Uncertainty: Helsinn Foreshadows Trouble with AIA Patents

By Dennis Crouch

The AIA was passed back in 2011 and the changes have gradually been implemented through the patent system.  We are finally at the point where most newly issued U.S. patents are post-AIA patents whose patentability is individually based upon the first-to-file provisions of re-drafted 35 U.S.C. § 102.  We’re talking here about hundreds-of-thousands of patents interpreted under the new rules with millions on their way.  As this huge stone is slowly building momentum, the PTO has faced a startup problem: The Agency must apply the new law even though it has almost no guidance from the courts as to how the new portions of the statute will be interpreted.  Because the PTO interpretation is given no deference and because of the many drafting holes in the AIA, I expect that the PTO interpretation will be repeatedly found incorrect.

The only substantive area that has been thus-far decided by the Federal Circuit involves the recent Helsinn decision.  In that case, the Federal Circuit rejected the PTO approach to on-sale prior art and ruled that a pre-filing sale whose existence was disclosed to the public counts as 102(a)(1) prior art even if the elements of the invention were not publicly disclosed (just the fact of the sale).  In its incorrect interpretation of the statute, the PTO had judged the statute as only counting sales as public if the elements of the invention were also disclosed publicly.[1]

There are many other potential examples of questionable language from the AIA first-to-invent provisions that will eventually come to a head:

  • Effective Filing Date: In a patent claiming priority to a prior application, does the claim’s ‘effective filing date’ depend upon whether the relied-upon filing discloses and enables the claimed invention? Section 100(i) suggests that we look only to whether there is a claimed right for priority or benefit. This could impact many written description cases.
  • On Sale: Does a purely private sale or offer to sell count as prior art? Helsinn reserves this question for a later date.
  • Public Use: Does non-disclosing public use count as prior art? Helsinn suggests yes.
  • Commercialization: Does non-disclosing commercialization of the invention by the patentee count as prior art?
  • Otherwise available to the public: Under what conditions apart from the listed publications and uses will we consider an invention to be “otherwise available to the public?” How much further does this go beyond publication and public use? Is public knowledge of the existence of the invention sufficient, or must the public be made aware of the inventions elements and how to make and use the invention? Does the invention need to be discoverable in some way?
  • Grace Period: What level of proof is required for the patentee to show its prior disclosure?
  • Disclosure: For an inventor’s disclosure to trigger the grace period, must it enable the entire invention?
  • Public Disclosure: What counts as a pre-filing ‘public disclosure’ under 102(b)(1)(B) sufficient to knock-out prior art? Is the publicness the same as 102(a)(1)?
  • Changed Disclosure: For intervening third-party disclosures or patent applications that differ from an inventor’s disclosure, what scope (if any) is knocked-out from the scope of prior art? This may be different depending upon whether focusing on 102(b)(1)(a); 102(b)(1)(b); 102(b)(1)(c); or 102(b)(1)(d).
  • Date of 102(a)(2) prior art: 102(d) modifies the 102(a)(2) prior art date for published applications and patents by looking to whether the application claims priority / benefit to a prior filing. Congress certainly intended that the priority date only counts if the priority filing disclosed the subject matter being relied upon in the rejection.  However, the statute is not so clear and suggests instead that all we need is a proper claim of priority or benefit. .

These are a handful of examples, and more certainly exist.

I have some thoughts on how provisions of the statute should be interpreted – both as a matter of statutory interpretation and a matter of patent policy.  My larger concern, however, is that we are still years away from seeing court decisions interpreting these elements in ways that settle the law.  Up to now, for instance, there are not even any public PTAB decisions interpreting the new elements of 102(b).  With the disposing of more than 500,000 patent applications per year, the office is likely to churn through millions before these issues go before the Federal Circuit.  If the first case on point (Helsinn) is any indication, the Federal Circuit is likely to disagree with at least several of the PTO’s statutory interpretations – potentially creating swaths of improperly issued patents or improperly rejected applications depending upon whether the PTO interpretation is too broad or too narrow.  Although temporary, we have the potential here of creating a real bubble that will give us another 20+ year headache in similar fashion to the PTO’s low-quality examination of software and business methods in the late 1990s and early 2000s.

= = = = =

[1] MPEP 2152.02(d) (“The phrase ‘on sale’ in AIA 35 U.S.C. 102(a)(1)  is treated as having the same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.”).

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

81 thoughts on “Uncertainty: Helsinn Foreshadows Trouble with AIA Patents

  1. Yes, some uncertainties in possible AIA language interpretation have been noted right from the beginning.* However, are they really creating a “huge stone [of decisions based on erroneous interpretations that] is slowly building momentum”? That would seem to assume that thousands of patent attorneys in thousands of AIA IPRs and hundreds of thousands of AIA applications to date have failed to present arguments for their clients based on interpretations of the AIA different from that of the PTO. That is unlikely as well as somewhat unflattering,** and the more logical explanation is that the AIA language interpretations still in dispute only impact relatively rare fact situations.
    *E.g.: “The Ambiguity in Section 102(a)(1) of the Leahy-Smith America Invents Act” 2011 Patently-O Patent Law Review 29.
    **Also, there has been no shortage of cert petitions on various aspects of the AIA.

    1. Mr. Morgan,

      I note that you spoke up early as to the problems that the
      C
      R
      P
      job Congress did with the AIA, and for that you are to be commended.

      However, I do not think that even “thousands of patent attorneys in thousands of AIA IPRs and hundreds of thousands of AIA applications to date [having NOT] failed to present arguments for their clients based on interpretations of the AIA different from that of the PTO” addresses the elephant in the room.

      The longstanding problem in patent law has been the Court wanting to impose its own policy choices into a pure statutory law regime.

      The dialogue that I have engaged in with Ron Katznelson has clarified the biggest danger of the AIA: the extremely p00r writing of the AIA invites legislating from the bench at a time when what is needed to salvage patent law is a removal of that self same legislating from the bench.

      Not only did the AIA not address the number one priority for the patent office (better actual examination), not only did the AIA – and no matter how much you do not new to engage in that discussion – create a Constitutional crises with its disregard of other protections for property, the AIA went in the opposite needed direction (to achieve clarity) by excreting such muck that all but guarantees not just CAFC legislating from the bench, but the guaranteed eventual re-writing from the bench by the Supreme Court.

      Those who brought about the AIA, while employing the Orwellian double speak of “bettering things for the small inventor” have wrought havoc and have cheapened (in all of the bad ways and in none of the good ways) the US patent system.

      If it were a crime to write bad law…

    2. Please pardon any post doubling…

      Mr. Morgan,

      I note that you spoke up early as to the problems that the
      C
      R
      P
      job Congress did with the AIA, and for that you are to be commended.

      However, I do not think that even “thousands of patent attorneys in thousands of AIA IPRs and hundreds of thousands of AIA applications to date [having NOT] failed to present arguments for their clients based on interpretations of the AIA different from that of the PTO” addresses the elephant in the room.

      The longstanding problem in patent law has been the Court wanting to impose its own policy choices into a pure statutory law regime.

      The dialogue that I have engaged in with Ron Katznelson has clarified the biggest danger of the AIA: the extremely p00r writing of the AIA invites legislating from the bench at a time when what is needed to salvage patent law is a removal of that self same legislating from the bench.

      Not only did the AIA not address the number one priority for the patent office (better actual examination), not only did the AIA – and no matter how much you do not new to engage in that discussion – create a Constitutional crises with its disregard of other protections for property, the AIA went in the opposite needed direction (to achieve clarity) by excreting such muck that all but guarantees not just CAFC legislating from the bench, but the guaranteed eventual re-writing from the bench by the Supreme Court.

      Those who brought about the AIA, while employing the Orwellian double speak of “bettering things for the small inventor” have wrought havoc and have cheapened (in all of the bad ways and in none of the good ways) the US patent system.

      If it were a crime to write bad law…

  2. “Effective Filing Date: In a patent claiming priority to a prior application, does the claim’s ‘effective filing date’ depend upon whether the relied-upon filing discloses and enables the claimed invention? Section 100(i) suggests that we look only to whether there is a claimed right for priority or benefit. This could impact many written description cases.”

    Can someone elaborate on this? I dont understand how you come to this reading. USC 120 specifically refers to USC 112(a) which concerns enablement. Based on what reading does 100(i) suggest that we look only to whtehr there is a claimed right for priority or benefit???

  3. Dennis:
    Does non-disclosing public use count as prior art? Helsinn suggests yes.
    Does non-disclosing commercialization of the invention by the patentee count as prior art?

    Characterizing § 102’s doctrinal bars from patenting as “prior art” bars is a gross mischaracterization. It is part of the problem that makes the ambiguous language of the AIA even more infirm. This mischaracterization appears common among some patent professors and was used by the proponents of the first-to-file of the AIA. The bars due to the inventor’s non-disclosing actions in § 102 are not “prior art” bars, and Helsinn does not “suggests” so – they are provisions for patent-right-forfeiture due to the inventor’s delay in participating in the patent system. These are judicial interpretations of patent law policies that are supposed to create incentives for participation in the patent system, for disclosure, and for actual creation of prior art. A non-disclosing sale, public use, or commercialization is as much “prior art” as an invention which exists solely in the mind of an inventor – neither are “prior art.” The Federal Circuit’s quote in Helsinn of Pennock v. Dialogue clarifies that its decision has nothing to do with prior art, as was Judge Learned Hand’s decision in Metallizing Engineering. The Federal Circuit’s decision here simply states that those patent-forfeiture doctrines (at least ‘on sale’) have not changed by the AIA, an argument I made in my amicus brief in the Helsinn case at link to bit.ly .

    1. What proponents of the first-to-file and Harmonization glossed over is that this forfeiture issue is one the fundamental differences between the American patent system and that of Europe or Japan. Unlike those foreign systems, our patent system, developed and perfected over more than two centuries, takes the patent bargain very seriously: the patent forfeiture bars ensure prompt disclosure and earlier termination of patent rights; the grace period is an additional sub-bargain: facilitating time for further perfection of inventions in exchange for more detailed and better enabling disclosure; providing for CIP’s as incentives for follow-on disclosure of improvements that may be obvious in view of the initial disclosure (and thus not otherwise disclosed); providing the option for keeping the application secret until grant (and if not issued, protecting trade secrets therein); and requiring disclosure of best-mode to ensure more meaningful disclosures – and I have seen how the best-mode requirement deterred inventors from concealing useful enabling information.

      Unfortunately, some of these important attributes were repealed by the AIA in the name of administrative convenience and “improved certainty,” while others are threatened to be so eliminated to the detriment of a system that served so well the American disruptive innovation lead in the world.

      1. Eyes were “wide open” by Congress when they decided to remove the personal forfeitures from the rewrites of 102/103.

        For better or for worse, Congress did what Congress did, and it is entirely out of bounds for the courts to attempt to write the personal forfeitures back into the law. Any attempt by a judge to reinsert these as “still in effect” is in fact ultra vires.

        1. Anon,
          We are of the same mind on patent matters and seldom disagree. Here, on the issue of what “Congress did,” we do disagree, as we have before this decision came out. The court in Helsinn explained that statements by three members of Congress does not constitute “what Congress did.” See its citation to Exxon. Indeed, the House Judiciary Committee acted with “eyes wide open” when it rejected a focused Managers’ Amendment that would have repealed the personal forfeiture bars. Thus, the court did not “reinsert” the forfeiture bars – it merely reaffirmed that Congress had an opportunity, but did not repeal those bars. In other words, Congress did not do what you and others say they did.

          1. Do you have more info on “it rejected a focused Managers’ Amendment that would have repealed the personal forfeiture bars” as your reading” seems overbroad (as Congress did in fact reflect on the scope of the change by eliminating “personal bars” from the title of section 102.

            If you are going to so extensively revamp a section of law and purposefully remove a very explicit portion of a title for the new section AND have the soliloquy (even if you don’t want to recognize that as having the impact that it does), why then the renaming of the section of the law? After all, they could have merely left the section title remain the same, eh?

            1. Anon,
              As to the “focused Managers’ Amendment that would have repealed the personal forfeiture bars,” see my reference to the markup of H.R. 1249 at pp. 18-19 of my amicus brief at link to bit.ly . At that time, I was in close contact with some Judiciary Committee members and their staff when the language of 102 was debated in Committee. They understood very well why the bill managers wanted to make that change and a substantial majority voted it down.

              The fact that the heading of § 102 in the AIA removed the phrase “loss of right to patent,” is consistent only with some drafters’ earlier intent to sneak-in an oblique unavailing preamble, attempting to imply what they were unable to codify directly in the statute. But this is unpersuasive statutory construction because “it has long been established that the title of an Act cannot enlarge or confer powers,” Pennhurst State Sch. & Hosp. v. Halderman, 451 U.S. 1, 19 n.14 (1981). Thus, titles of section headings, as titles of entire Acts, are “not meant to take the place of the detailed provisions of the text,” Trainmen v. Baltimore & Ohio R.R., 331 U.S. 519, 528 (1947). The heading “cannot limit the plain meaning of the text,” Intel v. AMD, 542 U.S. 241, 256 (2004) (quoting Trainmen) and “has no power to give what the text of the statute takes away.” Demore v. Kim, 538 U.S. 510, 535 (2003) (O’Connor, J., concurring) (citing INS v. St. Cyr, 533 U.S. 289, 308-09 (2001)).

              Indeed, the Helsinn court explained that “If Congress intended to work such a sweeping change to our on-sale bar jurisprudence and ‘wished to repeal … [these prior] cases legislatively, it would do so by clear language.’” Slip Op. 26 (citing Dir., OWCP v. Perini N. River Assocs., 459 U.S. 297, 321 (1983)). Heading titles and statements of three members cannot substitute the statutory text.

              1. consistent only with some drafters’ earlier intent to sneak-in an oblique unavailing preamble,

                Only…?
                oblique…?

                If so, then they would not have changed the title, now would they?

                Why would they LET the change in title continue if as you contend, this was known to be “only” some “oblique” “sneak?”

                By the way, changing a title is the LEAST sneakiest thing possible – it is like announcing at the top of your lungs what you are going to “sneakily” do.

              2. Ron, I just read your brief in Helsin, and it seemed to me that you were not careful in that brief to distinguish bars from prior art, and why there are policy differences.

                A non disclosing public use by the inventor certainly is a bar, but it is not prior art to third parties.

                1. Really Ned? Now I doubt that you have actually read the pertinent parts of my brief. Look at Section 1, and particularly its last paragraph on p. 5: “Thus, the ‘on sale’ and ‘public use’ bars to patentability are distinct from prior art bars. Quite apart from any disclosure considerations, “on sale” and “public use” define conduct under which inventors forfeit their rights to patents as a matter of policy grounded in our Constitution. These Constitutionally-grounded policies could not have been repealed by Congress’ enactment of the AIA in 2011.”

                2. Well, Ron, when discussing things like “public use,” I think we need to make clear that the policies underlying a bar to the inventor and prior art that bars everyone be maintained.

                  When the inventor uses the invention by allowing others to use it publicly, without any confidentiality agreement, it is a bar regardless that public is not informed of the details of the invention. That, I think, is a fair summary of both Pennock and Egbert and of the Safe Case, Hall v. Macneale.

                  In contrast, prior art has to actually be in the public domain — people actually have to have access to it, possession of copies or access to the process, so that they can learn it secrets by observation or reverse engineering.

                  As you know, I think 103 should only apply to prior art.

                3. make clear that the policies underlying ____ and ______ be maintained.

                  Why?

                  Who says so?

                  Under the Comstitutional grant of authority, which branch of the government has solely been authorized to make policy decisions?

                  You took a half step previously, Ned (sometime when you were not looking at the Outlook titles, perhaps).

                  Time to take the remaining two and half steps.

                  If you dare.

                4. Anon,
                  I know that on the issue of the forfeiture bars, you and may always disagree. Nevertheless, I find the express references to the Constitution in Pennock and in Kendall to explain the bar quite persuasive – enough to describe these bars as Constitutionally-grounded.

                  Ned,
                  I agree with you on the distinction and definition of “prior art” and on the scope of Section 103: something that must be obvious to a “person having ordinary skill in the art” in view of certain art, cannot be obvious to only one person – the only person that has knowledge of the invention – the inventor. This is because he has extraordinary skill in the art of the specific subject matter of the invention. Thus, obviousness must be based on art which is available to the general public.

              3. Ron,

                I note on that page that you reference that you still get the timing of the Soliloquy incorrect in the grand scheme of things.

                The insertion was NOT at a point that meant the insertion was not valid, as the insertion happened before the House reconsideration and before the final Senate reconsideration. It simply was NOT “post-enactment” and I have previously made this point to you.

                I “get” that you do not want the Soliloquy to have an impact, but what you want simply is not in accord with the facts of the matter.

                1. Anon,
                  The infamous colloquy was among Senators; it dealt with S. 23 – the bill before the Senate; the colloquy was placed in the Senate Record dealing with S. 23; the Senate vote on S. 23 was on the previous day. It could not have informed any of those who voted on S. 23. I have first-hand knowledge that this colloquy was available weeks, if not months, before the vote on S. 23. Well before the vote, Senate Judiciary Committee staff told us that it would be placed in the record but refused to disclose the language even to Senators. The reason they inserted it a day after the vote was to avoid the risk of losing votes – they understood there was resistance to their interpretation of their designed ambiguity.

                  To be sure, the colloquy was indeed made before the House vote, but I did not get the timing “incorrectly in the grand scheme of things.” In my brief, I specifically acknowledge that timing on p. 18-19:

                  “As late as after the AIA bill (H.R. 1249) was introduced in the House, perhaps even in cognizance of the prior Senate colloquy of March 9, 2011, a Manager’s Amendment to H.R. 1249’s § 102(a)(1) proposed [language that captured the substance of the Senate colloquy].”

                  While you are technically correct that the Colloquy was available to the House prior to its vote, that very fact proves my point: the House Committee was well aware of the Senate Colloquy and that was the reason they actually rejected its substance when offered in the Managers’ Amendment.

                  The authors of the Colloquy were too cute for their own good. They wanted to achieve the appearance of legislative history while not risking the vote in the Senate; but that blew in their face, not only in the House Committee, which could see through their obfuscation method, but ultimately in the Federal Circuit.

                  Finally, we can debate here until the cows come home the meaning of the Senate Colloquy, but the Federal Circuit rejected the import of that legislative history in construing the statute, citing SCOTUS’ Exxon decision. If I were you I would not hold on to any hope that SCOTUS would give any weight to this sorry Colloquy.

                2. Ron,

                  The bill that became the AIA was what the Soliloquy was attached to.

                  That bill did not disappear before the Soliloquy was attached.

                  That bill went to the House, and then back to the Senate.
                  It traveled this path with the Soliloquy.

                  Did the Senators employ machinations?

                  Sure.

                  But that becomes immaterial in the larger scheme of things – as any other Senator was free to counter the move.

                  No
                  One
                  Did

                  (your protests of ‘blowing up in their face’ and the House actions just do not make your point)

                  That you later remark (in a truly oblique fashion 😉 ) that “perhaps” it was there for the House does little to change the impact that the Soliloquy must have.

                  I am more than just merely “technically” correct on this Ron.

                  I am correct.

                  To turn a phrase, the Soliloquy yet turns.

                3. Let’s see if I can liberate this comment from the narrative shaping filter….

                  Please excuse (again) the potential double posting due to the desired-non-dialogue filter…

                  Ron,

                  [section on Soliloquy removed]

                  Further, the notion that “express references to the Constitution in Pennock and in Kendall to explain the bar quite persuasive – enough to describe these bars as Constitutionally-grounded.” is – quite frankly – merely self-serving B___ as to what the Constitutionality of what the Court may have been attempting means.

                  The Court does NOT have the power to change the Constitution merely because it wants a different Ends.

                  THAT is exactly part of the ongoing problem with the Supreme Court and patent law, and that is why I push Congress to employ their Constitutional power of jurisdiction stripping to strip the non-original jurisdiction of patent appeals from the Supreme Court, to create a new and untainted designated patent court (as an Article III court – in order to preserve the actual holding of Marbury, and to once and for all stop the mashing of the nose of wax.

                  This is also why even if the legislative changes recommended by the IPO (and any similar recommended changes) will not stop the Court from eventually re-writing the words of the legislature.

                  Putting a g10ss on their past attempts by errantly ascribing “Constitutional nature” only enables the error to continue. One MUST see this as for what it is: an attempt to direct policy.

                  That is simply not within the legitimate authority of the judicial branch.

                  Period.

                4. Anon,
                  First, lets get the terms right.
                  Soliloquy is “an act of speaking one’s thoughts aloud when by oneself or regardless of any hearers.”
                  Colloquy is “a routine, highly formalized conversation.” If you read the Senate Record, you will recognize that three Senators were having an exchange – a conversation. This was a Colloquy – not a Soliloquy.

                  Second, while the insertion was not valid for the vote on S. 23, I will grant you that it was relevant for subsequent votes on a different bill – on HR 1249. But as I have shown, the only relevance of the Colloquy is that its specific substance had been rejected in subsequent votes. The failed Managers’ Amendment (after careful consideration by all House committee members) is much more relevant than the Colloquy of three Senators for which there had been no antecedent Senate support, that occurred previously in a different bill, in a different chamber of Congress. It was not me that does “not want the [Colloquy] to have an impact” – it was the House Committee members, as did the Federal Circuit. Indeed, the Colloquy “yet turns,” but it turns to nothing.

                  While I explained why I believe that the forfeiture bar is “Constitutionally-grounded,” it was my belief based on key SCOTUS decisions – the Federal Circuit did not make its decision on any constitutional grounds – it matters not what I believe. I do agree with your statement that “The Court does NOT have the power to change the Constitution merely because it wants a different Ends.” Just because the Federal Circuit improperly interpreted the Constitution in its three recent IPR cases, does not mean it did so in Helsinn. Here, it did not interpret the Constitution, it simply used traditional tools of statutory construction.

                5. Ron,

                  The “statutory construction”

                  – if you are referring to your attempted portrayal of “The Soliloquy” (notwithstanding any grammatical corrections, I will continue to refer to the item as named for consistency) as improperly constructed when that item simply is properly constructed –

                  is the point that I am taking issue with.

                  I remain correct on this point, and any continued reliance by you on a point shown to be false only weakens your position.

                  You can choose to feel and believe anything that you want to, but purposefully believing a point based on fallacy is not your usual mode of operation.

                  Far better to yield the point as I have made and to accommodate that point in your beliefs. Just because you do not like the item will not make the item go away.

                6. Anon,
                  I am unclear as to what you meant by “the point that I am taking issue with.” Is it how the Colloquy should be interpreted, or how the statutory language should be interpreted? I agree with you 100% that the Colloquy should be interpreted as you have indicated and that it would support your view of the meaning of the statute. I also agree with you that the change in the heading of the statute supports your view as well. These are not unreasonable arguments. The drafters thought these will carry the day. But it did not “turn” out this way.

                  The point I was making is that these are only arguments, and they are legally unavailing because of how statutes must be interpreted. The Federal Circuit made that point clear in Helsinn,: “If Congress intended to work such a sweeping change to our on-sale bar jurisprudence and ‘wished to repeal … [these prior] cases legislatively, it would do so by clear language.’” Slip Op. 26. Indeed, the House bill managers tried to do just that – to “do so by clear language” in the Managers’ Amendment. They did so by striking the terms ‘on sale’ and ‘public use’ that would have been superfluous under the Colloquy’s interpretation of how “available to the public” changes the meaning of the statute. But that “clear language” was rejected outright. In other words, the House Committee members had a different interpretation of the very language that the Colloquy intended to “clarify.” That House language retained the established terms ‘on sale’ and ‘public use’ under the understanding revealed by that Committee’s vote. From then on, that revealed interpretation by the House Committee superseded any prior interpretation of three Senators in a Colloquy. (Remember that the Colloquy could have been relevant to the House vote but had no interpretive value for S. 23 as voted out of the Senate.) What the Senate next voted on was HR 1249, as passed by the House – not on the old dead-letter Colloquy.

                  In sum, your argument was not unreasonable when made before the Helsinn decision. It is simply unavailing.

                7. Ron,

                  Unfortuantely, you are acting like a Ned Heller and turning a blind eye to the court making something up because it aligns with a desired end.

                  To wit:

                  The point I was making is that these are only arguments, and they are legally unavailing because of how statutes must be interpreted. The Federal Circuit made that point clear in Helsinn,: “If Congress intended to work such a sweeping change to our on-sale bar jurisprudence and ‘wished to repeal … [these prior] cases legislatively, it would do so by clear language.’” Slip Op. 26

                  This is nothing but the court trying to take away what Congress DID DO.

                  Was it “sneaky” for members of Congress to do what they did?

                  Sure.

                  But that does not change what Congress DID DO.

                  The world still turns.

                  As to “they are legally unavailing because of how statutes must be interpreted.

                  No. This is why I pointed out that YOUR arguments and “timing” are flawed.

                  It is you that persist on a flawed “interpretation because ALL of those quotes you attempt to use in your brief on the page I noted do NOT apply because of the factual situation of the Soliloquy [sic] IS as I have noted.

                  This is not a matter of “interpretation” – this is a plain factual matter leading to how you merely want an interpretation to be undertaken.

                  That a court (such as in Helsinn) disregards what the facts are and itself engages in attempts to rewrite what Congress actually did does not change what Congress actually did.

                8. To play on a theme…

                  I have the facts – and I am pounding those facts.
                  I also have the law (as actually written by Congress) – and I am pounding the law (as actually written by Congress).

                  All that you have is the table of a court attempting to use common law to change statutory law.

                9. Anon,
                  What three Senators did is NOT “what Congress DID DO.” Three Senators definitely did no more than what what the House DID or what a majority of the House Judiciary Committee members DID DO. This has nothing to do with my amicus brief quotes about “post-enactment legislative history” argued to the court – the Federal Circuit did not use this particular “post-enactment” argument – it rather used the general statutory construction canon enunciated in Exxon.

                  In my arguments above that the Colloquy’s substance was considered by the House Committee and rejected, I have essentially conceded that the term, and related citation to, “post-enactment” should not have been used in my amicus brief in connection with the Colloquy – I’ll grant you that. However, to assess the Federal Circuit’s decision, which did not rely on, or make, the “post enactment” argument, it matters not whether this argument is correct or not – we will probably still remain in disagreement.

                  We will just have to disagree about what Congress DID DO. After all, we are not alone – the question of what Congress DID DO got to the Federal Circuit and may well go further. Perhaps we will have another opportunity to discuss this if and when SCOTUS chimes-in.

                10. Perhaps so, Ron.

                  But I have even less faith in SCOTUS than I do have in the CAFC; so I doubt that actual answers will be forthcoming from that source.

                  As it were, we will have to agree to disagree.

                  (by the way, I DO appreciate the work that you do in wanting to make a stronger patent system)

                11. Anon,
                  Here I agree with you: generally, I too have even less faith in SCOTUS than I do have in the CAFC, although its recent decisions on IPR do not bear that out.

                  In any event, thanks for the kind words. I turn these right back at you – I also appreciate your cogent and highly-informed comments on the patent blogosphere. Over the years, they help educate interested readers on our cause.

    2. Ron, on this point about the distinction between statutory bars and prior art, we are in 100% agreement. I have been making this for years on this blog to no avail. It is the lack of distinction between prior art and statutory bars that is a problem among commentators. The lack of distinction also causes court confusion. The same lack of distinction probably led to a misunderstanding of what the drafters intended in the 52 act when it limited the scope of 103 to the “prior art” disclosed in 102. That phraseology was probably intended to limit the scope of 103 to only those portions of 102 that were considered to be prior art, namely, 102 (a). That limitation to 102(a) would also have given the language of the former 103 that referred to “at the time the invention was made” some comprehensibility. That phraseology is obviously referring to the state-of-the-art that was in the public domain, i.e., published, known or used, and thus knowable to the inventor at the time of the invention.

      I do not believe the drafters of the 52 act ever intended that nondisclosing, private use by anybody would be prior art to others. Particularly, I do not believe the drafters of the 52 act intended that prior invention be the kind of “art” that would be the basis for obviousness. Prior invention defense was always intended to assure that the same invention could not be patented by two parties, and that only the first inventor could obtain a valid patent to that invention.

      Then we have a matter of 102(e) which operated under the basis that the filing of an application was a constructive reduction to practice. In other words, 102(d) was intended to give prior invention effect to applications once they were published per Alexander Milburn Co. v. Davis-Bournonville Co., 270 US 390 (1926). Even though Supreme Court held to the contrary in Hazeltine, it seems very odd that an inventor’s patent should be deemed obvious over information of which the inventor could not possibly have been aware at the time of his invention.

      All of the above confusion is caused by lack of care in drafting statutes and lack of care in courts in distinguishing between true prior art and bars, or between prior art and prior invention. Each of these has distinct historical bases for their existence.

      1. It is NOT a problem among commentators per se Ned.

        It becomes a problem when commentators decide that the way that Congress handled the two is not to their liking and try to have the law say something that it does not (for policy or for whatever reasons).

        1. anon, I saw enough of the comments of the various Senators opining on this or that is that they seemed not to understand patent law, which is, after all, very complicated. What they were told about the current state of the law was at times grossly inaccurate, such that they seem h%ll-bent on fixing a problem that did not exist, but in the process, potentially creating many new problems.

          Prior to the AIA, I had a meeting with a higher up in the Democratic Senate leadership to discuss these issues. He too was convinced that patent law was way too complicated to take such gross “reforms.” At best, Congress was best adapted to handle only very narrow issues presented to them with full debate and with prior court rules that illucidate.

          Regardless, the AIA as a whole was and is a gigantic mistake. Already, most of those who supported it have second thoughts. The rest of us are simply saying, “We told you so.”

          1. Preaching to the choir on the AIA, Ned.

            That being said, Congress did do what Congress did, and rewriting that through the courts to achieve a certain Ends is just not the proper Means.

    3. ? Ron, whether you call it a “bar” or not, a third party public sale or public use of a product in the U.S. [now anywhere under the AIA] prior to a patent application by another can makes that product potential 103 prior art against that application [or resultant patent] for what it can disclose to the public.
      That is clearly distinguishable from a Metallizing Engineering doctrine secret commercial use, which is indeed clearly only a personal patent forfeiture, and not prior art [contrary to a gratuitous PTO commentary footnote]. See the case law in the article cited at comment 9 above.

      1. Also, AIA 103 starts with: “A patent for a claimed invention may not be obtained .. notwithstanding that the claimed invention is not identically disclosed or described as set forth in section 102.”

        1. Paul, thanks for pointing out the new language in 103. It reads,

          “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art…”

          “Disclosed”

          Clearly, this is ONLY consistent with an actual disclosure and not a bar.

          Correct?

        2. The new language is also consistent with an argument that the disclosure must be before the filing date of the applicant. This could rule out patent applications which were not published prior to filing date from being 103 prior art. Such an interpretation would bring the US into line with the ROW.

          1. . This could rule out patent applications which were not published prior to filing date from being 103 prior art.

            Except for the fact Ned that the definition of “disclosed” did not change with the AIA and includes the “deemed” disclosed, as would be appreciated to the legal persona involved here (not a real person, but our old friend PHOSITA).

            Nice try (again) to try to sneak in European law into the US.

            1. OK, anon, the court decisions of which I am aware never focused on “disclosed.” Just walked right past it, as if it meant nothing.

      2. Paul @7.3,
        See my reply to Ned dealing with ordinary skill, above on May 12, 2017 at 10:05 pm.
        “Prior art” must be available to the public. My point was that calling all bars in Section 102 “prior art,” as Dennis implied, is wrong. This confusion appears pervasive. Just because some ‘public use’ activities also involve disclosure that informs the public does not mean that the forfeiture bar does not control. In fact, it applies more broadly than the “prior art” bar alone because it invalidates even claims directed to that which was not disclosed. No 103 rejection can apply to subject matter that has not been disclosed to the public.

  4. DC: Although temporary, we have the potential here of creating a real bubble that will give us another 20+ year headache in similar fashion to the PTO’s low-quality examination of software and business methods in the late 1990s and early 2000s.

    The low quality examination of logic patents is ongoing. It’s not quite as bad as it was (which was as bad as humanly possible) but it’s still incredibly bad.

    I don’t see the AIA creating any kind of similar bubble because the AIA doesn’t provide a particular incentive to file classes of patents that have a high likelihood of being invalidated as a result of “erroneous interpretation” by the PTO. For example, the AIA doesn’t encourage inventors or the companies who employ inventors to disclose anything earlier than they otherwise would. On the contrary, the gist (heh) of the AIA is quite plain: file first, and file well. Only after filing should you freely engage in commercial transactions involving the “new” technology described in that filing. It’s all about managing risk, which is nothing new for patent attorneys. It’s just that the rules have been tightened.

    All that said, there’s some problems with Helsinn, I think (see the previous thread on that case). They’re fixable problems, I think, and I assume there will be at least a request for an en banc rehearing.

  5. Dennis –

    “The AIA was passed back in 2011 and the changes have gradually been implemented through the patent system. We are finally at the point where most newly issued U.S. patents are post-AIA patents whose patentability is individually based upon the first-to-invent provisions of re-drafted 35 U.S.C. § 102. ”

    Alas, AIA foisted first-to-file (as if there could be a second inventor) upon us. I think you meant that.

    1. It is first inventor to file. It is true that it is first to file, but that does not mean that there is not a second inventor within the meaning of the term as used by the statute.

      1. There is no such thing as a second inventor. While you can putter around in your basement this evening and make a light bulb, you cannot invent the light bulb, since it has already been invented.

        A second person to “invent” something should not be entitled to a patent, even if they were the first person to file. IMHO, it is unconstitutional. The constitution authorizes patents to inventors.

        1. Les, you are wrong in multiple aspects, each of which have already been presented to you.

          Maybe you should come to understand the legal terrain upon which you tread?

  6. Injecting 20 years of uncertainly into FTF was a feature – not a bug of the AIA. K street knew exactly what it was doing.

    As an aside, I attended an exploratory meeting of the former Obama WH IP Czar, he wants to run for governor of Virginia, and he recited the AIA as his major accomplishment in strengthening the US patent system for ‘entrepreneurs and inventors.’ Crickets while waiting for a reaction from the small group. Finnally, someone asked, “Are you that naive, or do you just think we are all that stupid ?” LOL. Don’t think he got a lot of checks from that group.

    1. Injecting 20 years of uncertainly into FTF was a feature – not a bug of the AIA. K street knew exactly what it was doing.

      Not only is this exactly correct, some of us (like me) said so directly in the AIA “vetting period” – BOTH here and in direct messages with my elected representatives.

      It is a bit disingenuous to try to paint this as some “surprise” unfolding now.

  7. At least the PTO “tries” to abide by the rule of law.

    I’ve heard horror stories of the executive in countries other than the US running amok, such as the patent office in Canada which has now taken the position (believe it or not) that the decisions of its examiners are not bound by the law as applied and interpreted by the courts. Sounds like something from a former communist or third world country doesn’t it? Oh Canada!

    [My first assumption is that Canadian applicants/ lawyers/ culture does not have enough money or kahunas to appeal or are too socialist to care about the clear abuse of power by an out of control executive… but upon reflection given the size of the market it might just not be worth it… anyone with a large number of filings in Canada with an opinion can chime in on this]

    THAT sort of chaos, flagrant rejection of law and role of the judiciary by a rogue branch of the executive has not wholly afflicted the PTO yet.

    So the PTO will be repeatedly found to be incorrect… Big deal. At least they tried, and they will govern themselves accordingly. This is a natural part of the process of legislative change. The only unnatural part is that the legislation itself admittedly has holes.

  8. wise enough to see the most important and far-reaching consequences of reversing the USPTO in the very esoteric and sophisticated law of validity under FtF?

    Can you unwind your question a little, MaxDrei?

    What do you feel is “the most important and far-reaching consequence“?

    Do you think that the USPTO should not be reversed in order to preserve some type of “agency deference?’

    Do you think that our executive branch should be in the business of “patching up” a rather p00r writing by the legislative branch?

    Is FtF really that “very esoteric and sophisticated” when it comes to the law of validity? After all, our Congress was sold the bill to move from First to Invent towards First to File (and are at the current ‘mid-point’ of First Inventor to File because that path was supposedly lessvery esoteric and sophisticated,” so your question seems based on an incorrect premise to begin with.

    What exactly is the “impossible task” that the Justices have, and how did you jump to the Supreme Court from your musings between the executive branch and the lower levels of the judicial branch?

    1. If one of the paramount purposes of the judiciary is a check on the executive, putting into place a anything which stifles that function of the judiciary arguably would allow the executive abuse its power and run amok. Surely, this is not what persons of any political stripe would want (given how far the pendulum can swing every 4 or 8 years).

      1. Separation of powers and the cross-check on those powers is NOT an indicator of the “paramount purposes” of the judiciary in relation to the executive.

        Yes, such checks are in place.
        Further, each and every branch (including the judiciary) is subject to checks from the other two branches.
        Further still, it is most definitely not the executive branch with which one must be concerned with abuse of power – especially in the realm of patent law.

        As for what politicians (of any stripe) would want, be careful to not ascribe more objective intelligence that what that species has been shown to actually have.

        1. “We don’t oversee the executive” — Tom MacArthur (Republican-NJ)

          But the important thing is that you cast a “protest vote” for Bernie Sanders, “anon.” Very meaningful! Very serious.

    2. I think it unwise to call upon unqualified people to decide issues that are beyond their level of competence. For example for a jury to decide on the facts underpinning an obviousness issue in abstruse high technology or biotech.

      Looking in from the FtF outside, as I do, one can see that the jump from FtI to FtF is hard, because one is deprived of the starting point, the very foundation, the point of origin, the act of conception. Under FtF, it falls away, out of the equation. Fish have no idea what it is like to live in an aqueous medium. Fowl have no idea what it is like to live in an aquatic medium. Amphibians understand both environments. In corporate patents depts, for example, there are some very canny amphibians.

      I have no idea how a bat or a bee navigates. For me it is impossible. Experience on this blog tells me that it is hard for a FtI aficionado to imagine how obviousness works in a FtF environment. I do not see any amphibians amongst the judiciary of the USA.

      1. I think it unwise to call upon unqualified people to decide issues that are beyond their level of competence.

        Quite frankly, there may be no one that would satisfy a “level of competence” requirement.

        Further, you completely missed the point of my post indicating that FtF was sold as a more simple (and NOT more complex) system.

        You want to draw analogies that while colorful, really are not on point.

        1. Level of competence? Try the expert members of the tribunals at the EPO.

          Simple? FtF? Well so it is. Just as water is simple for a fish which knows no other environment, or fresh air as an environment for you or me.

          Things get complicated though, when one jumps from one environment to the other and expects everything to be the same.

          1. Repeating your ploy does not make it any more effective.

            As to experts, you show your bias too quickly, as we are talking here about experts for US law (and most definitely, your choice of experts is a fail for this topic).

            1. Are there really no experts at all, anon, on the patent law of the USA, that the USPTO can draw upon. That does surprise me.

              I had in mind that if these experts themselves can’t lay down the law (like the EPO Enlarged Board of Appeal does in Europe) they could at least somehow help the judges at the CAFC to grasp the issues more surely. Amicus Brief? Tutorials? Briefings? That sort of thing.

              1. “Expert” had become (sadly) confused with propaganda spinners for one side or another.

                And leaning towards the unchecked and ethics-bereft Amicus Brief path does nothing but invite more of the same ills. Simply put, far too many have sought “the easy path” of trying to have the judicial branch write the statutory law that is patent law. “That sort of thing” is the problem – not the answer.

      2. I will admit that you lost me there Max. Why do you think obviousness is different in an FtF environment (other than any change there might be in what is considered prior art)?

        1. Why? Because under FtF the act of conception is irrelevant to the obviousness enquiry.

          Worse, it confuses the issue what is impermissible “hindsight” or “ex post facto” analysis of obviousness.

          Under FtI however, conception isn’t irrelevant to the issue of hindsight. Or is it? What do you think, Les?

          1. I have to comment that you managed only to spin nothingness in your “reply” to Les – avoiding any semblance of an actual answer.

            Maybe try again, MaxDrei….

          2. Max –

            The timing of conception was relevant to the FtI system because it was a factor in determining what was “prior art.” Beyond that, I suppose it has a role in arguing metaphysically about what is obvious, but it certainly didn’t come up much in dealings with the patent office.

            Those arguments were about whether A, B, C and D are shown is the spread of cited documents and whether the Office was able to explain why one of merely ordinary skill in the art would have thought to combine them.

            The nature of those arguments has not changed.

            I beg of you to explain what you meant a bit more clearly.

            1. Les, I’ll try. The EPO approach to obviousness involves use of the specification of the pat appln under examination to fix/pin what is the “most realistic prior art starting point” for analysing obviousness. To many in the USA, that strikes them as impermissible use of hindsight. Under FtF it isn’t.

              Why that? Under FtI, the moment of conception was anterior to the writing of the specification.

              But not under FtF. There, the specification was already written, long before the date relative to which obviousness is explored.

              Those who prosecute routinely in both the USA and RoW will understand what I am driving at.

              1. There, the specification was already written, long before the date relative to which obviousness is explored.

                Please make this simple for us non-elite, nonEPOeans.

                Use a set of real dates to explain this ‘great distance in time’ between the specification writing date and the date of obviousness exploration.

                From here, it sounds like you are merely flinging
                C
                R
                P
                at the wall and maybe (only just maybe) taking a peak at what sticks.

                1. Whether the gap in time is one day, week, month or year makes no difference, anon. The point is not that there is a material change in the state of the art between conception and filing at the PTO. So, let us suppose that the inventor A conceives on Monday, the case is written on Tuesday by attorney B supervised by A, and filed at the PTO on Wednesday, 48 hours after it was conceived. There is still a gulf of difference, conceptually, between FtI and FtF.

                  Patentability is to be judged, objectively, through the prism of the PHOSITA, who knows all the art but is not inventive. A and B know this on Tuesday while they are writing. They together set the technical field in which they choose to be judged. They explain what the technical problem was in that field and how A solved it. Because there is no “secret prior art” for obviousness, and because they are free to do comprehensive literature searches before they file, it is fair that they can be judged on patentability, objectively, relative to everything already made available to the public by written or oral disclosure, by use or in any other way.

                  They are given full faith and credit for everything they write about the invention. But on the other side of the coin, everything they write can be used by the Examiner as a basis for formulating obviousness attacks. Suppose the invention lies in an improvement to medical (wound)staplers. When drafting, do you confine your invention to medical staplers or write a specification and claim that covers office staplers too? Think carefully because it might be decisive, whether you get a patent for your medical stapler or not.

                  Those who wrote the 1952 Statute found it necessary to put something in it about patentability not being negatived by the manner of conception. You need such a proviso in the FtI world but it is alien to the FtF world. Therein lies the difference.

                2. Max, I would like a jury of 3-5 real people of ordinary skill in the art. Give them the problem and access to the internet that includes Google translate or the equivalent. Assure they can only look at the prior art.

                  See what they come up with.

                  If it is the patented solution, then the patent is obvious. If none of them come up with solution, it is not obvious.

                  Why this method. We really want to eliminate hindsight.

                3. Ned, your jury of 3-5 is hard to assemble. Each one needs to have the cgk (common general knowledge) of the person of ordinary skill in the relevant art. Without that, they cannot grasp the prior art teachings fully. It takes a career in that special technical field before you have the mental furniture of the notional PHOSITA. Finding such a jury, to serve in the case, is more or less impossible

                  How about the way the EPO does it though, namely a jury of 3-5 from the particular technical field but hobbled. Hobbled? Before the panel can declare anything obvious it needs to find in the state of the art a teaching, hint or suggestion. A hint to modify the prior art starting point document, into the claimed feature combination, by a PHOSITA who is notionally engaged on a focussed search to solve the objective technical problem (OTP), the problem that is, that the inventor has already solved (and enabled in the application as filed) by the claimed combination of technical features.

                  BTW, the panel has no freedom to formulate the OTP to its liking. The OTP emerges arithmetically and unambiguously when one “subtracts” what the closest prior teaches from the teachings in the appln as filed.

                  Some say that EPO-PSA is over-prescriptive. But that is its strength. It cuts out not only hindsight but also subjectivity. And brings more predictability, what will be the outcome of the obviousness debate.

                  Try EPO-PSA Ned. It is impartial, fair to both Inventor and Petitioner for Revocation of the Patent.

                  You never know; once you get familiar with it you might grow to like it.

                4. MaxDrei,

                  If you are going to retreat to your “Patentability is to be judged, objectively, through the prism of the PHOSITA, who knows all the art but is not inventive.” you need to plug the gaping holes that you left on a previous thread in regards to objectivity, libraries, timing, and the legal persona as opposed to treatments of real inventors to real inventors.

                  All that you are attempting here is a shell game of non-answers. Your “objectivity” is a floating and changing concept – as YOUR explanations go.

                5. everything they write can be used by the Examiner as a basis for formulating obviousness attacks.

                  That is NOT an “objective” element.

                  Instead, that very much is a personal element. The inventor is NOT PHOSITA.

              2. Well Max, except for the jurors, the EPO legal requirements seem very close to Hotchkiss that held the way it did because the use of clay for doorknobs was old and there was nothing new in functioning of the mechanics of the knob itself.

                Hotchkiss is what Graham held Congress was enacting. It actually requires the person of ordinary skill in the art know that the one thing could be substituted for the other, or combined.

                As to jurors for my panel — we can look to the various patent offices in the world for examiners with “expertise” in the field.

      3. I think it unwise to call upon unqualified people to decide issues that are beyond their level of competence. For example for a jury to decide on the facts underpinning an obviousness issue in abstruse high technology or biotech.

        The same reasoning would seem to apply to the court itself.

        1. In the immortal words of Francis Urquhart (the original London-based Frank Underwood character), Ned:

          You might well say that, Ned. I couldn’t possibly comment

  9. Dennis writes:

    “Because the PTO interpretation is given no deference and because of the many drafting holes in the AIA, I expect that the PTO interpretation will be repeatedly found incorrect.”

    Found incorrect by? Why, the CAFC. And is the Federal Circuit wise enough to see the most important and far-reaching consequences of reversing the USPTO in the very esoteric and sophisticated law of validity under FtF? I doubt it.

    Who can help the Justices in their almost impossible task?

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