Where are we with Secret Commercialization?

The Federal Circuit’s recent decision in Helsinn Healthcare S.A. v.  Teva Pharmaceuticals (Fed. Cir. May 1, 2017) held the public sale of an invention qualifies as prior art even if the details of the invention are not publicly disclosed.  The PTO has been operating for the past several years that such sales do not qualify as prior art. From the MPEP:

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.

MPEP 2152.02(d).  This statement is obviously wrong under Helsinn, and I expect that the Supreme Court would side with the Federal Circuit on this point (but probably won’t take the case).

The court expressly refused to determine whether a non-public sale (or offer-to-sell) also qualifies as prior art under the AIA or must at least the fact-of-the-sale be made public.  The court also refused to make any holding regarding whether secret commercialization (other than sales) by the patentee qualifies as prior art under the AIA.  The AIA does not support expressly support such a notion – of course neither did the statute pre-AIA.  The court also does not discuss the continued relevance of experimental use, but does fall-back on the Pfaff ready-for-patenting on-sale analysis.

Obviousness: These issues involve an interesting and largely unresolved mix between statutory prior art and “non-statutory  bars to patentability.”  The outcome of this mix becomes quite relevant and important once we begin focusing on obviousness.  The Post-AIA obviousness statute redoubles its focus on the prior art – as such any non-statutory-bars eventually developed by the courts should probably  not qualify as prior art for obviousness purposes.

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.

109 thoughts on “Where are we with Secret Commercialization?

  1. Dennis, I must say I’m disappointed. I write to Distant Perspective, at length, in reply to his 73221, and am told that my posting awaits moderation.

  2. It is time for the USPTO to build a database of all the sales worldwide, including a description of the things on sale. With it, the USPTO will perform a complete examination of applications per the AIA 102 and issue valid patents.
    🙂

    1. If the “patents are not property” trend continues, your database would need a different and more PC spin.

      But in the best Orwellian modes, the perception of Big Brother cataloguing every personal detail can be wordsmithed into a “pro-individual” spin.

      Of course, the next small slide down that slope would be the use of such a database to enforce the non-personal property that is a patent.

      Maybe Mr. Snowden can tell us how wonderful and pure such a system would be…

  3. On allowing obviousness attacks based on secret prior art Greg deLassus agrees with me that European patent law on obviousness is easier to explain to non patent people than US obviousness law. But he thinks its de-merit is that it allows pharma to extend patent protection in Europe longer than one can in the USA. He writes:

    “If it is a choice between having a generic drug sooner, and having an explanation that they can understand about why said drug is still on-patent and not invalid for obviousness, I expect most laymen prefer the cheaper drug.”

    I think he is wrong, that the EPC allows more evergreening than the AIA. For a start, under the EPC your own earlier filings are just as prejudicial to your patentability than anybody else’s earlier filings.

    Who else favours secret prior art (the content of patent applications filed yesterday in Beijing, for example) as a legitimate basis for obviousness attacks in DC or Munich?

    1. Greg deLassus… thinks its de-merit is that it allows pharma to extend patent protection in Europe longer than one can in the USA.

      Er, please do not put words in my mouth. I was not suggesting what I think. I was talking about what a putative “average” lay person thinks.

      I quite definitely was not expressing an opinion about so-called “evergreening.” I just grabbed at generic drugs as the first example off the top of my head. The analogy works just as well with consumer electronics, or polymer building materials, or what not.

      1. Greg, I’m puzzled now. Your words include “having a generic drug sooner” in the USA, did they not. What did you mean by that? If it isn’t a reference to an advantage of secret prior art for obviousness attacks (available in the USA but not in Europe) perceived by you (as opposed to some nondescript non patent person) what was it then?

    2. [I]t behoves us all, especially the law makers, to write patent laws whose sense and logic can be grasped by… members of the public.

      Sure. All other things being equal, an easy-to-explain system is better than a harder-to-explain system. That said, all other things are usually not equal. The U.S. grace period used to be two years, now it is one year. Why the change? Because we decided that we wanted to make the public domain slightly larger (necessarily at the expense of some inventors). That is a choice that we make sometimes, even when it is not intuitively explicable to the public.

      Besides, the EP PHOSITA might make more sense to a lay person than does the US PHOSITA, but even the EP PHOSITA will not make a lot of sense to the lay person. The EP PHOSITA reads every document, in every language, on the day after it publishes. No real person working in any field is that up-to-date on the literature, and yet we call this paragon of assimilating technical knowledge the “ordinary” worker in the art. This is crazy. You can explain that rule to the lay person, but I doubt that more than 1 in 100 will find it intuitively convincing. One should not get too invested in making patent law intuitively plausible to the totally non-initiated. It is a hopeless task.

      1. Greg, I have in the past provided a quote from Einstein to MaxDrei when Max attempts his overly simple approach to patent law.

        Everything should be made as simple as possible, but no simpler.

        It is with no small irony that MaxDrei recently took issue with my use of the word “simply.” Ironic, because my use was on point, and here he aims for a “simple” that does not fit.

        1. I’m glad you brought up that quote anon (again). I do so wholeheartedly agree with it. Where we differ is in your dismissal of the EPC as “overly” simple. It isn’t.

          1. It IS overly simple if you try to blindly make it fit US jurisprudence.

            This goes hand in hand MaxDrei with my other typical admonition for you: to respect the different choices made by the different sovereigns.

            You seem to have an enduring difficulty doing that.

            1. And your enduring difficulty, anon, is to grasp that all I’m trying to do here is tease out what are the consequences of these sovereign different choices.

              I think I see some of the pro’s and con’s of, for example, a grace period. Now I’m curious about the pro’s and con’s of allowing obviousness attacks using secret prior art. Greg has had a go at helping me. How about you?

              1. LOL – playing the “tease out” throw the
                C
                R
                P
                at the wall and see what sticks gambit…?

                Maybe you yourself should try that “mind willing to understand” thingie…

                As for “have a go at helping [you],” have you even tried counting the number of horse carcasses at the well?

                Reply Report

          2. I just noticed another glitch in your comment, MaxDrei:

            Where we differ is in your dismissal of the EPC as “overly” simple.

            Your attempted spin is simply untrue, as none of what I have ever posted could remotely be confused with me dismissing the EPC as overly simple.

            I have always been on record as saying what your sovereign decides for you is ok for you. Your error belies your own lack of respect for different sovereigns choosing differently.

            Please respect my actual positions

      2. Wrong. In my experience that is. The inventor agrees with me that i) every real person has a different library of documents but ii) obviousness should be assessed objectively so iii) we need a person of ordinary skill in the art (not a creative genius) who is deemed to have a complete library.

        That, after all, is how we do novelty.

        As for obviousness, we work through the EPO’s TSM Approach. That too is easily grasped by any person skilled in the art, of ordinary intelligence, with a mind willing to understand, and receiving the explanation from a patent attorney who has respect for the logic of the law.

        In case anybody reading is wondering why earlier unpublished Patent Office filings are part of the prior art for novelty but not for obviousness, it is to confine later filers to that which is still novel over everything already brought to the Patent Office by all those earlier filers. Inventors get that logic too, in my experience.

        1. Your “full library” comment contradicts your “confine later filers” comment.

          You cannot have it both ways: a full library for both, but not a full library for both.

          1. Cannot? But for the last 40 years in Europe, no national Supreme Court has had any difficulty coping with Article 54(3) of the European Patent Convention. It’s really very simple, once you set your mind to it. Open your mind anon.

            Do me a favour, will you. You have a printed reference, which published ten years ago. It is cited under 102 and 103. For 102 do you construe it as of its date of publication. Or as of the date of the claim?

            Simple question. Should be a simple answer. It goes to the difference, conceptually, between novelty and non-obviousness.

            1. You quite miss the simple point I presented.

              Before I dive into your rebuttal, please have the courtesy of dealing with mine.

              Thanks.

              (The tripping of the filter for conversations is a bit absurd…)

              1. Lost me there, anon. As far as I can see, my answer is exactly on your “can’t have it both ways” point. Would you like to try again, perhaps?

                1. Would YOU like to try again and resolve the actual dichotomy presented?

                  You switched to some other item and then bleated out “it’s so simple,” without actually explaining anything.

                  So once again, how does one have it both ways: a full library for both, but not a full library for both?

                2. Would YOU like to try again and resolve the actual dichotomy presented?

                  You switched to some other item and then bleated out “it’s so simple,” without actually explaining anything.

                  So once again, how does one have it both ways: a full library for both, but not a full library for both?

        2. MaxDrei,

          I just noticed another glitch in your comment above:

          t is to confine later filers to that which is still novel over everything already brought to the the Patent Office by all those earlier filers.

          This sounds NOT in a legal fiction of a PHOSITA, but rather in a “real person” inventor to other inventor rationale.

          Are you sure that you are representing the obviousness/PHOSITA relation properly?

    3. My two cents. Some law firm compiled the legislative history of “patent reform” and the AIA act, up to the passage of that act. A massive document! I think the law firm were compiling for private distribution, judging from front matter read after download. Nevertheless this compilation showed up in search engine results, and I did dip into parts of it.

      I would suggest that the process of getting this sort of legislation through Congress might be considered, in Dr. Johnson’s words as “being like a dog’s walking on his hind legs. It is not done well, but you are surprised to find it done at all”. There was bipartisan support, but the Republicans seemed more consistent in their votes than the Democrats on the House Judiciary Committee, and there certainly were dissenters amongst the Democrats on the House Judiciary Committee, some of whom had obviously been lobbied successfully by those representing small inventor organizations.

      To give some idea of the processes, there was a representative from Indiana, called Mike Pence. I wonder whether you have ever heard of him? He clearly felt that the “best mode” requirement had long passed its sell-by date and pressed for its elimination. Whilst he might not have achieved full elimination, my memory (I am writing this from memory) is that, at the report stage, he successfully proposed The Pence Amendment. From memory, it may have ensured that patents don’t get invalidated on grounds of failure to describe the best mode of practicing the invention. Another representative, Darrell Issa, who in his earlier career had been granted (I think) four patents was concerned about the publication of patent applications from those who were unsuccessful, and secured an amendment ensuring that if they withdrew their application sufficiently early, possibly after a couple of rounds of prosecution, then their applications would not be published. (I am going from memory, but I think the above reflects the general drift.)

      I cannot recall seeing any theoretical discussions concerning the differences between “first to invent” and “first to file”, and how FtF would decouple novelty and obviousness. (That does not mean that there was no discussion – simply that I don’t recall seeing it.) And I got the impression that what they came up with was intended as some sort of hybrid of the two schemes.

      In relation to nonobviousness under 103, it does seem that they at least removed some impenetrable goop implementing some exceptional provisions for inventions in biotechnology, apparently returning to the relative simplicity of Giles S. Rich’s wording. That presumably is an improvement from a theoretical perspective.

      Presumably it will be for the CAFC and maybe SCOTUS also to ponder the implications.

      I don’t want to spend the time substantiating the above. Take it or leave it at face value as impressionistic recollection that may or may not accord with the detailed transcript.

      1. Your comments are showing one thing for certain: your lack of understanding of some of the basics of modern (including pre-AIA) US patent law.

        I am well aware that you are not an attorney, but even non-attorneys who want to post (let alone post at such terrific lengths), understand such things as non-publication requests.

      2. Third cent.

        I checked out EPC 54(3).

        For far as I can decode US 102 with all its exceptions and modifications and whatnot, 102(a)(2) seems to resolve to a requirement that earlier filed applications have either to issue as patents or else be published or “deemed published” as patent applications (but withheld for secrecy reasons) if they are to serve as prior art. But there is such a tangled web of exceptions, and maybe exceptions to exceptions, and cross references to other sections of the act, that resolving the logic is not straightforward.

        1. Can I have a go at this, now other regulars have had their chance?

          Application A is filed before application B in the same (e.g. European, or FtF system). A is still in prosecution when B is filed, and we consider the case were B to issue whilst A is still in prosecution and unpublished.

          Claim A describes embodiment x which A either claimed or can be presumed to have intended to dedicate to the public when A filed. This embodiment x reads on B’s claims.

          Suppose that B claims x and is awarded a patent on x.

          At some later time, prosecution of both patents is completed.

          In the case when A claimed x then either A is awarded a patent on x, in which case A and B both appear to have a valid patent on the same embodiment x, which contradicts the definition of a patent monopoly.

          Otherwise if A claimed x but is denied a patent on x then the patent has not been granted to the first to file.

          If A does not claim x, and if x was patentable at the time that A filed, then A can be presumed to have intended to dedicate x to the public, in which case it ought, from the perspective of the later time, when prosecution of both patents is complete, to be regarded as prior art invalidating B’s patent.

          Thus for novelty. Next for nonobviousness. If nothing described in A is prior art for B for novelty purposes, then that implies that nothing claimed by B reads directly on any embodiment in A. In particular there is no embodiment claimed or claimable by both A and B at the time that B’s later application is filed. Therefore, when prosecution is complete, and assuming patents issue for both A and B, the claim scopes will be disjoint, and therefore each should have a true monopoly, at least as far as can be determined on the comparison of these two patents. Nothing in A’s application was part of the record in assessing obviousness when B filed. And of course nothing in B’s application was part of the record in assessing nonobviousness when A filed. Therefore the teachings of A’s patent application should be disregarded when determining nonobviousness in the prosecution of B.

          1. DP, I welcome your curiosity and will try to whet it further.

            Bear in mind that in Europe all applications are published 18 months after the earliest of their declared priority dates. The EPO will not issue a patent until at least 18 months after its priority date. Why? So that it can check patentability against everything with an earlier priority date. By that I mean all those Patent Office A publications that have published during the 18 months that your application has been pending at the EPO. If any of them contains disclosure that is prejudicial to your novelty, it’s back to you to amend your claims down to that which is novel over those belatedly-emerging disclosures

            Now, does that change your hypothetical at all? I imagine it might.

            1. it’s back to you to amend your claims down to that which is novel over those belatedly-emerging disclosures

              As this is a discussion STARTED centered around the legal fiction of a PHOSITA, I have to say that the topic has meandered into more of a real person inventor changing what they are claiming is their invention (from some claim in total) in light of what other real person inventors have done (a change to less is still a change, mind you).

              A couple of wrinkles here could use a little clarity.

              In the conversation between MaxDrei and Ned, a point on “severity” of “no new matter” is stressed as a type of safeguard, and that an inventor’s avowed initial declaration of what was invented is key.

              Now “we” are allowing a change to that initial declaration to carve out less than what the inventor thought was there invention?

              Not so “key” as was suggested, eh?

              Aside from the US practice of varied claim scope (which may have been something that MaxDrei left out), this “restating” what the applicant feels is the sum total of his invention seems more than a bit a step away from the “objective library” rationale.

              Further, this is done (clearly) on a real person to real person basis, and is also done (apparently) ONLY on a “library” (or what is left of one) for which now appears to differ from the “library” for the “objective” target of obviousness.

              Now I realize that MaxDrei punted on any actual explanation (deeming such somehow “not necessary”), but the whole bit of “belatedly emerging” is rather a step away from the “objective” applications of that legal construct, is it not? Even if one is only focusing on novelty, at that.

              Now I also recognize that MaxDrei may very well insert the new thought that “it is only fair” to allow the applicant to change what he considers his invention (as filed) to be some different and lesser portion, but such “fairness” must be recognized as a purposeful change in how the overall concept of PHOSITA is being applied.

              A “pure” (or purely objective) application would deem it immaterial to allow that paragon of “no new matter” to change to allow the applicant to claim less just because some “real person” may not have been able to see the “belatedly-emerging disclosures.”

              PHOSITA is not such a real person and PHOSITA – if you wanted to be totally “objective” would know and understand those disclosures whether or not any real person could see them. This is because PHOSITA is concerned with the state of the art, and that state does not depend on the timing of the disclosures, now does it (for the legal construct).

              As far as “So that it can check patentability against everything with an earlier priority date.” the Office HAS all of those items already prior to the later inventor’s filing date (and does not need to wait for publication to see what has already been filed).

              Now in the US, the Office does** include all prior filed art – regardless of whether that art has been published (but will be published).

              Examiners have mechanisms for a “potential” rejection based on “not-yet-published” art, but the key is that all such art is still very much “in the library” for that legal person known as PHOSITA.

              So….

              On top of the (unexplained, but ‘trust me’ it is simple) difference in library but no difference in library for novelty and for obviousness, we also have real-person/real-change-but-still-objective-and-still-the-no-change-no-new-matter safeguards….

              While I have no doubt that the system is what it is, and that the system works how it works, let’s be very clear that the explanations (so far) are “a bit of an understatement, govner” in matching up to the reality.

              ** I do put a caveat on this as in a prior discussion I was informed that sua sponte, the Office has stopped updating their “prior art but not yet published prior art” internal mechanism. As I do not have the ability to verify whether this is true or not, and even if true, would be a administrative choice apart from the proven capability to use the “objective” PHOSITA in the “more objective” mode, and thus would not lessen the legal point presented.

              1. When I file at the PTO I know that my secret is safe with the PTO until the PTO publishes, 18 months after my filing date (or even later). If I want to pull the application during that 18 month period, and keep the content a trade secret after all, I can do that. I think I’m entitled to change my mind, in that way. So does everybody else in the world.

                Do you not agree, anon?

                1. When you say “PTO,” you are referring to the patent office of your sovereign, correct?

                  Because you do know (or should know, having been informed) that the US sovereign has chosen differently.

                  In fact, for the US sovereign, the ability to file with a non-publication request is an often underutilized value for clients.

                  Further, while you state “ 18 months after my filing date (or even later)” the actual timing is OFTEN less than 18 months – especially for the set of applications that are either continuations or that claim priority effect to an earlier application, as the 18 month counter is not aimed at any old “mere filing,” but instead is aimed at the earliest filing.

                  Also what should be made clear here is the actual time that ANY Office is taking to even getting to a full and substantive examination on the merits. I will grant that the EPO does seem to have a better “first taste” – and better in both timing and substance – than does the US, but that 18 month (at most) timing OFTEN comes before the applicant has received the valuable indication that you mention.

                  But notwithstanding ANY of those points, the ability to change one’s mind is simply a non sequitur here and has ZERO effect on the “objective” setting of legal fiction of the PHOSITA, the “library” that belongs to the same legal fiction, and the use of that “library” to either novelty or obviousness, and the apparent jump from said “legal fiction” to a more real person to person evaluation.

                  Asking then a “simple” question as to whether I agree with a mere lead in and evidently incomplete question appears to serve as obfuscating, rather than clarifying.

                  Do you not agree, MaxDrei?

                2. Let’s try again, and apologies for any later double post upon “moderation” clearing….

                  When you say “PTO,” you are referring to the patent office of your sovereign, correct?

                  Because you do know (or should know, having been informed) that the US sovereign has chosen differently.

                  In fact, for the US sovereign, the ability to file with a non-publication request is an often underutilized value for clients.

                  Further, while you state “ 18 months after my filing date (or even later)” the actual timing is OFTEN less than 18 months – especially for the set of applications that are either continuations or that claim priority effect to an earlier application, as the 18 month counter is not aimed at any old “mere filing,” but instead is aimed at the earliest filing.

                  Also what should be made clear here is the actual time that ANY Office is taking to even getting to a full and substantive examination on the merits. I will grant that the EPO does seem to have a better “first taste” – and better in both timing and substance – than does the US, but that 18 month (at most) timing OFTEN comes before the applicant has received the valuable indication that you mention.

                  But notwithstanding ANY of those points, the ability to change one’s mind is simply a non sequitur here and has ZERO effect on the “objective” setting of legal fiction of the PHOSITA, the “library” that belongs to the same legal fiction, and the use of that “library” to either novelty or obviousness, and the apparent jump from said “legal fiction” to a more real person to person evaluation.

                  Asking then a “simple” question as to whether I agree with a mere lead in and evidently incomplete question appears to serve as obfuscating, rather than clarifying.

                  Do you not agree, MaxDrei?

                3. I’m replying to your reply, anon.

                  Until the PTO publishes, there is a secret. It is in a sealed envelope at the PTO. It is artificial, illogical and unnecessary to construct obviousness objections that are backdated to my filing date after my sealed envelope is opened by the PTO and published.

                  Novelty is different. The contents of the sealed envelope, after its opening, serve to determine (only as between the Applicants in the queue at the PTO) which of them gets a patent.

                4. Well MaxDrei, I have to wonder if you are being obtuse again and using the word “reply” when what I am looking for is for you to “answer.”

                  So no, MaxDrei, you have not provided answers in your replies.

                  You are missing the fact that the maintenance of the secret is not something that is shielded from an objective application of the library concept.

                  As I stated (with the caveat concerning any actual US Office choice to do otherwise), the Office fully has the capability of FULLY applying that “objective” legal fiction known as the PHOSITA prior to any publication of pre-invented work in your own designated “pending timeframe” and to do so equally between the legal notions of novelty and obviousness.

                  You have answered NONE of the points that I have put to you, merely repeating “what is” and meekly saying “well our courts get it, so it must be simple” without YOU actually explaining anything. Your replies are non-responsive.

                  I fully “get” that the intervening period may play a role in maintaining something as secret and something that fits objectively into the library. Quite in fact, I improve your statement in both time-directions.

                  That is not at issue between us – at all.

                  But as my post spells out, you have not answered quite a number of other points that ARE at issue.

                  I would hope that your reply – no matter how ‘polite’ you may choose to be – would do a better job of aiming for answers.

          2. You are assuming your own conclusions DP.

            As well, you have inserted a real person in the stead of the legal construct.

            Finally, in your rush to assume your own conclusions, you have changed your details midstream, and you have forgotten about the timing aspects in your attempt to treat A and B as on equal footing.

            Your “go at this” went, but alas, went p00rly.

          3. If A does not claim x, and if x was patentable at the time that A filed, then A can be presumed to have intended to dedicate x to the public, in which case it ought, from the perspective of the later time, when prosecution of both patents is complete, to be regarded as prior art invalidating B’s patent.

            Notice that if B’s patent is invalidated over X that was filed by A before B, but which is otherwise not prior art as not being publicly disclosed prior to B’s application, then the only reason that B should be denied a patent on X is because it is presumed that A invented first. This is the reason B cannot get a patent America in the former first-to-invent system.

            In a first to file world, I think the patent should go to the first to actually claim the invention. In the scenario, B gets the patent on X because he claimed it before A did.

            1. Ned, what do you know of the FtF world? Enough to advocate a “prior claiming” approach to obviousness? This is what the UK had till 1978. It doesn’t work.

              Are you going to get into an enquiry into the validity of the prior claim? Or are you going to allow invalid prior claims to destroy the novelty of later enabled filings? Both are problematic.

              Better to opt for the EPC’s “whole contents” approach to adju7dicate between rival filers all of whom are safe from obviousness attacks.

              1. But Max, in the example where two applicants disclose the same invention X, the second-to-file claiming it and the first-to-file not, why not simply allow the second-to-file the patent? The first-to-file did not even consider X to be an invention or perhaps not his invention.

                The consequence of this approach would be that filers would be sure to claim every invention disclosed at the peril of not only not being able to claim it later, but also at the peril of not being able to prevent others from claiming it later to the extent that the on claimed invention is actually novel.

                Was it a desire of applicants to be able to use the U. S. approach of claiming inventions disclosed in the application as filed but not appreciated as being inventions until much later? From my understanding, there is today in Europe much angst about the abuse of divisionals. I think this is because Europe is gradually adopting the U. S. practice.

                1. Deep into the weeds and away from both novel and obvious and the legal persona of a PHOSITA….

                2. Ned you ask: Why? I will attempt to answer.

                  Where did the USA get the notion of a “provisional”? From the UK, right? The UK has had provisionals since at least 1949.

                  Is there any requirement for claims in the patent application you file to establish a priority date under the Paris Convention? So are you suggesting that only those who include claims in their provisional have any possibility to benefit from Paris Convention priority?

                  Another thing. Under the EPC, switching during prosecution to a definition of an invention not stated in the application as filed is adjudged “new matter”. To avoid that, you need for your claim introduced during prosecution, in your provisional, a precursor “statement of invention” at the same level of generality as in the claim you introduce. The EPC “whole contents” approach plus a strict prohibition on adding matter during prosecution comes to much the same outcome as the “prior claiming” regime you crave.

                  But without the defects of a “prior claiming” regime that practice in the UK between 1949 and 1978 starkly revealed.

                  Don’t know what angst you are alluding to. Of course pharma wants “something pending” at the PTO till the end of the 20 year term, in Europe just as much as in the USA. The EPO had a cap on the period allowed for filing divisionals. But only for the short time it took to show up the cap as unjust and unworkable. Today it puts its trust in a strict prohibition on adding matter during prosecution.

                  Do9es any of that allay your misgivings?

                3. The whole “claimed” versus what is in the prior application” appears to be yet another meandering away from the legal objective application of PHOSITA.

                  (also, the whole “what’s pending” and the divisionals are just another dive into the weeds)

                4. I would not say “prove your case” as much as I would say, defeats the attempted thrust.

                  The larger case (to be proven) still remains.

        2. DP what 54(3) enacts is this:

          Between rival filers, A,B, C and so on, all of whom filed before any of them sold anything, offered anything for sale, made anything available to the public, the patent goes to the one (A) who was first to file.

          But what does the second to file, B, get? Answer: to the extent that she is novel over A she can get to issue with any claim that expresses that novelty. Third to file, C, needs a claim that is novel over both B and C.

          But its novelty, not obviousness. So you cannot mosaic A and B to bring down C.

          And only that which is enabled can be a good novelty attack. Thus, if A’s filing is not enabled, not only is it unable to deliver enforceable claims but also it fails to stop B or C proceeding to issue.

          Many Americans thought FtF would encourage premature insufficient specifications in rushed filings. Based on 40+ years in FtF, I can tell you it does not. For the reason I explain above.

          1. Attempting to reply to MaxDrei at 7.3.2.1.1 and 7.3.2.2.

            I have been wondering whether the European and the US approaches to “obviousness” might be so different in their approach that conclusions drawn from one might not be applicable to another? This is suggested by the reference to “mosaic A and B” in 7.3.2.2.

            For novelty I would use formally think in terms of elementary set theory which could be illustrated with the usual land-colonization metaphor.

            For obviousness under the US approach, as I understand it, I would use a library metaphor. I see that libraries have been mentioned in the discussion, but I don’t know whether the underlying metaphor corresponds to what I have in mind.

            A patent system is a system for granting legal monopolies (limited in time and space). For this purpose it needs a way of prioritizing patent applications. If the prioritization method is arbitrary and capricious, then the system is likely to be resented and fall into disrepute. The two most logical candidates for priority rules are FtI and FtF. But what one needs is a total ordering on patent applications so that, given any pair of applications, one has priority over the other. Whatever the priority ordering, it is natural to speak of those with higher priority as being earlier applications, and those with lower priority as later applications. In this way, one can discuss general principles applicable to both FtI and FtF, or any other system that generates a priority ordering of patent applications.

            It would seem to defeat the object of the exercise unless one adopted that principle that embodiments disclosed in the earlier application, if they were to infringe a claim of the later application, would render that later claim invalid. This should surely apply whether or not the earlier patent application has resulted in the issuance of a patent, or has been published, before the later application is ready for issuance.

            Given the complexity of the AIA legislation, I leave it to others to determine whether this principle is respected.

            ==

            From MaxDrei at 7.3.2.2, I was led to wonder if the European approach to obviousness works on the principle of comparing the claims with the nearest embodiments in the prior art, to ensure that an appropriate distance is maintained. If so, such a method of evaluating “obviousness” would differ in principle from the US approach as I understand it.

            ===

            We have the PHOSITA. She is an abstraction. She has access to an Art Library, another abstraction, which in principle contains all the relevant teaching provided by the prior art relevant for determining obviousness to the PHOSITA at the appropriate time. The PHOSITA in particular has the basic knowledge of the art, and is capable of basic straightforward reasoning. She knows her way around the Art Library in general terms, but of course does not have encyclopaedic knowledge of the contents of the library. The PHOSITA has some problem to solve. The Art Library, in addition to content representing the teaching of the prior art in the relevant fields, also contains some basic reference material, particularly suggestions along the lines of “if are trying to solve such-and-such a problem, you might do well to examine the material (e.g., issued patents and published applications) in Block 7, Floor 3, Case E, shelf 4.” It seems to me that the question, for obvious purposes is, is there a plausible and natural trajectory by which the PHOSITA could locate the necessary teachings and emerge from the library with a solution to her problem in a reasonable time?

            Suppose that the PHOSITA is a lawyer, and the library is a law library. She is looking for case citations for a patent case. She might go and hunt out Chisum on Patents. find sections relevant to her investigations, note the cases, and the law reports where they are to be found, then go across to another part of the library to track down the law reports themselves, thus completing her task in a reasonable time. On the other hand she would not be expected to do so if the task would only be plausibly completed by going to a room with a rarely-used book, opening it at a page she would have no particular reason to consult, noticing that a footnote on that page contains a reference to an old treatise in the library that everyone has forgotten about, and then getting hold of that old treatise, to find a reference to an obscure case that will complete her search.

            If someone tasked with evaluating obviousness can articulate a search strategy, even if there is no reason to suppose that one PHOSITA would follow that particular strategy, nevertheless if an army of PHOSITAs is sent into the library with the same problem, arguably some will emerge in reasonable time with the solution.

            Where the claimed invention is obvious over a collection of prior art references, it is the teaching of those references that counts. I have noticed that if an attorney arrives at a CAFC panel making an argument that the claimed machine cannot be obvious over the combination of machines A and B because the relevant bit of machine A is (say) too big to fit in where it should go in machine B, the argument seems to be usually dead on arrival.

            1. DP, I’m impressed. As you say, we need a law of novelty to decide who was “first” to plant the flag on a particular plot of virgin ground. The claim defines the metes and bounds of the protected area round the flag. How do we decide if the claimed subject matter is “novel”? By simply checking that the claim does not overlie any ground that is not “virgin”.

              Do you know the axiom that “that which comes after, and infringes, if coming instead before will destroy novelty”? Novelty and infringement are both to do with a pinpoint and whether it lies inside the claimed envelope.

              Now to obviousness. Patents are supposed to promote progress down the road of technical development. The Latin ob Via means lying in the road. If you allow patents on obvious stuff, you allow the erection of roadblocks which block rather than promote progress.

              Everywhere in the world there is one statutory test “Does tghe claim cover anything which, at the date of the claim, was obvious to the PHOSITA?”. Different jurisdictions use different methodology to explore that statutory question. At the EPO, they use a methodology which they invented to solve the problem that all EPO Examiners, coming from any one of the 38 EPO Member States, must come up with the same answer when examining obviousness, and the approach they use must be objective rather than subjective.

              The EPO Problem and Solution Approach is therefore intensely prescriptive (so it is predictable and consistent). It mimics real life research activity, in which researchers identify a problem to solve and then do a literature search informed by that problem. The purpose of such a search, whether in a research lab or at the EPO, is to find any hint or suggestion how to solve the problem. In the USA, that’s called a “TSM” approach.

              Americans criticise the EPO Approach, saying that it is ex post facto. It isn’t. It is ex post the facto of conception of the invention but in FtF law, conception is irrelevant. In FtF, validity is judged by reference to the PTO filing date. That is AFTER the inventor’s patent attorney has written up the patent application, fixing the technical field and the technical problem solved by the invention. When I write patent applications I’m free to present the invention at its problem-solving best. Then the EPO Examiner gets a chance to check that out.

              Over to you now.

              1. MaxDrei, I may not go further developing this right now on this posting. But obviously there is much to come back to with regard to this discussion, that may be worked through over time.

                For now, I plan to respond and develop stuff directly arising from your comment.

                It seems that there is now a strongly held position in academia that anyone who says or writes anything at all which builds on the ideas of others, without giving precise citations of the ideas of others at the point of use (e.g., “Harvard referencing”), is guilty of the heinous crime of plagiarism. I seem to recall a posting on this blog concerning an instance where this reached a US Federal appellate court. One can understand how such a position might have arisen in response to the widespread availability of material on the Web, but I personally deplore the use of pejorative language that extends to characterizing what may often be mere carelessness and inadvertence, and failure to follow regulations to the letter in carrying out academic assignments, in pejorative terms as acts of dishonesty and breaches of ethical standards.

                I trust that one is not expected to conform to such standards on mere blog comments! I suppose that I am, by instinct, an “efficient infringer”.

                You asked: do you know the axiom that ‘that which comes after, and infringes, if coming instead before will destroy novelty’?” I have certainly seen that before, and probably on more than one occasion. If my memory was correct, I was at the time thinking through these matters for myself, and therefore the “axiom” would have been taken as confirmation that the way my thoughts were developing in accordance with standard theory. But of course the phrase “metes and bounds” of the invention is a dead giveaway.

                In the interests of full disclosure with regard to the “library” metaphor for obviousness, Judge Rich, in a CCPA opinion, discussed obviousness in a context of the inventor in a room surrounded by papers with the teachings of prior art. It was mentioned by Justice Breyer in the KSR v. Teleflex oral argument, where it was said to be particularly helpful in understanding “obviousness”. I took that as the basis for developing the “library” metaphor offered above.

                1. DP, my tip when pondering on obviousness is to have a look at the way the courts do it in England. First they ascertain the common general knowledge in the mind of the uninventive but knowledgeable PHOSITA. Then they give that entity the single prior art reference that is the best obviousness attack.

                  They don’t do mosaic-ing.

                  Nevertheless, they have the reputation of revoking for obviousness more often than other jurisdictions. How come?

                2. but I personally deplore the use of pejorative language

                  DP, your feelings are noted.

                  Nonetheless, those feelings simply do not change what plagiarism actually means.

                  Equally nonetheless, your follow on comment of “I trust that one is not expected to conform to such standards on mere blog comments!

                  is true.

                  I suppose that I am, by instinct, an “efficient infringer”.” – no – you are incorrect in using that term for the situation you describe.

                  Not sure if this was purposeful, but please do not water down the meaning of that term with inappropriate use in situations that such a term does not apply, and to conduct (blog commenting) that otherwise is typically deemed innocuous. The use creates an implicit indicator that “efficient infringement” itself is innocuous, when that is simply the opposite take-away to be had.

                  Let me also point out that:

                  but of course does not have encyclopaedic knowledge of the contents of the library.” is in error.

                  PHOSITA does have such capability.

                  Of course, PHOSITA has a different limitation on that knowledge that needs to be on the table here: PHOSITA is a type of sliding scale and her ability is to pegged to the level of the artisan involved. By this, what is meant is that for different arts there are different levels, and the level of the PHOSITA concerned with inventions dealing with potential uses of high energy physics and the like (think nascent quantum computers) is simply at a different level than the PHOSITA concerned with inventions dealing with uses of (or improvements to) mousetraps.

                  The library metaphor somehow needs to reflect this legal component of PHOSITA, perhaps something along the lines of the In The Art portion….

  4. OT, unless considered relating to 4.1.1.1.2 below.

    I typed up a fair amount of historical stuff, with both front matter and end matter from John Davies’s collection of English patent cases published in 1816.

    I decided that probably the best way to handle this was to create a separate anonymous blog for the purpose.

    link to distantperspective.blogspot.com

    This new blog is not intended for comments, but is intended simply as somewhere I can post stuff without filling up blogs like this with loads of off-topic comments.

    From John Davies, I so far have the Preface, the list of cases (with page numbers) and the main body of the Introduction, followed by the Practical Observations that conclude the book.

    I have divided up the Practical Observations into six installments. To me these observations seem like a tour de force survey, systematically organized, of the case law developed in the English patent cases in the period 1785 to 1816.

    1. Why is the historical stuff still relevant?

      The patent statutes currently in force in the US seem to me to contain a real hotchpotch of provisions drafted at various times for various purposes over more than two centuries, supplemented by doctrines developed in case law over the same period, for reasons that many have perhaps forgotten about.

      In a parliamentary system, when it becomes clear that some part of the law needs modernizing, it is customary to draft a new statute, repealing all the old statutes. That task would be undertaken by the government and, in instances such as revising or modernizing copyright and patent laws, and bringing treaty obligations into effect, the proposed legislation could expect to receive cross-party support. The drafting would be undertaken by “parliamentary counsel”. These are lawyers employed by the office of the Attorney General who specialize in the drafting of statutes, and whose professional responsibility it is to ensure that the new statute is consistently worded, hopefully without unintended legal loopholes. Following debate at second reading, the bill goes into committee, where members of the committee propose amendments, which typically are either rejected or accepted by the government, and the bill gets amended accordingly. Then, of course, the report stage and the crucial third reading, in each house (maybe followed by “ping-pong” as each house considers amendments made in the other).

      Thus, with regard to important statutes, the situation does not arise whereby those outside the government and parliament, such as Giles S. Rich, P.J. Federico, or the American Law Institute are involved in the details of drafting legislation.

      (On the other side of the coin, the US Congress is seen as exemplifying a really strong committee system, involving all sides of the House and Senate, that I believe is seen as a model for parliamentary systems to strive towards.)

      But if you do have laws in force containing provisions enacted centuries ago, it is surely relevant to look into the original purpose underlying the detailed wording of those statutes, and, to that end, seek to understand that ideas and assumptions that were circulated at the times those statutes were enacted.

      ===

      By the 1780s, lawyers and judges in England were forcefully emphasizing the importance of the disclosure in the specification of the patent, for giving notice to the public, and ensuring that patentees fulfilled their side of the presumed “bargain” by enabling the public, on expiry of the patents, to construct the invention.

      But it just occurred to me that maybe the original purpose, back in the time of Queen Anne when specifications were required in the patent grant, the specifications may simply have been required for the purpose of enabling the law officers of the crown (the Attorney General and the Solicitor General) and the Lord Chancellor to resolve disputes regarding whether a claimed invention was new in the art, and who was indeed the “first and true inventor”.

      Inventors at the beginning of the 19th century were seeking patents whilst pressing strongly for their inventions to remain secret. Indeed they sought acts of parliament for that purpose. But it seems that these were refused. (Thus one could track down the debates in Hansard to understand the reasons adopted by the legislators for refusing such acts.) But, in addition, the Lord Chancellor, Lord Eldon, in 1802, in ex parte Koops, in one sentence, explained why it was practically impossible to receive a patent grant whilst maintaining the secrecy of the invention:

      “As to the worth of the apprehension suggested, a man has nothing more to do than to pirate your invention in a single instance, and he will then force you to bring an action, and then the specification must be produced. ”

      In other words, if someone infringed on purpose, so as to force the patentee to seek an injunction in the Court of Chancery, he could then compel discovery, including discovery of the specification, in order to defend the case.

      1. Please disregard any repeat repostings due to the hyper filter effect…

        the drafting would be undertaken by “parliamentary counsel”. These are with the writing by lawyers employed by the office of the Attorney General who specialize in the drafting of statutes, and whose professional responsibility it is to ensure that the new statute is consistently worded, hopefully without unintended legal loopholes.

        Basically you are talking about our Act of 1952 with the aid of (later Judge) Rich and Federico.

        But, as you may have guessed from the exchanges between Ned and I, getting that first step right is not going to be enough if you have revisionists and judicial legislating from the bench that seek to take apart that Act, and ignore critical aspects (such as the removal of the power of the Court to set the meaning of the word “invention” through the use of common law evolution; and such as the defining of the word “process” to include more than the original word which went to merely making one of the other hard good categories).

        Speaking about revisionists, your own comment of “Thus, with regard to important statutes, the situation does not arise whereby those outside the government and parliament, such as Giles S. Rich, P.J. Federico, or the American Law Institute are involved in the details of drafting legislation.is revisionist who-huh. Those “outside” were in fact chartered by those “inside” because those “outside” were the ones that were leaned on to obtain your own stated desire of “professional responsibility it is to ensure that the new statute is consistently worded, hopefully without unintended legal loopholes

        1. Distant, think of a deed describing meets and bounds. The property lines have to be measured and defined carefully lest there be lawsuits later.

          Now switch to inventions. What if I could claim the invention by simply stating a title, a brief abstract, a figure and a short claim. No specification. Well that might suffice if everything was well understood from the brief materials. But generally, a brief summary is not sufficient to provide clear boundaries, either to compare to the prior art, or for infringement. The goal of every drafter would be to state the boundaries both broadly and vaguely that the scope of the invention could be changed in litigation to accommodate both the prior art and the infringing item.

          Back in the day, we once had an employment agreement that allowed employees to state their separate inventions by simply listing them and describing them briefly. No details were required. But then there were employees who would take advantage by stating that so and so feature in our products (which they put there) was their separate invention listed on his employment form, and that they should receive compensation in terms of royalties.

          Now, just how could we know if this claim were in fact true because it would only be true if the alleged inventor had worked out how to implement the invention and actually built one or described it in a document prior to employment. But generally, that proof was not available.

          So, after several bad incidents and lawsuits, we stopped allowing employees to claim prior works and inventions that way. All we allowed them to do was reference patent applications filed before they were employed. That solved that problem, because one reliably determine whether the invention incorporated into our product was indeed the separate property of the employee. We also required a royalty free license.

          So the specification’s primary purpose is to clearly specify what the inventor invented so that the claims not only be understood, but that the inventor not be able to claim beyond what he actually invented.

      2. Distant, I can speak from some experience that the real purpose for a complete description of the invention is exactly what you said it was: to help distinguish the invention from the mill run, and rival claimants to purported the same invention.

        I will give you detail later when I am less busy.

  5. Is this muddle the first of a whole host of “accidents waiting to happen” because the AIA poured into the brew of existing US patent law quite a few nucleating crystals of RoW FtF patent law. One of those crystals is the concept of “made available to the public”. Another is a “right of continued use”. Will the nucleating crystals dissolve or will they crystallise the brew? Nobody knows.

    It was back in 1973, when the EPC was done, that people in Europe started to argue that “made available” notion would allow inventors to extend their period of protection beyond 20 years by filing at the PTO only when the trade secret regime will hold out no longer. The worries disappeared about 30 years ago. The reality is that it does not happen.

    Why not? As ever, in FtF land, the choice is between publishing or patenting, and everybody knows it. If you do neither, the risk is that your competitor patents the field and you have to live with that problem.

    So you choose, and very early, whether to go for a patent or a trade secret, knowing that, by the time you have found out that the secret is out, it is too late to patent it.

    The biggest problem with moving from FtI to FtF is to forget the FtI ground rules and learn a whole new set of ground rules that apply in FtF territory. But as the AIA mashes together in one statute some FtI stuff and some FtF stuff, that makes it more or less impossible to come to a sensible mindset.

    As this case excellently demonstrates.

  6. Dennis: The Federal Circuit’s recent decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals (Fed. Cir. May 1, 2017) held the public sale of an invention qualifies as prior art

    Court: We hold that the asserted claims … are invalid under the on-sale bar.

    1. Dennis, there is no case of which I am aware that holds that third party secret use of an invention (machine or process) is prior art to another. In contrast, public use of an invention a third party is prior art. But public use must be a non confidential public use that effectively discloses the invention by allowing others to observe it, or reverse engineer it.

      Offers for sale by the patentee are bars even if the invention is not disclosed because the Supreme Court in Pennock held that publicly exploiting the invention prior to filing an application, even the details of the invention are not disclosed, is an abandonment of the right to obtain a patent. That is effectively an equitable, not legal, defense.

      Prior invention (as in 102(e)) is prior art as of the date of reduction to practice, but the invention itself must be disclosed as it is when the patent is published. There is one aberrant Federal Circuit case to the contrary, but it should be ignored as it is truly inconsistent with the whole weight of authority.

      1. I agree with Ned.

        I always thought that the on-sale bar is less about prior art/obviousness and more about preventing the inventor from extending the time in which he has priority. 17 years, not 17 years plus whatever time you were selling the invention before deciding to patent it.

        1. Er, I do not understand how one might cogently hope to maintain that an invalidating sale is a “statutory bar” but not “prior art.” AIA §102 reads: “102(a) Novelty; Prior Art – A person shall be entitled to a patent unless… the claimed invention was… on sale… before the effective filing date of the claimed invention…” (emphasis added). Whether there was ever such a thing as a statutory bar that is not also prior art (that is Ned’s contention, with which I cannot agree), there is no longer such a category. “On sale” is explicitly prior art under the terms of the statute. To say that a claimed invention is barred from patentability by virtue of a private sale is necessarily to say that a private sale puts the claimed invention into the prior art.

          1. Well, Greg, if true, it defaces the coin. What such thinking does is take a great patent system and flush it down the toilet. Without understand why the patent laws are the way they are, how we got here, the lessons of history, and to simply read the statutes without any knowledge of experience of the centuries, is to behave like mind-numbed robots, drooling nincompoops.

            I find it remarkable that the patent bar, charged with critiquing Federico’s draft, could not have noticed the damage they were doing by referring to the entirety of 102 as “prior art.” What were they smoking, those lazy good for nothings?

            And then we got the mind numbing, and little-minded AIA, that is filled from one end to the other with mistakes and bad policy. We theoretically went to FTF, but left in “102(e),” but made it 10 Times more potent by including foreign language priority applications. What lun@cy.

            And the beat goes on.

            1. Ned, was the method in their madness to weaken patent rights, by aggregating all the weakening provisions of pre-AIA law with anything they could find in the EPC? Was that not flavour of the month in those fetid times back then?

              Thus, for example, they took the “secret prior art” provision of Art 54(3) of the EPC and pumped it up to include i) obviousness attacks based on ii) filings at the Patent Office in China iii) that do not even get into the national phase at the USPTO.

              I do not know how else to explain such a brain fart by The Congress.

              1. By “obviousness attacks based on ii) filings at the Patent Office in China iii) that do not even get into the national phase at the USPTO” do you mean prior art with an effective date of the Chinese patent application filing date even if there was no U.S. application filed claiming its priority benefit and published?

                1. I think that is what he means. Max & I have discussed this point before, and I gather that he thinks that secret prior art in an inventive step analysis is crazy, but I guess this just strikes me as an arbitrary choice that is neither good nor bad.

                  Yes, we are willing to consider Chinese filings as art as of their CN filing date, even if those filings never come into the U.S.

                  What of it?

                  Clearly the content of those CN applications is demonstrably part of the sum total of human ken. I grant that there is a perfectly sensible reason for excluding such references from inventive step rejections, and making them available only for novelty rejections. On the other hand, there is equally well an argument for considering them when assessing inventiveness, as well.

                  One can go either way and remain safely within the bounds of reason. The EP went one way, and the U.S. another. So what?

                2. No surprise, Paul, that I disagree with what Greg writes below, about deciding your obviousness relative to the content of a patent filing at the Chinese Patent Office that the Patent Office in Peking only publishes much later than when you filed at the USPTO. Greg writes:

                  “…..the content of those CN applications is demonstrably part of the sum total of human ken”

                  No idea what he has in mind with his expression “human ken”, but I thought we judged obviousness relative to the knowledge of a hypothetical uninventive PHOSITA. For me, the unpublished content of one filing by one genius at the Patent Office in China cannot and should not count as within the knowledge of the PHOSITA.

                  Unless of course you want to reduce the flow of emerging patents in the USA by any means under the sun, fair or foul. I suspect that was the plan lying behind the AIA.

                  For me, the merit of the substantive law under the European Patent Convention is that it is easy to explain to non patent people. And when they have grasped it, they can see that its basic scheme is fair to inventors.

                  Anything else and the public starts to disapprove of patents, which is bad news for the progress of the useful arts.

                3. I don’t think that is a correct AIA interpretation, unless Max was referring to a PCT application based on a Chinese application and designating the U.S.? [Which is a U.S. application.]
                  BTW, even before the AIA, a Chinese filing date in such case would be a novelty priority date, constructive reduction to practice invention date, and later-filed prior art avoidance date.

                4. Paul I should be happy to be corrected but my understanding is that A WO published in Chinese is prior art from as far back as its earliest priority date, and also for obviousness attacks, even if it is abandoned (as most CN WO’S are) after WO publication so that it never enters the US jurisdiction.

                  I think this concept of allowing obviousness attacks on such secret prior art is a hang-over from FtI thinking. It does not belong in a FtF landscape.

                5. No idea what he has in mind with his expression “human ken”…

                  Ken = the range of perception, understanding, or knowledge

                  In other words, “human ken” means the sum total of all things that people already know. This is, obviously enough, a constantly shifting quantity, but it is the baseline against which we measure what is an “advance” over the art.

                  I thought we judged obviousness relative to the knowledge of a hypothetical uninventive PHOSITA.

                  Of course we do. But remember, the PHOSITA does not actually exist. The PHOSITA is a legal fiction (like the “reasonable person” in tort law). Each sovereign constructs the PHOSITA as a construct of law, and is free to define the PHOSITA as the relevant community so chooses. Here in the U.S., we have chosen to make our PHOSITA aware of the content of filed but unpublished patent applications, so long as the application eventually does publish. In Europe, the community has chosen to construct their PHOSITA such that she is not aware of the content of such applications.

                  Given, as I said, that the she is merely an imaginary character in any event, there is no compelling reason why we should imagine her one way or the other. The only question is whether you want it to be slightly harder or slightly easier to achieve patentability. Along this one dimension of our law, we have opted for slightly harder and you folks have opted for slightly easier. The effect, in any event, is only slight. Such filing date art is only infrequently asserted against patents on either side of the Atlantic.

                6. I don’t think that is a correct AIA interpretation, unless Max was referring to a PCT application based on a Chinese application and designating the U.S.?

                  That is exactly what Max means. Before the AIA, the WIPO document had filing date art effect only as of its PCT filing date (and then only if it published in English), whereas now it has art effect as of its priority filing date (even if that filing date is in an non-US office, such as the PRC’s SIPO).

                7. [T]he merit of the substantive law under the European Patent Convention is that it is easy to explain to non patent people.

                  I think that this is true as far as it goes. EPC obviousness law is easier to explain to a layman than is US obviousness law. I am not sure that we really ought to calibrate our public policy choices according to what is easiest to explain to laymen, given that so few laymen really care to have patent law explained to them.

                  If it is a choice between having a generic drug sooner, and having an explanation that they can understand about why said drug is still on-patent and not invalid for obviousness, I expect most laymen prefer the cheaper drug.

                8. I appreciate the exchange here, driven by Greg, to draw out the Sovereign differences as to how PHOSITA are in fact different per sovereign – even as the word used is the same, and the law and its effect is similar, there remains real differences with those real differences made as choices of the different sovereigns.

                9. Pedantry Alert!

                  Regarding “human ken”.

                  Native English speakers learning continental Western European languages need in particular to distinguish between two senses of the verb “to know”. In German, the relevant verbs are kennen (to know, in the sense of “to be acquainted with) and wissen (to know, in the sense of “to know, or understand, a fact). The latter gives rise to the German Wissenschaft, meaning “science”. The word “science” moreover derives from the Latin scire meaning “to know”, which is used at the opening of the warrant Scire facias… (“Make known…”). I believe that the German “wissen” is cognate to both nouns in the phrase “wit and wisdom”.

                  Many if not most British English speakers would, I think, also be aware of the verb “to ken”, associated in particular with Scotland and Northern English”. Older British English speakers would probably know the following song (originating in Cumbria):

                  D’ye ken John Peel with his coat so grey?
                  D’ye ken John Peel at the break of day?
                  D’ye ken John Peel when he’s far, far away?
                  With his hounds and his horn in the morning

                  And also in fossilized phrases such as “things beyond our ken”, hence “human ken”.

                10. Greg I appreciate your reaction, on whether the PHOSITA is deemed to know what was filed yesterday at the Patent Office in Peking, but I disagree with your:

                  “Given, as I said, that the she is merely an imaginary character in any event, there is no compelling reason why we should imagine her one way or the other. The only question is whether you want it to be slightly harder or slightly easier to achieve patentability”.

                  For me it is most emphatically NOT the “only” reason.

                  Patent law is abstruse at the best of times. But the economy relies on a properly functioning patent system and public tolerance of it, so it behoves us all, especially the law makers, to write patent laws whose sense and logic can be grasped by business people, politicians, leaders of opinion, and members of the public. That is my main reason why the deemed knowledge base of the notional PHOSITA should be simple to grasp, and as close as possible to the reality of real inventors doing real research.

                  Tell me, when assessing for its novelty-prejudicing effect a reference published a long time ago, do you in the USA assess its disclosure as of its publication date? Do you when assessing the same document under 35 USC 103 assess its disclosure content as of the date of the claim in suit? Under FtF, novelty and obviousness are different horses running different courses and confusing the two renders the law illogical and unpredictable.

                  Exactly as many lawyers would like, I suppose. Sigh.

                11. MaxDrei,

                  Your truism of “Under FtF, novelty and obviousness are different horses running different courses and confusing the two renders the law illogical and unpredictable.

                  fully applies here in the States. It fully applies to both pre-AIA law and AIA law.

                  As such, the point that you were trying to make is a bit uncertain.

                12. For me it is most emphatically NOT the “only” reason… [T]he deemed knowledge base of the notional PHOSITA should be simple to grasp, and as close as possible to the reality of real inventors doing real research.

                  In that case, both the Ms. U.S. Phosita and Ms. E.P. Phosita are both wild abstractions from any actual inventors. Do you know any actual inventors who read every work, in every language, the day after it publishes (or, in the U.S., sometime between the day after it publishes and one year later)? Who are also familiar with all products on the market, who attend every public lecture ever given, and who are acquainted with all techniques publicly practiced in their respective industries. Not only that. Not only are they acquainted with all the literature in their own industries, but also in any other industry that might suggest a solution relevant to a problem that the Phositas might be trying to tackle in their own industry.

                  This is a clearly fictional personage. You say upstream that these outrageously unrealistic characteristics are necessary for the objective nature of the obviousness inquiry. Who can doubt it? That does not make the imagined personality any less unrealistic.

                  As long as we are imagining this totally unrealistic personage for our objective inquiry, however, I do not see why it is especially more galling if we imagine that this paragon is also able to intuit the contents of filed but not yet published patent applications.

                13. These are excellent and highly pertinent points you have presented Greg as to what PHOSITA entail.

                  It is a shame that the other people in the dialogue seem more interested in the deep weeds off of the path you have provided.

      2. It is without a doubt an aim of Congress in the AIA to remove personal bars that were equated with “prior art.”

        This is a fundamental mistake missed by Dyk.

          1. There is no doubt if you understand all else that has transpired. One cannot squinch their eyes so tight in an attempt as to see something that the larger print screams to the opposite.

          2. There is no doubt if you understand all else that has transpired. One cannot squinch their eyes so tight in an attempt as to see something that the larger print screams to the opposite.

      3. Going back to the early history. The Statute of Monopolies (England, 1624) held that monopolies resulting in restraint of trade were unlawful under the common law. In his Institutes, Sir Edward Coke expanded on this by forcefully explaining that monopolies that took away a man’s trade, and thus his livelihood, were against God’s law, and the “ancient laws of the realm”. There was an exception allowing monopoly for limited period to a limited period to a “first and true inventor” granting the privilege of the “sole working or making of any manner of new manufactures within the realm”. Such patents of invention, whether invented at home or replicating foreign industries, did not hinder those already engaged in existing manufactures within the realm, and the granting of the new monopoly would not disrupt existing trade and manufacture. Apparently disclosure was not required till the reign of Queen Anne a century later.

        Moving forward in time and place to the US from the 19th century onwards, surely those engaged in trade are entitled to rely on trade secrets to protect their manufacturing processes. If they are already in business, surely their livelihoods should not be taken away because someone later is granted a patent on the same manufacturing process.

        1. Sir Edward was, no doubt, a redoubtable jurist, but this seems to me to fall neatly within the category of indignor quandoque dormitat bonus Homerus. We want to incentivize disclosure, and I for one would be scandalized if we were to sacrifice that public policy good merely to accommodate Sir Edward’s thoughts about the laws of God and the English realm. Anonymous hypothetical tradesmen do not get a “heckler’s veto” over a public policy scheme that has so demonstrably accelerated technological innovation in our realm.

        2. I would add that, if items of manufacture had been on sale more than a year before the patent application, then surely those items would often have entered the “stream of commerce” and the “normal channels of trade” so (at least without exhaustion doctrines developed in the late 19th and early 20th century), the subsequent patentee might seek to interfere with resale.

          Looking down the comments, would not a “prior use defence” protect those who found the invention prior to the patentee and made use of it without attempting to sell it?

          1. Just to note for clarity, the 102(a) prior art bar is for “PUBLIC use” and note in contrast that the word “public” does not appear right before “on sale” in that statute, albiet “public” is in the [disputed] catch-all phrase at the end of that AIA 102(a) list of bar activities.
            That is all quite different from the limited and NON-prior-art prior commercial use statute 35 USC 273 , as noted below.

        3. DP, the AIA introduced to US law a number of provisions of European “First to File” patent law. One was the prior art yardstick “made available to the public”. Another was the “right of continued use” for those who had been relying on trade secret protection for their secret process, when they are surprised after some years of successful trading by the grant to a competitor of valid patents on that self-same process, independently invented also by an employee of that competitor.

      4. There is also secret prior art under 102(g). See Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc.

    2. Moreover, the operative principle of prior art is to prevent the patentee from “withdrawing” from the public domain. Certainly obvious variations need to be part of that equation.

      The operative principle of the on sale bar is equity — a personal bar against the inventor and his privies. The scope of that bar should only be sufficient to cure the problem of non compliance with the policy of prompt filing and disclosure of the invention.

      1. Expressly removed by Congress (no matter what Dyk may have stated to the contrary).

        Plain facts are getting in the way of what judiciary had wished Congress had written.

        The judiciary runs amuck (a lesson the CAFC has learned from the Supreme Court, no less).

      2. Ned, I question whether the problem which you (and others) see is really a problem at all. When the EPC was done, in 1973, loads of people expressed concern that it would encourage innovators to aggregate a long period of trade secret protection with a following 20 year period of patent protection.

        It’s just that, 40 years later, it seems not to be a problem.

        Perhaps that is because, in FtF land, everybody with a passing knowledge of patent law knows that the choice is “patent or publish”. To do neither is to invite disaster, when your competitor invents it independently and then patents it and there is no way to get his duly issued patent found invalid.

        BTW, the “derivation” issue that chews at the guts of patent people in the USA is another issue that seems not to be a real problem in FtF land.

        1. Max, it really all depends. A lot of the processing of heads and discs in the disk drive industry involves trades secret processes. For example, IBM was the first to develop MR heads that gave IBM a significant technical advantage for a number of years. They even sued Seagate when to prevent Seagate from using an IBM employee skilled in the technology — that arguably set Seagate back even longer than others.

          But for the on sale bar, IBM could have patented some of these processes as soon as others began to learn of them and extended their monopoly even further. (But, this ideal situation for IBM was and is somewhat frustrated by the patent licensing department who cross licenses everyone so that that department can show a profit.) And perhaps Europeans don’t do it because they know their US patents will be invalid.

          1. Ned, I do agree that there are things people don’t do for the reason that it will invalidate (or render unenforceable) the US patents in the family. But my hunch is that this is not the biggest factor here.

            I wonder if the grace period plays a role. You say that IBM could still have patented after others had learned of the technology. For that, would IBM be putting their trust in the grace period? Of course, there is no grace period in Europe, so in Europe IBM would be too late to patent, after others have learned the technology.

  7. How does this ruling not render meaningless the new prior user right? If a secret process is used to sell products publicly that do not disclose the process, doesn’t this ruling render the patent invalid, leaving no meaningful purpose for the prior user right defense?

      1. Is this decision really limited only to hard goods?

        Patents and hard goods are just not the same things, now are they?

        😉

        1. Is this decision really limited only to hard goods?

          I didn’t say it was. If you have a point to make it, try spitting it out in English, using declarative sentences.

          Yes, we know that makes it easy for adults to identify your errors. Do it anyway.

          1. My point is that your post to which I responded was excessively unclear directly on the point I provided.

            Rather than replying in empty snideness, you might want to shore up your own posts…

    1. The prior user defense even as expanded in scope by the AIA, is a purely personal defense for the prior user. It is not prior art, and it has several special requirements.

        1. I am afraid that I cannot follow your reasoning here. How does this case make a totally different statutory provision “a nullity”? Do you merely mean that no one is going to want to invoke the prior user defense in view of this case? That would seem an odd claim, given that § 273(a)(1) explicitly provides a defense for “an internal commercial use,” which would presumably include situations in which one has not engaged in any sort of contract that could qualify as a “sale” or “offer for sale.”

          1. Processes are considered “on sale” activity by all courts when products resulting from those processes are sold. Virtually no one would care (or spend money to litigate) about non-commercial secret uses, which will be the only place the Prior User right will still have any impact because a secret commercial process that produces a publicly sold product will now render patents invalid, so there would be no reason to take the elevated risk of attorney fees under 273(f).

  8. I cannot see how you stop sliding down the slope with your prognostication of:

    as such any non-statutory-bars eventually developed by the courts should probably not qualify as prior art for obviousness purposes.

    What “should probably” has no tie to what judges and Justices decide to do (apparently).

  9. The statement can also be easily differentiated from “offer for sale,” which holds a different meaning than “sale.”

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