2. Ned,

        Do you mean “entirely” as in novelty defeating, or merely “obvious from”…?

        The answer is different for each (if I recall my EP “lessons” here correctly)…

        1. Novelty defeating.

          Why should B be foreclosed by A’s first disclosure Y if B is the first to claim it?

          In the US, B is not the first inventor per Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926).

          But prior inventorship is irrelevant in FTF countries. So why should unclaimed disclosure bar a first claimer in absence of a public disclosure?

          1. Ned I hardly know where to start, with my reply to you on the basics of First to File. But here goes.

            There is no such thing as a continuation or a c-i-p outside the USA. All we have is divisionals.

            You can use a divisional to protect subject matter disclosed in the parent but not, as such, claimed in it. If you were in a jurisdiction without continuations, would you confine divisionals to that which is claimed in the parent? Many would say that is unfair to the Inventor.

            But if you are going to allow divs for disclosed but not claimed matter, you ought to allow novelty attacks based on earlier filed unclaimed but enablingly disclosed matter. If you don’t, the first who filed that matter at the PTO finds herself under the issued patent of one who filed later, on the self-same matter.

            Paul Morgan (at 5.3) there you go again, asserting that Art 54(3) EPC is what imports the “complexity” into the First to File system. With respect, it doesn’t. The EPC judges obviousness wrt what the PHOSITA knew and could have known. Art 54 EPC on novelty is for an entirely different function, namely, i) to curb double patenting and ii) to adjudicate between rival filers, all of whom filed before any of them told the public about their respective inventive concept.

            Ned is right, that the AIA is everything else but harmonisation. I presume the drafter of the AIA was aiming to convert the ROW to US patent law. Look, for example at the TPP, now agreed. Patent term extension if the PTO is tardy, mandatory grace period etc etc. Secret prior art for obviousness is, I suppose, another item on the USA shopping list, aiming to import a US-style “Winner Takes All” philosophy to FtF, curbing a perceived mischief of EPC law, mixed ownership patent thickets.

            1. Actually, Max, we do have a policy about late claiming disclosed but unclaimed subject matter. One cannot do it if there are intervening rights. Symbol Technologies, Inc. v. Lemelson Medical, 277 F.3d 1361 (Fed. Cir. 2002). link to scholar.google.com

              I think the EPO recognized there was a problem in late claiming when it tried to put a two-year limit on divisionals.

              Still, I think the EPO needs to rethink things a bit all around. The policy should be that the first to file and claim subject matter not publicly available should have priority.

              1. An interesting citation Ned.

                Perhaps the dissent is closer to the mark, though:

                “the court should not intervene in equity to regulate what Congress has not.” Symbol, slip op. at 13; see Northwest Airlines, Inc. v. Transport Workers Union of America, 451 U.S. 77, 97 n. 41, 101 S.Ct. 1571, 67 L.Ed.2d 750 1369*1369 (1981) (“The equitable considerations advanced by petitioner are properly addressed to Congress, not to the federal courts.”).

                1. No doubt the equity should intervene for clear abuses of process combined with harm directly attributable to the abuse, not for simply exercising one’s statutory rights.

                  In the EPO, that organization has already recognized the problem of late claiming and has attempted a remedy that proved unpopular — filing divisionals within two years.

                  Still, the problem of not claiming disclosed subject matter until there are intervening rights IS a problem. I would think that if one is spurred to claim as an invention something previously unclaimed because

                  another applicant is claiming it, then

                  the equities clearly favor the first to claim, not the first to disclose.

                2. The point being Ned that you do not have “a clear abuse of process” for failing to go above and beyond what the Congress has set forth.

                  Judicial muckery.

              2. Ned, as far as I know, the short-lived two year cap on filing divisionals at the EPO was not to stop late claiming. Rather, it was to curb the mischief of carefully retaining “something pending” in reserve, throughout the 20 year term of the patent.

                1. Max, lets clarify one thing. Can one, in Europe, claim in a divisional application, disclosed but previously unclaimed subject matter?

                2. Ned perhaps there is less between us than you suppose. The strict European prohibition against adding ‘matter’ means that, in practice, you cannot succeed in a divisional, claiming a concept that you haven’t already announced as such in the parent. Putting it another way, you don’t need a claim in the parent but you do need in the parent some sort of statement of the invention you claim in the divisional. How does that strike you.

                3. A gentle reminder to both Ned and MaxDrei, both of the substance and of the fact that this conversation has been had before:

                  See link to uspto.gov

                  MPEP 2163 II. METHODOLOGY FOR DETERMINING ADEQUACY OF WRITTEN DESCRIPTION
                  A. Read and Analyze the Specification for Compliance with 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, para. 1
                  3. Determine Whether There is Sufficient Written Description to Inform a Skilled Artisan That Applicant was in Possession of the Claimed Invention as a Whole at the Time the Application Was Filed
                  (a) Original claims
                  …If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. See, e.g., Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1116; Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA 1972) (stating “the description need not be in ipsis verbis [i.e., “in the same words”] to be sufficient”).

                  I would also remind both – since both seem to not be current in actual U.S. prosecution practice, that there is veritable boilerplate language that EVERY decent scrivener knows to include such that the worth of the written application is maximized pertaining to being able to wring out every last drop (foreseen and unforeseen in relation to what the Office may come up with) of invention possession at time of filing and that the “no new matter” rule – existent in US law as well, MaxDrie – does not impact the applicant. We already KNOW that the work we do must be both forward looking and be diligent and flexible to meet the needs of our clients.

                4. Ned asked me a question about Europe and I answered for Europe. Of what relevance to that is the MPEP, I ask myself.

                5. MaxDrei,

                  Throughout this thread, the EP, the US and in fact a One World Order have been intertwined.

                  As my post makes perfectly clear – it was a gentle reminder of the controlling situation in the US.

                6. Max, agreed. In the end, the practice seems to be the same. If there is something in the spec that is not identified to be an invention one way or another, it cannot be claimed in Europe. It can in the US, absent laches.

                  So, when I speak of subject matter in A’s spec that is unclaimed, I mean, that there is no indication at all that it is an invention so that it cannot be claimed by A as an invention in Europe — ever.

                  No B, the second filer, discloses and claims this unclaimed invention before it is made public. Why in the world would A’s prior disclosure bar B when the issue is priority and not prior art? B was the first to disclose and recognize the subject matter to be an invention.

                7. MaxDrei asked: “Of what relevance to that is the MPEP, I ask myself.

                  And prior to Ned’s response, I explained – and as if on cue, Ned responds with absolutely the wrong answer.

                  Ned, have you been away from prosecution that long as to not realize that applications contain protective forward-looking language to make sure that the application as filed as the maximum amount of protection for the client?

                8. Ned under the EPC it is a bit more subtle than you summarised it just now.

                  A’s filing is prior art to B’s, but (EPC, Art 54-3) only for novelty. So everything A writes can serve as a novelty attack on B#s claims. Often, that’s enough to puncture the novelty of the claim B filed, later than A’s filing.

                  How can B deal with that? By including in his claim a disclaimer of the novelty-destroying content of A’s earlier filing. In that way, B cannot get a claim to issue that reads on to what A disclosed earlier to the Patent Office. A sort of “prior user right” to protect A, if you will.

                  I’m curious: do you still think the EPC gets wrong the balance between rival inventors and innovator filers? Me, I think the AIA is loaded too much in favour of the First to File. For me, between rival inventors, you can go too far with a “Winner Takes it All” statute.

                  But then I, EPC-indoctrinated as I am, and acting as often for Opponents as for patent owners, would think that wouldn’t I?

                9. It’s a comedy of errors between Ned and MaxDrei on this subject.

                  MaxDrei misses several times with his rather off “advice” of

                  How can B deal with that? By including in his claim a disclaimer of the novelty-destroying content of A’s earlier filing. In that way, B cannot get a claim to issue that reads on to what A disclosed earlier to the Patent Office. A sort of “prior user right” to protect A, if you will.

                  First, it is well known that the Patent Office will invariably cite art NOT known or presented by the applicant. Going by the earlier “strict no new matter” comment, this type of post-hoc advice is cold comfort.

                  Second, it is also well known that it is extremely dangerous to characterize others’ inventions within the application itself. There are multiple paths for this danger, including IC accusations as well as the fact that even if stated in error, an admission by applicant that something is prior art will be treated as if it is prior art. The reality of patent profanity is clearly lost on MaxDrei, even though he has been appraised of this very danger in the past by yours truly. Clearly, MaxDrei is not an application writer and should limit his “advocacy” to those things he is actually involved with.

                  Lastly, his reference to “prior user right” of a sort is simply NOT in accord with what that term of art entails, and such conflation is both unnecessary and unhelpful.

                10. Max, A’s application is not “prior art” to B’s. It is, rather, a kind of bar, like prior invention. Prior Art is stuff in the public domain.

                  From a prior invention POV, the first to invent wins. This means that B wins in the US because A did not claim the invention on filing. B was the first to claim.

                  But then we have the ringer — 102(e) that was interpreted by the Supreme Court to be a form of prior art because that is what 103 implied it was. Thus, because of this, the invention is not patentable to B either even though he was the first to invent.

                  Sick.

                  And it demonstrates the wrong-headedness of 102(e).

          2. “Why should B be foreclosed by A’s first disclosure Y if B is the first to claim it?”

            Huh? Because what B is attempting to claim cannot be novel if it was pre-disclosed in A’s text.

            It doesn’t matter when someone is “the first to claim it” if it is not novel. It existed as a part of the art as of when A filed regardless of the fact that A did not attempt to claim it. B can hardly come along later and claim the non-novel subject matter despite being the first to attempt to do so.

            1. Mellow — novelty is a thing of prior art. Because the subject matter has not been publicly disclosed, it is not prior art.

              The contest here is between rival claimants to an invention that is novel by law because it is not publicly disclosed. One claims the invention. The other does not.

              I think it the law and equity should favor the first to disclose and claim. There is no good policy reason not to accomplish this result. None.

              1. “Because the subject matter has not been publicly disclosed, it is not prior art.”

                It functions as prior art everywhere, US (old 102(e) novelty destroying, etc).

                What is the difference between these two scenarios, from a novelty standpoint?

                Case A: elemental iron does not exist. You happen to produce some elemental iron in your chem lab, write it up and claim it in a patent app. Unbeknownst to you, I wrote up and filed 2 days earlier a patent app fully disclosing elemental iron.

                Case B: elemental iron does exist, but no one knows it just yet. You happen to produce some elemental iron in your chem lab, write it up and claim it in a patent app. Unfortunately for you, a year or two after your app is filed and while it’s sitting in a queue awaiting exam, Malcolm-Anon Mudslingers, Inc. happen to dig up some elemental iron and publish their results to the world.

                In both cases, what you have claimed turns out to have been non-novel.

                1. Mellow, Mellow, Mellow…..

                  Milburn was about prior invention not prior art. There is a difference.

                  That we foolishly included it in 102 was a mistake. Nobody in the world makes non public information prior art. Nobody. And we did not either — if one recognizes 102(e) for what it really is — a codification of Milburn.

                  I will deal with your example next.

              2. I think first to file is different than your version here Ned of a strict “not novel by law because it is not publicly disclosed”

                Once filed – whether or not claimed – it is legally treated as if publicly disclosed**.

                **of course, it should be understood that items NOT eventually published, as in an application expressly abandoned prior to publication are not included in this discussion.

  4. “This decision offers an example of failures of the first-to-invent regime.”

    Not true, Dennis. What it shows is a pro-se applicant in way over their head, like me trying to be my own car mechanic. For example, note that this applicant had to address a “due diligence” period of 63 months (over 5 years) and could, at best account for only 7 months of activity in that period.

    1. For example, note that this applicant had to address a “due diligence” period of 63 months (over 5 years) and could, at best account for only 7 months of activity in that period.

      Those do seem to be important facts. Thanks, EG.

      1. Hey DanH,

        You’re most welcome. Yeah, proving “due diligence” between conception and reduction to practice (actual or constructive) is highly important. I was fortunate that my late father was an interference specialist (he figured he was involved in about 400 or so of those “monsters” in his 30+ year career). I remember looking at some of his interference briefs which addressed “due diligence” issues. Any unexplained “gaps” in activity during that “due diligence” period would likely be fatal, and having a “due diligence” period as long as that in this Steed case is almost impossible justify, be it a Rule 131 or otherwise.

  5. Adequate evidence of prior conception of all of the claim is hard enough, but the 102(g) required accompanying adequate proofs of substantially continuous acts of “diligence” towards filing or actual reduction to practice after a conception is usually far harder. Diligence evidence defects are too often missed in ex parte application examination of Rule 131 declarations. But they are rarely missed in interferences, IPRs, or CBM’s, or by defendants being sued on a patent claim obtained with a defective Rule 131 declaration.
    Re the comments about “constructive reduction to practice” adequacy, this should subsume into 112 questions of adequate enablement and description of the invention in the application or patent. Again those issues seem far less challenged in ex parte application prosecution than in litigation?

    1. Plus, if you’ve ever read the case law in this area, talk about being both all over the map and very, very, very fact-specific! You can support any position you want, though most cases are unfavorable to proving diligence. (And, of course, the MPEP selects the most unfavorable cases as examples.) But you really have to read the cases quite carefully, as they’re incredibly fact-specific.

      1. The case law on 102(g) diligence IS clear enough that months of completely unexplained activity [no evidence] towards actual or constructive reduction to practice [before someone else’ much earlier date] is going to lose. Many of those lamenting the slow death of U.S. “first to invent” never understood what “first to invent” really meant, and how rarely that was successful when challenged. In too many cases ex parte practitioners confused slipping a deficient Rule 131 declaration past an ex parte examiner with getting an enforceable patent.

    2. Also, note, only subject matter claimed (and issued, or allowable in the case of an interference) is deemed constructively reduced to practice — and of course, the concerned claims must be supported in the manner provided by 112(a).

  6. “Since the applicants had used the wrong word, the PTO solicitor argued that the applicant waived their right to argue actual reduction to practice.”

    Kind of a di ck move. Esp against a pro se. Why bother with such arguments? If he gets around the reference then let him around the reference.

    “On appeal, the Federal Circuit rejected the waiver argument, but ultimately found that the applicants had not proven actual reduction to practice.”

    Good for them. How many times must they tell the PTO to not be di cks to the pro se people? This is like the third time in recent memory.

    1. Kind of a di ck move. Esp against a pro se.

      It’s especially shocking given that a pro se applicant would never, ever attempt a “gotcha” argument against the PTO.

  7. ” Today, few patent applicants actually reduce their idea to practice prior to filing (certainly not covering all of the claimed arrangements)”

    Lol, “today, few patent applicants actually invent anything prior to filing” but we give them a pass and call it “inventing” anyway, especially after highly trained inventor/lawyers have had time to ask the people that will swear they are the inventors leading questions to bloat up the application/invention a bit so that it will be sufficiently “legally covered”.

    ^what it should say.

    And I don’t doubt it. But I would say that more than the average are actually made in my art.

    1. ^^^ talk about your di ck moves….

      😉

      But hey, look at the “narrative” you have to start with:

      In essence, the courts have noted that the elements of invention were not actually completed, but we will close our eyes and simply assume the legal fiction.

      That’s about the most twisted version of constructive reduction to practice I have seen from someone who is supposedly “neutral” and “objective.”

      But quite clearly is neither.

      1. It isn’t really so much “biased” against anyone anon, it’s just stating what is really going on behind the scenes of the patent system in today’s world, a simple fact. It might not even be a bad thing, various arts may in fact be advanced in that manner anyway. If that is the entitlement program that congress wants then by all means, let it have such. Though I’m not even sure how important all this is after the AIA.

        1. “It isn’t really so much “biased” against anyone anon, it’s just stating what is really going on behind the scenes of the patent system in today’s world, a simple fact.”

          This is true

          ” It might not even be a bad thing, various arts may in fact be advanced in that manner anyway”

          This is not true. It just gives those with the most money (who can file a bazillion continuations) an advantage.

          1. Except not, as actual construction had not been a requirement since the early days and the submission of models.

            But look at the three that have missed this critical fact – thanks for proving my point guys.

            Prof / the (anti-patent) company you keep….

          2. “This is not true. It just gives those with the most money (who can file a bazillion continuations) an advantage.”

            Doesn’t matter if rich people have an “advantage” for the arts to be considered promoted bro. The disclosure of the conception of the product/method/apparatus/composition can very well promote the state of the art.

            1. I already told the young lad that the material legal portions of patent law are agnostic as to “wealth” of the inventor.

              This is what happens when “philosophy” displaces reason and a lack of appreciation for what law IS permeates “new” lawyers who lack a real world basis.

                1. Once again Topce, you lead with your “tell” of “theory.”

                  You do realize that this just translates to an item in law that you recognize as real but “inconvenient” and that you just don’t want to deal with, right?

                  You’ve done this several times now. You would be far better off admitting the correctness of my position and reevaluating your own then back-peddling with this “in theory” line of yours.

      2. With the exception of ineligible abstractions, it’s impossible to “practice” an invention without actually making a physical embodiment of the invention, or applying the invention to a physical object.

        Hence the major caveat regarding “constructive” reduction.

        This observation is both “neutral” and “objective”, by the way. Let’s hear your “unbiased” response.

        1. You do know that the patent right is a negative right and actual practice is not required, eh?

          Prof – your bias leads directly to this type of asinine comment and lack of appreciation of what the law actually is.

        2. That’s great, MM, but the post doesn’t simply say that constructive reduction to practice is different than actually practicing the invention. Instead, it says that by accepting constructive reduction to practice, the courts are simply assuming “the elements of invention.” I don’t think that is right. “Actual reduction to practice” isn’t an element of an invention, but rather just one way to prove invention. Constructive reduction to practice, with its associated requirements is another, that the courts have deemed to be just as good. Indeed, in many (most?) cases, a good written description is likely to be a much better indication of the true scope of an inventive concept than a single physical embodiment.

          1. DanH: “Actual reduction to practice” isn’t an element of an invention, but rather just one way to prove invention.

            Nobody is arguing the contrary.

            All Dennis was saying is that you don’t have to actually reduce anything to practice. You can do so “constructively” — i.e., the law will recognize certain acts (basically meeting the filing and patentability requirements under 112) as proxies for an “actual” reduction to practice. That doesn’t change the fact that (in many instances) the invention was never actually practiced by the inventor.

            You may not like the phrasing D chose but it’s not “anti-patent” unless you live in Patentworshipland where you’ve got to genuflect before the Patent Lover’s Cmmandments every other sentence or be tarred as “impure.”

              1. Have you ever even been to Patentworshipland?

                It’s time we take a ride, we can cast all of your overbreadth hang-ups over the seaside while we fly right over the claim-filled sea.

        1. That’s hardly a great argument Topce.

          At all.

          Did anyone ever explain to you the concept of a negative right, or follow-on innovation?

      3. I agree that it’s a very bizarre comment on “constructive reduction to practice.” Upon the filing of the application, the written description and enablement requirements. There’s no “fiction” at this point, and no need for anyone to close his eyes and pretend anything – the application either meets the requirements for documenting and claiming an invention or it doesn’t.

        1. There’s no “fiction” at this point,

          The fiction is that the invention was practiced, under any reasonable definition of that term. In most cases, it was never practiced. Hence the term “constructive” and the substitution of a legal proxy for actual practice.

      4. Why are patents a target for some?

        Because they protect property rights of individuals for products of the mind.

        That makes it qualify as a quadruple target for some because it stands for:

        -property
        -rights
        -the individual (rather than some vague mystical group or commune)
        -products of man’s mind (rather than the exercise of brute unthinking labor)

        Who rejects and denounces these things and therefore patents?

        I think you know.

            1. Oh, I thought “anon” was referring to people who actually comment here and not the sooper dooper scary Fifth Column.

              Capitalism thanks you and all True Patriots for your undying concern.

              1. ^^^ because Malcolm truly “believes” that the patent system has somehow not been under attack from both the Left and the Right….

                Talk about burying your head in a hole in the ground….

    2. Professor, correct me if I am mistaken, but constructive reduction to practice only occurs if the patent is granted. Filling is not enough. This was done so as to save the PTO from the embarrassment of granting a patent to someone who is not an inventor.

      1. Agreed.

        And, only subject matter claimed (and issued, or allowable in the case of an interference) is deemed constructively reduced to practice — and of course, the concerned claims must be supported in the manner provided by 112(a).

        1. Ned, on a different note, may I shoot you an email to ask a quick question?

          (I already have the address from Internet research, no need to post it.)

      2. My apologies Professor, I meant to make a point, rather than simply nit-pick. My point was that I don’t think most inventors relied on constructive reduction of practice unless absolutely necessary.

        Further, although first-to-file is administratively easy, there is no requirement in the statute that the person filing must be an inventor at all, despite the rhetoric of “first inventor to file” that everyone heard. I think that creates problems in and of itself.

        1. J – I don’t think that I understand your point.

          My point is:

          (1) patenting requires invention;
          (2) invention requires reduction to practice;
          (3) most patents include at least some claims to inventions that are not _actually_ reduced to practice prior to filing but instead only constructively reduced to practice.

          1. It is the emphasis that comes across in the “only” that makes it appear that you think that somehow constructive reduction to practice is somehow “inappropriate.”

          2. Have you figured out yet why your own actions create the perception of you being biased, Prof?

            Several pro-patent posters have reflected and voiced concerns on these tendencies.

            Perhaps a wake up call might help and also might reveal just why the non-objective editing here – tending to be along the lines of a certain narrative – just might result in some very real implications on any “editorial protections” of a mass public media channel may (or may NOT) result therewith. A channel that is not really objective does not garner full protection and all.

            It would be incredibly irresponsible of you to not take note of these things – you teaching patent law and all.

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