¿Does Secret Prior Art Apply to the Obviousness Analysis?

by Dennis Crouch

It is not clear from ,u reading the AIA revisions that “secret prior art” (102(b)(2) prior art) continues to qualify as prior art for the obviousness analysis.  The obviousness provision (Section 103) refers to prior art in the context of what would be known “before the effective filing date of the claimed invention to a person of ordinary skill in the art.”  And, almost by definition, information only available in a secret patent filing at the PTO would not be known to this mythic POSITA.  In addition, the AIA indicates that one purpose of the amendments is to bring US law in line with that of other nations [who do not rely upon secret prior art for the obviousness analysis.] Despite these argument, I suspect that the Federal Circuit will continue to push to maintain the old rule since there is not clear textual or congressional indications of an intent to change the tradition.

Post-AIA patent applications are now trickling up to the PTAB in ex parte appeals from examiner rejections.  In the recent decision Ex Parte Kirk, APPEAL 2017-003486,  (Patent Tr. & App. Bd. Oct. 26, 2017), the Board affirmed an examiner’s obviousness rejection based upon the combination of a 102(a)(1) reference (an application published prior to Kirk’s effective filing date) and a 102(a)(2) reference (an application published subsequent to Kirk´s effective filing date, but filed prior to that date).   In the appeal, the Board did not expressly consider the propriety of applying 102(a)(2) references to the obviousness analysis.  See also, Ex Parte Linkedin Corp., APPEAL 2017-005043 (Patent Tr. & App. Bd. Sept. 25, 2017).

The use of secret prior art (patents that were unpublished as of the critical date) goes back to the Supreme Court decision in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965). In that decision, the court held that it was proper for the PTO to consider a pending patent application as prior art to bar a later-filed application.  There the court wrote:

Petitioners’ primary contention is that the term ‘prior art,’ as used in s 103, really means only art previously publicly known. In support of this position they refer to a statement in the legislative history which indicates that prior art means ‘what was known before as described in section 102.’ . . .

When Wallace filed his application [the prior art application], he had done what he could to add his disclosures to the prior art. The rest was up to the Patent Office. Had the Patent Office acted faster, had it issued Wallace’s patent two months earlier, there would have been no question here. As Justice Holmes said in Milburn, ‘The delays of the patent office ought not to cut down the effect of what has been done.’

To adopt the result contended for by petitioners would create an area where patents are awarded for unpatentable advances in the art. We see no reason to read into s 103 a restricted definition of ‘prior art’ which would lower standards of patentability to such an extent that there might exist two patents where the Congress has plainly directed that there should be only one.

125 thoughts on “¿Does Secret Prior Art Apply to the Obviousness Analysis?

  1. Ron :

    “However, for good constitutional reasons of “promoting the progress,” Congress rightly provided in the patent statute that an inventor that does not timely perfect his/her inchoate right by diligently filing an enabling application may forfeit the right and the patent may be issued to another “inventor” who did. ”

    Then why do the rules require applicants to swear and oath or declare that they believe they are the first inventor?

    Prior to AIA, the law required applicants to be inventors (102 (f)). AIA appears to have removed that requirement (even if that hasn’t trickled down to the rules for the oath/declaration). AIA is unconstitutional as the Constitution authorizes awards to Inventors, not runners up.

    1. Then why do the rules require applicants to swear and oath or declare that they believe they are the first inventor?

      Asked and answered. These people need to be runners – that does not limit or change the fact that the race fully (and always) has contemplated multiple runners.

      Your “view” on being Constitutional is flawed because you are ignoring (still) the very context of the law under discussion.

      ALL OF THIS would be clear Les, if you would only seek to understand what “inchoate” means and how an inchoate right becomes a full legal personal property right.

      Your adherence to ignoring the proper context is nothing more than you clenching tight your eyes and not wanting to understand a fundamental concept of US patent law, and then whine in your chosen ignorance.

      Does that sound harsh? Maybe. But these are not new concepts presented to you. These are basic concepts that you SHOULD know, understand and have accepted long ago if you practice in this area of law.

        1. Your sleeping through the fundamentals is part and parcel of your difficulties Les.

    2. Then why do the rules require applicants to swear and oath or declare that they believe they are the first inventor?

      This seems to be a silly question if you are trying to wedge in your narrow view of inventor ship. They swear and oath or declare that they believe they are the first inventor. They do not have to swear that they visited a diviner and found through the spirits that they actually, for certain, are the first inventor.

      And while we’re at it, doesn’t the phrase “first inventor” concede that there can be a second inventor?

      1. If they know they are not first, they can’t even apply because they can’t make the declaration. Does that tell you anything?

        The use of the word “first” is unfortunate. But, I guess they are trying to communicate with those that think you don’t have to be first to be an inventor, so they are using it for emphasis. Kinda like how 35 USC 100 says process means process…

        1. If they know they are not first,

          Assuming facts not in evidence.

          Does that tell you anything?

          Sure it does. It just does NOT “tell” what you want it to tell.

          THAT is unfortunate.

          As is your continued clenching tight your eyes to the legal context of this discussion.

          Many runners – one race. As the US patent system has always been.

          Separately,

          Kinda like how 35 USC 100 says process means process…

          Actually, I have explained that bit already – and it has to do with Ned’s penchant for ignoring history (when it suits his agenda). The “double” presence is there to EXPAND beyond the previous historical notion that “process” MERELY meant “arts” as some form of limitation – the limitation of the category being MERELY a handmaiden of the hard goods categories. The definitional aspect you refer to puts “process” as a FULL AND EQUAL category, and emphasizes that the category is NOT limited to only those things that “end up” with a hard good.

    3. Les,
      Pre-AIA 35 USC 115 provides “The applicant shall make oath that he believes himself to be the original and first inventor.” That is only a prerequisite for even processing the application. However, the applicant’s belief may turn out to be wrong, or the applicant may fail to meet other requirements under equitable doctrines of forfeiture of the patent right. Note that the forfeiture bar is broader than inventorship determination – it is an absolute bar operating even if there is no contest with another inventor, a loss of right to a patent occurs if the inventor “has abandoned the invention.” 35 USC 102(c).

      That said, I am still of the opinion that the first inventor must be the one presumed to deserve the secured exclusive right, even if one accepts Anon’s view that there is no distinction between inventors as long as the inventor declares that he/she is “the original inventor.” Post-AIA 35 USC 115.

      Les, to your constitutionality point, if the AIA’s Section 102 is constitutionally infirm, it is likely not because it may deny a patent to the “first inventor” – as explained above, first inventors may lose patent rights to “later” inventors under pre-AIA law. And as I explained elsewhere (see link to bitly.com) , that loss fits squarely within the constitutional limits of “promoting the progress” and “limited times.”

      Rather, even under the “first inventor to file” scheme, the drafters of the AIA should not have repealed Section 102(f) – “he did not himself invent the subject matter sought to be patented” because 102(f) said nothing about the inventor being first – only that he/she is an original inventor. The AIA proponents were too zealous for their own good. And they advanced a legally flawed argument that the condition that only inventors will receive a patent is ensured by the “original inventor” declaration in post-AIA Section 115. This is because a false declaration under Section 115 is only punishable under 18 USC 1001 by fines or imprisonment, but not by the loss of the patent. Without the remedy of 35 USC 102(f), there is no legal mechanism for denying a patent to non inventors (even if they are not “first”) and no mechanism to repeal a patent obtained by fraud or misdirection. There is no statutory defense to alleged infringers of ill-goten patents. Therein lies the potential constitutional infirmity – the Constitution does not permit Congress to “secur[e]” the patent right to non inventors. It is the repeal of Section 102(f) and not the “first inventor to file” that subjects the AIA to a credible constitutional challenge.

      1. Ron, perhaps. Perhaps unenforceability is enough.

        Anon, I believe, suggested that only a true inventor may be granted the patent. Therefore, a pirate does not have standing because he does not have good title.

    4. Les, but second inventors have been receiving patents since before the founding of the United States. First inventors at times abandon their inventions.

      Do you want a cite to an English case on point?

      1. Ron and Ned –

        The fact that the statutes used to prevent someone who abandons their invention from receiving a patent does not give permission to a non-inventor (e.g., your so called second inventor) to receive a patent. Ned, you are the one who argues that inventions must be new. If its already been invented, though it be abandoned, it is clearly not new. Or are you now taking the position that it need only be newly known?

        What does original inventor mean if not first inventor? How can a so called second inventor be an original inventor?

      2. Ron and Ned –

        Also, there is a difference between filing an application a day, week or few months after a second developer and abandoning ones invention.

  2. Below, following 14.1.2.1.1.2.2, there is a long discussion, culminating in Katznelson calling me out and anon asking how in Europe secret prior art and obviousness are related. Dennis, an idea for a new thread, one day, perhaps?

    The answer of course is Article 54(3) of the EPC. It is my experience that many US patent attorneys struggle to get their heads round it, yet it is key to the just apportionment of patent rights between rival Applicants. A significant proportion of Office Actions coming out of the EPO raise a patentability point under Art 54(3) EPC. Rival Applicants independently seeking patents at the same time, for overlapping subject matter, is what a government expects, wants and needs from a healthy and functional patent system. It shows that technological innovation is flourishing, which is what the patent system is supposed to promote, nicht wahr?

    In a nutshell, Art 54 defines the state of the art, and Art 56 EPC is the counterpart to Section 103 of the US Statute. Art 56 says you cannot use Art 54(3) art as part of an obviousness attack.

    What is Art 54(3) art? It is all the enabled disclosure content of all those “earlier filed but later published” patent applications that the EPO has published, 18 months after their respective priority dates. The EPO declines to issue you with a patent until it has checked, 18 months after your filing date, whether it has in the meantime published some enabling disclosure, within the ambit of your claim, that was duly filed at the EPO before the date of your claim. If it has, you need to amend your claim to get it novel over that earlier filing.

    Folks, this is not difficult stuff. Ron, if you had 40 years of practice before the EPO you would have some feeling how often it happens, that there is 54(3) art to address, before you can get to issue.

    Interferences are rare, but Art 54(3) citations are common. The number of Art 54(3) citations is a better indication of co-terminous independently occurring invention than the number of interferences.

    Or does somebody still beg to differ?

    1. anon asking how in Europe secret prior art and obviousness are related.

      That was not what I asked.

      1. Not what you asked, below? What did you ask then?

        This perhaps:

        “Thanks MaxDrei – I am curious now as to what solution your Sovereign has come up with”

        Solution? To what then, if not what I took it to be?

        1. Relation and solution – two very different concepts.

        2. Please Pardon Potential (re)Post:

          Relation and solution – two very different concepts

    2. In a nutshell, Art 54 defines the state of the art, and Art 56 EPC is the counterpart to Section 103 of the US Statute. Art 56 says you cannot use Art 54(3) art as part of an obviousness attack.

      I get – and fully respect – that your Sovereign has set up a rule.

      But you pretend that you have given an answer when all that you have given is a circle.

      You claim virtue in that circle when what you have done – all that you have done – is shown the circle.

      You also show that your Sovereign’s view of PHOSITA art is different than our Sovereign’s view.

      Something all of us would do well to keep in mind, nicht wahr?

      1. Lest we forget: The title of this thread is “Does Secret Prior Art Apply to the Obviousness Analysis”.

        1. Lest we forget, Sovereigns get to choose – and often choose differently.

    3. Max, the concept of “novelty only” [prior filed but not yet public] prior art is also the law in other countries, and is understood by the many U.S. practitioners who have or had clients doing foreign filing. But you also need to discuss situations of compulsory licensing that can arise from more than one patent covering a product from such law.

      1. Compulsory licensing is anathema (as it should be under the US Sovereign patent system).

        That would be a bug – not a feature.

      2. “Situations of compulsory licensing”? Rarer than hens’ teeth, Paul. So why do I “need” to “discuss” them?

        More than one patent covering a product? What’s strange about that, Art 54(3) or no? Hence, at least in telephony et al, patent pools, FRAND, standards essential patent, the whole bit!

    4. purely for convenience (and partly because the “dialogue count” filter is active), the following comment is reposted in this sub-thread as well:

      Ron,

      The statement from your Abstract of “and show that patent law inherently ensures that patent protection is not extended to near simultaneous inventions” and the more important WHY you are debunking Lemley (and what Lemley aims for) collides with “ROW” and how many non-US aims are simply differently chosen than US aims.

      For example here (and as MaxDrei has started a new sub-thread up at comment 15), the choice of a Sovereign to empower PHOSITA for any of the various powers that THAT legal entity possesses (to then apply the Sovereign’s choice of law) comes in STARK contrast.

      The “circle” that MaxDrei shows (and per my comments at 13.1.1 and to Ned at 4.2.1) is simply different than what the US Sovereign has chosen.

      Notably, the circle that MaxDrei shows DOES provide for a weaker 103 guard, as the actual state of the art is treated differently for the legal fiction of PHOSITA for the US and for Euro.

      In the US, YOUR statement from your Abstract fits, as the 103 guard applies to the “secret art” for BOTH novelty and obviousness.

      Per MaxDrei, your statement does NOT fit because the equivalent 103 guard is simply NOT APPLIED.

      MaxDrei wishes to extol virtue by applying the secret art to novelty – but novelty only. In this sense (as previously I prodded MaxDrei, who refused to engage), the legal fiction curiously can “see” the secret prior art in some instances but somehow can NOT “see” that very same secret prior art in other instances.

      So while ROW may have chosen (as is their right) this odd combination, the combination is NOT logically consistent.

      It’s as if MaxDrei’s view reflects a Sovereign choice (for the equivalent of obviousness) to use something other than the PHOSITA already established for novelty.

      As I note in 4.2.1 – this appears to reflect a lack of consistent focus on the very intention of what PHOSITA is meant to portray: such is NOT meant to portray what any single real world person may be able to ‘do,’ but instead is a super-powered entity meant to capture the actual state of the art. That state of the art – for BOTH novelty AND obviousness contains what has been shared with the Office at the time of that sharing (and not necessarily at the time of some later publication (which is when the ‘real world person’ viewpoint may attach).

      I have asked MaxDrei for the “logic” of bifurcating this single legal person (with the same aim of “state of the art”) and he has avoided providing any other answer than “I feel” or “that’s what ROW does, and they cannot be wrong.” There has been NO on-point critical reasoning offered FOR what ROW does.

      This is what I mean by above stating that all MaxDrei has done is show the circle. ANY claim to “virtue” from or for that circle remains an unsubstantiated feeling (albeit proper Sovereign choice).

      If your engaging MaxDrei (and if he does venture into your debunking of Lemley – and WHY Lemley is pursuing what he pursues) is successful, you have my deepest admiration.

      1. So, anon, It’s a First to File world from now on. I’ll say it yet again, just for you.

        Obviousness is to stop people patenting what’s lying in the road already.

        Novelty serves a quite different function. It is to adjudicate between those rival filers who are all inventive over the published state of the art, but who all filed at the PTO on different dates. Which filer amongst the rivals gets the patent? All of them? No! Rather, the one who was FIRST to the PTO with an enabling disclosure.

        OK?

        1. Your “just say it again” is untethered to the conversation – and decidedly does not help here.

      2. You’re funny, anon. When ROW (everywhere except the USA) drives down the same patent law road, you write:

        “So while ROW may have chosen (as is their right) this odd combination, the combination is NOT logically consistent.”

        You are like that old guy driving down the Autobahn in the wrong direction and commenting to his wife “Odd isn’t it, how many people are today driving in the wrong direction.”

        Keep coming up with the laughs. I do enjoy them.

        1. You rather miss the point MaxDrei – you have offered NOTHING of any critical thinking except to say “well, everyone is doing it.”

          THAT is not critical thinking.

          Do you remember the phrase – of a mother scolding her young one for unthinkingly following the crowd: “If everyone jumped off of a bridge, would you?”

          You exhibit Lemming tendencies and then want to take glory in doing so.

          40 years of experience doing the Lemming march is NOT something to crow about.

          There is laughter alright – just not the laughter that you think there to be,

          1. Those who wrote the EPC in 1973 debated whether to manage priority of invention using a “prior claiming” approach or a “whole contents” approach. Art 54(3) is the outcome, a “whole contents” approach. Interference (and UK law before 1978) is “prior claiming”.

            Every patent law professional must be familiar with these two approaches. If you are not, it is child’s play to read it up, in the standard works.

            1. THAT is still not an answer MaxDrei.

              Please address – directly – the points put to you.

          2. If you are the only one jumping off of a bridge, might it give you pause for thought?

            There are none so blind as those who will not see.

            1. Thank Jim – but that “clever” turn of phrase does nothing to the point here.

              The US Sovereign (not me) has chosen differently. ALL that I am doing is pushing for some meaningful THINKING as to a portion within the other Sovereign’s choice that does not stand up to reason.

              WHY is the fictional legal person of PHOSITA able to “blink” and see something (secret prior art) one moment, and then “blink” again and NOT see that very same thing?

              The underlying purpose of THAT fictional legal person is set to be ascertaining “the state of the art.”

              This ascertaining is NOT set to be that of any single one “real” person.

              I “get” the logic involved if one wants to exclude “secret prior art” if the notional person DOING the review was based on a real person.

              What I do not “get” is how the point I present is NOT meant with ANY critical reasoning – at all.

              THAT is why the maxim of “if everyone was jumping off a bridge” applies. It applies to the LACK OF ANY CRITICAL REASONING being offered.

              On the other hand, your attempted spin DOES NOT apply. I have provided ample legal reasoning – being the one that points out BOTH that Sovereign’s can do what they will, as well as point out that it is the FICTIONAL view of the state of the art that is the very purpose of PHOSITA.

              None so blind indeed – just not how you want to “see” it.

              1. should read:

                “What I do not “get” is how the point I present is NOT met with ANY critical reasoning – at all.”

                I have engaged and asked for critical reasoning – to date, I have received none from MaxDrei (or even yourself, if you want to provide some and advance the conversation)

    5. Max, one reason why there are so few interferences is that one has to “copy” claims within a year of publication in order to provoke one. See, 135(b). At times, one first becomes aware of an interfering application or issued patent when one gets a prior art rejection over another’s patent or application. By then, it might be too late.

      It is even less likely to get a claim on file in time if one is the senior party and never got a prior art rejection at all.

      1. Thanks Ned. I had not appreciated those reasons for the rarity of interferences.

        So, given what you write, would you say it is a mistake to suppose that the small number of interferences is proof of the rarity of near simultaneous invention in rival corporate R&D Depts of patentable subject matter that overlaps in scope?

        And would you also agree with me that the high frequency of collisions of novelty between rival corporate Applicants at the EPO, under the EPC, is evidence that independent near-simultaneous invention in rival R&D depts of subject matter that overlaps happens all the time?

        1. Still unanswered: the disaprate treatment between novelty and obviousness, vis a vis the fact that in one “secret art” is fully applied, but not in the other.

          And “but everyone else is jumping off the bridge” is not a thoughtful answer.

  3. This nonsense only arises because AIA lets non-inventors get patents (unconstitutionally).

    Secret Prior Art only makes sense in a world where you must be the inventor to get a patent.

    In a world where you can create a light bulb after the light bulb has been invented by someone else but beat that person to the patent office and get a patent

    1. If I am understanding your comment correctly, this seems to be a nonsensical distinction. A person who creates the light bulb without the knowledge of another person who creates the light bulb is still an inventor of the light bulb (I assume the without knowledge part because your scenario assumes a race to the patent office). The patent would just be determining which inventor of the light bulb got the right to exclude.

      If you assume the person that files first, but gets their knowledge from the person who actually creates the light bulb, then there is a problem. However, do we have any numbers to know how big of an issue this is in the post AIA world (where first-to-file is implicated)?

      1. Any type of derivation is still protected by the oath that accompanies a patent application.

        prosecuting someone for committing Fraud on the office remains a track of protection.

        As to Les’s view of “inventor,” his is a long standing errant view, and simply does not accord the term in its meaning in the legal context.

        1. Word Origin and History for inventor
          n.

          c.1500, “a discoverer,” from Latin inventor (fem. inventrix) “contriver, author, discoverer,” agent noun from past participle stem of invenire (see invention ). Meaning “one who contrives or produces a new thing or process” is from 1550s.

          You have yet to present support for your alleged “legal definition” or shown that the authors were using your alleged “legal definition” when they wrote the subject portion of the Constitution.

          1. Your own offered definition here does NOT carry the “only the very first” designator that YOU wish to imbue.

            Patent law has always noted that more than one inventor may exist (owner of an inchoate right) and has always had a system wherein the multitude of sub holders of inchoate rights may “battle” to become the holder of the fully made legal property right.

            This is a basic understanding in the patent law system Les.

            Maybe you should learn the basics…

              1. Like Ned (of all people) has ANY clue as to what the legal term of “new” means in context of patent law…

                Les – I suggest that you seek better sources from which to learn the basics of patent law.

          2. Les, now that is interesting. 1550 – about the time the English were using patents to get skilled artisans to come to England to introduce new trade. “In venire” translates as “come,” as in, “Come to England.”

            That is why one could not simply award patents for “inventions.” One had to say what was to “come.” The Statute of Monopolies said, “new manufactures.” Things that are made by man.

            1. ‘new manufactures.’ Things that are made by man.

              You mean like software, Ned?

      2. “If I am understanding your comment correctly, this seems to be a nonsensical distinction. A person who creates the light bulb without the knowledge of another person who creates the light bulb is still an inventor of the light bulb (I assume the without knowledge part because your scenario assumes a race to the patent office). The patent would just be determining which inventor of the light bulb got the right to exclude.”

        No. An inventor is the first to make the thing. A person who later independently comes up with the same thing might think he or she is the inventor, but they are mistaken.

        You can’t come up out of your basement today and say you have invented the light bulb. Well, you can, but you would be laughed at. The light bulb has already been invented.

        1. Utter nonsense that ignores reality. Independent invention happens. An inventor is someone who makes a thing without knowledge of that thing derived from another source. A light build can (and likely did) have multiple inventors. That one inventor gets credit or a government granted right is something else entirely.

          And yes, if I was for some reason in a basement and I had no knowledge of light bulbs and I created one (by candle light apparently), I would be an inventor of the light bulb. I probably would not get much acclaim for my feat (other than the stories about by a man living in a light bulbless basement in 2017 that independently came up with a light bulb).

            1. Your definition ignores the legal context.

              Still.

              This is basic Les – one simply does not get to ignore the reality that certain words must be understood in the legal context.

              1. You have made up your legal definition. You have never cited a reference defining inventor with your imagined “legal meaning.”

                AIA is unconstitutional. SAD.

                1. Your second sentence has NOTHING to do with the first (and the legal context of inchoate rights has been present L O N G before the AIA.

                  Les – basics. Learn them.

              2. By the way, even if I’m wrong about the meaning of inventor “in the legal/patent sense,” 37 CFR requires the following?

                1.63 Inventor’s oath or declaration.

                (a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:
                (1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
                (2) Identify the application to which it is directed;
                (3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and

                …That’s because it would be unconstitutional and a violation of the statute to award a patent to someone that did not actually invent it. i.e., someone that was not THE inventor.

                1. THIS

                  does not help you.

                  At all.

                  This is merely that EACH person believes that they are inventors (of their OWN inchoate right).

                  This says NOTHING of the FACT that the race may have many runners.

                  The race has ALWAYS contemplated many runners.

                2. People can and do independently invent things. In that case, they are both inventors. The one that gets to the patent office first is the legally recognized inventor and gets a cookie, but to think that they are the only actual inventor is silly.

                  first-to-“invent” and first-to-file are merely different arbitrary lines that we draw because we don’t want to sort things out in a more complicated way. Often technological development leads to a particular innovation, and multiple people, unknowing to each other, can originate that innovation from their own ingenuity, experimentation, or contrivance.

                3. No. Only the one(s) that do it first are inventors. You can keep operating on your made up definition. But that’s not what inventor means. To invent something, you have to be first.

                4. It shows that you can’t know you are not first and get a patent.

                  It is bizarre that everything else can be equal with the only difference being that you are ignorant of the early invention by someone else, and then you can get a patent…. but there it is….

                  Thanks AIA #ThanksObama

            2. Inventor: a person who invents

              To Invent: to originate or create as a product of one’s own ingenuity, experimentation, or contrivance

              Seems like my definition is the one that meets your dictionary definition.

              1. To Invent: to originate or create as a product of one’s own ingenuity, experimentation, or contrivance.

                Definition of originate
                originated; originating
                transitive verb
                : to give rise to : initiate

                The composer originated 10 songs for the Broadway musical.

                intransitive verb
                : to take or have origin : begin

                That board game originated in the 1940s.

                Definition of create
                created; creating
                transitive verb
                1 : to bring into existence

                … God created the heaven and the earth.—Genesis 1:1 (King James Version)

                2 a : to invest with a new form, office, or rank

                She was created a lieutenant.

                b : to produce or bring about by a course of action or behavior

                Her arrival created a terrible fuss.

                create new jobs

                See also 14.1.1.1

                Q.E.D.

                1. Your Q.E.D. does not make YOUR case.

                  You simply want more than what is legally present or necessary for the given legal context.

                  You are – and remain – in error.

                2. So you are agreeing with me?

                  “To Invent: to originate or create as a product of one’s own ingenuity, experimentation, or contrivance.” That does not contradict my definition. One can, and often does originate or create something as a product of one’s own ingenuity, experimentation, or contrivance when that something was already originated or created by someone else without your knowledge. Nothing in that definition requires that no one else creating the same something out or their own ingenuity, experimentation, or contrivance.

              2. no. Originate. Original. Origin. These all connote the beginning, the start. The first.

                Create is similar. God created the heaven and the earth… There was and can be no second creating.

                1. Yes there can. I can create something and you can create something independently. Inventors are not gods and the knowledge generated does not instantly travel into the minds of all people by the power of divine grace.

                  There is more than one path to the top of Mt. Fuji. Two people can originate an idea. One invention can have multiple origins.

                  The more you argue, the more it starts to sound like you believe in the spark of genius theory of invention.

                2. OSitA,

                  How does “Spark of Genius” apply here?

                  I do not think that “Spark of Genius” itself has the “one AND only one” aspect that a non-legal view of the word is being attempted to be inserted into the legal context.

                3. I am certainly not advocating for it. Rather, I was just making an offhand remark because Les is steeping his argument in biblical talk and that the conception of an invention is a miracle that ripples through our collective minds such that no one else can receive the anointed title of “inventor.”

                4. Les,
                  You are almost correct – but not quite. First, I agree that an “inventor” of a particular invention is by definition the first in time to invent, regardless of whether independent conception of the same invention took place a millisecond later. However, for good constitutional reasons of “promoting the progress,” Congress rightly provided in the patent statute that an inventor that does not timely perfect his/her inchoate right by diligently filing an enabling application may forfeit the right and the patent may be issued to another “inventor” who did. However, in contests on who is to receive the patent, the factual inquiry on this diligence and entitlement determination may span a period of months around the invention dates, making the first to actually conceive – the first inventor – less relevant.

                  That said, these contest circumstances are extremely rare – less than one in 10,000 applications are involved in interference or derivation proceedings. The comment above that “often technological development leads to a particular innovation, and multiple people, unknowing to each other, can originate that innovation from their own ingenuity, experimentation, or contrivance” is factually incorrect – it is not “often” but rare for “that” invention to be a duplicate. These statements are as indefinite and misleading as the statements that “Edison invented the incandescent lamp” or that “Watt invented the steam engine.”

                  The notion of “multiple inventors for the same invention,” or “near-simultaneous invention,” are easily seen as false narratives when one looks closely at what the actual claimed inventions really are. We have debunked the “empirical evidence” purported to show that invention is a “group” phenomenon: See “A Critique of Mark Lemley’s ‘The Myth of the Sole Inventor’” (September 15, 2011). Available at link to ssrn.com .

                5. Ron,

                  Love your work – and debunking Lemley is always a plus, but you try too hard here to make it seem that Les is (even) “almost” correct.

                  He is simply NOT correct – and there is no need whatsoever to put into quotation marks the notion that more than one runner may be partaking in the patent race. (your “However, for good constitutional reasons of ‘promoting the progress,’ Congress rightly provided in the patent statute that an inventor that does not timely perfect his/her inchoate right by diligently filing an enabling application may forfeit the right and the patent may be issued to another [‘inventor’] who did.

                  The very notion of “inchoate right” suffices.

                6. Anon,
                  Les’ statement is “almost” correct because it is correct on the literal meaning of the term “inventor” but incorrect as to that meaning’s effect in patent law, even under the pre-AIA first to invent law.

                7. Experience in Europe’s First to File jurisdiction shows that it is normal and unremarkable for there to be independent invention of much the same contribution to the art at much the same time. The rarity of full-blown interference proceedings does not prove the opposite. Why are there ten times as many litigated patents in Germany than in England? Perhaps because litigation in England costs ten times what it does in Germany?

                  Why is there more heart disease in English-speaking countries? It is certainly not because we are all speaking English, is it?

                  Every patent system needs a functional and efficient way to deal with the norm that occurs in ever hotter and busier technical fields, namely, multiple co-pending Applicants reporting much the same invention, in respective specifications having greater or lesser depth and particularity of disclosure. The interference process is not it.

                8. Ron,

                  The problem is that the literal meaning is not the correct meaning – in the context of patent law.

                  That is the very thing that Les refuses to see (and why he is just not correct).

                  Telling him that he is close only makes it more difficult for him to understand that he is just not correct here.

                  He has refused to acknowledge the context as well as the importance of that context.

                9. MaxDrei,
                  If you read my article linked above, you would see why there are virtually no patentable simultaneous identical inventions. By definition, only patentable inventions – not those employing prior art – are “contributions to the art.” Would you care to provide a citation to actual empirical evidence supporting your contention that ” it is normal and unremarkable for there to be independent invention of much the same contribution to the art at much the same time“? What does it mean “much the same contribution”? at “much the same time”? why do you qualify it? – why not say “the same contribution” at the “same time”?

                  And if those “same contributions” are not on the same time, does “much the same time” mean the same week? the same month? the same year? – why not call the same decade “much the same time”? After all, that is what Lemley did in his article which we debunked.

                  There are specific measures to quantify those “same contributions”- they are called “patentably indistinct” inventions. However, does the EPO issue multiple patents for “patentably indistinct” inventions? – I doubt it. And if it determines that a later applicant claims an invention that is “patentably indistinct” from that in a prior filing, is that latter submission considered patentable? in other words, is it truly a “contribution to the art”? I think the EPO would say “No.”

                  You see, folklore about simultaneous invention is unhelpful; as my article shows, patent law sets things straight.

                10. Ron,

                  The statement from your Abstract of “and show that patent law inherently ensures that patent protection is not extended to near simultaneous inventions” and the more important WHY you are debunking Lemley (and what Lemley aims for) collides with “ROW” and how many non-US aims are simply differently chosen than US aims.

                  For example here (and as MaxDrei has started a new sub-thread up at comment 15), the choice of a Sovereign to empower PHOSITA for any of the various powers that THAT legal entity possesses (to then apply the Sovereign’s choice of law) comes in STARK contrast.

                  The “circle” that MaxDrei shows (and per my comments at 13.1.1 and to Ned at 4.2.1) is simply different than what the US Sovereign has chosen.

                  Notably, the circle that MaxDrei shows DOES provide for a weaker 103 guard, as the actual state of the art is treated differently for the legal fiction of PHOSITA for the US and for Euro.

                  In the US, YOUR statement from your Abstract fits, as the 103 guard applies to the “secret art” for BOTH novelty and obviousness.

                  Per MaxDrei, your statement does NOT fit because the equivalent 103 guard is simply NOT APPLIED.

                  MaxDrei wishes to extol virtue by applying the secret art to novelty – but novelty only. In this sense (as previously I prodded MaxDrei, who refused to engage), the legal fiction curiously can “see” the secret prior art in some instances but somehow can NOT “see” that very same secret prior art in other instances.

                  So while ROW may have chosen (as is their right) this odd combination, the combination is NOT logically consistent.

                  It’s as if MaxDrei’s view reflects a Sovereign choice (for the equivalent of obviousness) to use something other than the PHOSITA already established for novelty.

                  As I note in 4.2.1 – this appears to reflect a lack of consistent focus on the very intention of what PHOSITA is meant to portray: such is NOT meant to portray what any single real world person may be able to ‘do,’ but instead is a super-powered entity meant to capture the actual state of the art. That state of the art – for BOTH novelty AND obviousness contains what has been shared with the Office at the time of that sharing (and not necessarily at the time of some later publication (which is when the ‘real world person’ viewpoint may attach).

                  I have asked MaxDrei for the “logic” of bifurcating this single legal person (with the same aim of “state of the art”) and he has avoided providing any other answer than “I feel” or “that’s what ROW does, and they cannot be wrong.” There has been NO on-point critical reasoning offered FOR what ROW does.

                  This is what I mean by above stating that all MaxDrei has done is show the circle. ANY claim to “virtue” from or for that circle remains an unsubstantiated feeling (albeit proper Sovereign choice).

                  If your engaging MaxDrei (and if he does venture into your debunking of Lemley – and WHY Lemley is pursuing what he pursues) is successful, you have my deepest admiration.

                11. Please Pardon Potential (re)Post:

                  Ron,

                  The statement from your Abstract of “and show that patent law inherently ensures that patent protection is not extended to near simultaneous inventions” and the more important WHY you are debunking Lemley (and what Lemley aims for) collides with “ROW” and how many non-US aims are simply differently chosen than US aims.

                  For example here (and as MaxDrei has started a new sub-thread up at comment 15), the choice of a Sovereign to empower PHOSITA for any of the various powers that THAT legal entity possesses (to then apply the Sovereign’s choice of law) comes in STARK contrast.

                  The “circle” that MaxDrei shows (and per my comments at 13.1.1 and to Ned at 4.2.1) is simply different than what the US Sovereign has chosen.

                  Notably, the circle that MaxDrei shows DOES provide for a weaker 103 guard, as the actual state of the art is treated differently for the legal fiction of PHOSITA for the US and for Euro.

                  In the US, YOUR statement from your Abstract fits, as the 103 guard applies to the “secret art” for BOTH novelty and obviousness.

                  Per MaxDrei, your statement does NOT fit because the equivalent 103 guard is simply NOT APPLIED.

                  MaxDrei wishes to extol virtue by applying the secret art to novelty – but novelty only. In this sense (as previously I prodded MaxDrei, who refused to engage), the legal fiction curiously can “see” the secret prior art in some instances but somehow can NOT “see” that very same secret prior art in other instances.

                  So while ROW may have chosen (as is their right) this odd combination, the combination is NOT logically consistent.

                  It’s as if MaxDrei’s view reflects a Sovereign choice (for the equivalent of obviousness) to use something other than the PHOSITA already established for novelty.

                  As I note in 4.2.1 – this appears to reflect a lack of consistent focus on the very intention of what PHOSITA is meant to portray: such is NOT meant to portray what any single real world person may be able to ‘do,’ but instead is a super-powered entity meant to capture the actual state of the art. That state of the art – for BOTH novelty AND obviousness contains what has been shared with the Office at the time of that sharing (and not necessarily at the time of some later publication (which is when the ‘real world person’ viewpoint may attach).

                  I have asked MaxDrei for the “logic” of bifurcating this single legal person (with the same aim of “state of the art”) and he has avoided providing any other answer than “I feel” or “that’s what ROW does, and they cannot be wrong.” There has been NO on-point critical reasoning offered FOR what ROW does.

                  This is what I mean by above stating that all MaxDrei has done is show the circle. ANY claim to “virtue” from or for that circle remains an unsubstantiated feeling (albeit proper Sovereign choice).

                  If your engaging MaxDrei (and if he does venture into your debunking of Lemley – and WHY Lemley is pursuing what he pursues) is successful, you have my deepest admiration.

      3. The AIA provides a derivation system for someone claiming their invention was stolen and filed on earlier by someone else. So far not one such derivation case has been initiated.

        As O.S. notes, it has always been the case that if you invent something, and keep it a secret, the patent system does what it is intended to do – it rewards anyone else who independently also invents it and does file a patent application on it instead of keeping it secret.

        1. That’s part of the “stick” aspect of the “carrot and stick” approach to having a strong patent system.

          Spare the rod, spoil the child.

  4. It makes sense following KSR’s expansion of obviousness that there should be some contraction in the form of limiting what the person of “ordinary” creativity would do, since we are now apparently considering real world features of the hypothetical person. That person should be constrained by the actual knowledge available, and could not be aware of secret prior art. However, it’s also reasonable that secret prior art is useful in analyzing close call cases because it tends to shows market forces at play, as well as indicating obviousness of the disclosed elements.

    1. Not sure, IIT, about the logic of arguing that subject matter is obvious because people are filing patent applications on it. A bit dodgy, that inference, don’t you think?

      And your other point, invoking “market forces” to decide whether or not any given claimed subject matter is technically “obvious”. Not sure about that either. Let’s not muddle what’s financially obvious with what is technically obvious.

      Have you got anything else, to justify using secret prior art in the obviousness attack?

      Ned says it is to provide the inventor with adequate “protection” against all those who file later at the PTO. Under a FtF regime, I say, it’s much more than adequate. Earlier filers do not need protecting from later filers. The AIA 102, as currently construed, is giving you turbo-charged FtF. Normal strength FtF is quite enough. To tip the scales so far in favour of the First Filer is to upset the balance of legal forces as between i) the leading bulk filing corporate patent holder and ii) everybody else. This is not in the public interest. Congress (or the courts) should step in.

      1. Have you got anything else, to justify using secret prior art in the obviousness attack?

        Ever asking questions when answered have been presented to you….

        I notice that you repeat Ned’s point (which you do not agree with), but you avoid all of the other points presented to you over time.

        A “mind willing to learn” is NOT in evidence in how you post, MaxDrei – and never has been.

        Rather, what I see is the same old same old, thinly veneered “You should do it the Euro way” proselytizing.

          1. Feel free to add some (any) substance to your comment Ben.

            Otherwise, all your comment does is come across as sour grapes from all the times I have deconstructed your views.

  5. Unless the AIA patent statute is ambiguous on this issue [and I do not see AIA 102(a)(2) vs. 102(a)(1) as ambiguous on this issue] why would the old Hazeltine decision [on a much older patent statute], or public policy arguments, have enough relevance to this alleged legal issue to even make it validly appealable to the Fed. Cir.?

  6. Only if you put a question mark upside down before you ask the question.

  7. The Hazeltine Court: “Had the Patent Office acted faster, had it issued Wallace’s patent two months earlier, there would have been no question here.”

    Based on this logic, we should soon find defendants argue, and a court that will agree, by consistently applying Hazeltine to redefine published prior art date to be the author’s manuscript submission date to the publisher:

    “Had the [publisher] acted faster, had it [published] the author’s article] two months earlier, there would have been no question here.”

    Is it time to repeal Hazeltine? The salutory effects would be very significant as the public pressure on the PTO to reduce pendency, particularly of non-published applications, would be fiercer.

    1. I think that it would be all to the good if the Congress were to revise the statute to do away with “secret” prior art for obviousness purposes. Honestly, thought, that is somewhat far down on the list of urgent priorities in need of Congressional attention in patent law. The Mayo/Alice rot is doing much more tangible damage than the lingering effects of Hazeltine ever could.

      1. Meanwhile, fixing the IPR system after the Court strikes it down will also require significant Congressional bandwidth, and that would be a much more urgent use of Congressional resources than a Hazeltine fix.

    2. Ron, confine Hazeltine to its facts. It applies only to applications that issue as patent. It does not apply to 119-type priority.

      1. Or to applications that are published with an 18-month delay.

        1. Ned, did you mean “applications that are published with ONLY an 18-month delay?

          Hazeltine was was before even “compact prosecution.” Back when endless serial amendments, with endless free new claims, and long application secrecy, was not unusual.

          1. endless serial amendments, with endless free new claims, and long application secrecy, was not unusual.

            Perhaps NOT “not unusual,” but with the option still open to applicants (vis a vis a non-publication request), the situation you describe (albeit in a gloss of negativity) STILL EXISTS.

          2. Paul, I know it seems odd to say that the patent could have issued the day it was filed but for patent office delays. The Commissioner was statutorily required to examine a patent, and that requirement could not possibly be executed in one day.

            So the underlying the factual premise of the Supreme Court in Haseltine is a bit of nonsense.

              1. Anon, if I understand you correctly, prior art should be prior to the invention by the inventor. Otherwise it is not prior art.

                Furthermore, whether non-published art should be legally available depends on the policy choices. The policy choices are two: protect the public, and protect the first inventor, or the first filer depending on the system, from a later inventor obtaining a patent on the first inventor’s or the first filer’s invention.

                Deeming secret subject matter prior art not only is unnecessary to protect the public, it overly protects the first inventor (or the first filer) as observed by Max. It is bad policy. That is why nobody else in the world has adopted such a system. We are again out of step with the rest of the world.

                1. perhaps salvaged…

                  Your comment is awaiting moderation.
                  December 15, 2017 at 1:55 pm
                  “Furthermore, whether”

                  Return to first principles BEFORE you chase your Windmills Ned.

                  Try reading my post at 4.2.1 again – you clearly have NOT grasped the words there.

                  Whether or not we are “out of step” with ROW has ZERO meaning. We do NOT live in any sense of a “One World Order” and our sovereign has decided differently than ROW.

      2. Yes, but does that logic applies only to “its facts”? Judicial decisions are applicable based on their logic, reasoned analysis and inferences; and they are often carried to other fact-patterns that meet the same logical criteria. I do not think that the Court provided any explanation that would limit its conclusion to publications by the PTO and not to other publishers.

  8. I sometimes wish that we would ascribe to the PHOSITA really weird—almost paranormal—abilities (e.g., the PHOSITA is aware of every thought that has ever been thunk up in human history up until the day before filing). This would have the salutary effect of forcing people to remember that the the PHOSITA is totally fictional. Much mischief occurs in patent law when people starting thinking of the PHOSITA as if she actually exists, or as if there are “people of ordinary skill” actually at work in the world.

    One occasionally encounters a participant on this blog speaking of “people of ordinary skill.” This sort of language betrays that the person speaking does not understand the first thing about patent law. Not only are there not more than one PHOSITA alive in the world, there is not even one.

    1. Indeed. Otherwise could not every expert declaration or deposition in every patent case be challenged for not personally being by a person of mere ordinary skill in the art and making hearsay allegations about what those other, mere ordinary skill, persons knew as of the subject filing date?

    2. Good point. Take England, for example. According to its specialist patent judges, depending on the facts, the hypothetical person might be one for obviousness and a different one for sufficiency of disclosure. Further, the hypothetical technical specialist real life reader of the patent is deemed to have some basic knowledge of how to read a patent, such as what are the respective functions of the specification and claims.

    3. I don’t know about PHOSITA, but ordinary squirrels in the art have the ability transmute load bearing walls into donuts with their mind.

      1. Excellent. This is the kind of power I want to see in a PHOSITA! :)

      2. Yes, some patent litigators have an amazing ability to “interpret” claims so broadly as to be able to sue amazing number of companies for infringement, unless and until ended by a Markman claim interpretation.

    4. What would solve the issue even faster is for congress to make explicit mention of the imaginary man being imaginary in the fraking statute so that everyone would be clear as to the legal farce occurring day in and day out.

  9. AIA 102(a)(2) is a different and independent paragraph from 102(a)(1). Only
    102(a)(1) has the “or otherwise available to to the public” language.

  10. I admire your diligence in trying to make the double question mark a part of English language punctuation. I am going to follow your example, and start using it myself.

    1. Someone should invent an app for that

  11. Interesting

    1. patent applications by definition are to include that which is NEW and unobvious
    2. applicants generally believe 1 when they file
    3. applicants are generally persons having “extra” ordinary skill… they are inventors

    these premises imply interesting conclusions

    1. The “extra” becomes state of the art (except to the inventor) when submitted (and subsequently published).

      Extra, of course, being not science fiction.

  12. The logic of applying secret prior art (a first application) in an obviousness analysis to a later application when that art is from a third party, and (if continuation status is claimed) not when it is from the inventor of the later application does appear strange.
    In the first case the inventor has no idea of the secret prior art and is held to an obviousness standard applied by the mythical construct PHOSITA.
    In the second case PHOSITA is thrown out of the window and the inventor of the later application is, in effect, held to be ignorant of the first application.
    It is this incongruity/unfairness that causes many Europeans to be strident in arguing that anti-self collision principles are – unprincipled.

    1. That self-collision protection is a bit more limited than what you portray here.

  13. The term “secret” prior art is an oxymoron, and Haseltine never made sense to me and still doesn’t. You can’t know what hasn’t been published. Period.

    The policy issue at play here arises with the possibility of two entities being granted a patent on the same thing if the later applicant is allowed to receive a patent because he filed his application after the first applicant but before publication of the first application. Hence the very sensible practice in the EPO (and elsewhere) that if A’s application is entitled to an earlier priority date than B’s application, but only published after the priority date of B’s application, A’s application can be cited against B’s application for purposes of novelty but not inventive step. B can get claims that are obvious in view of A’s application, but he can’t get claims on the same thing.

    Note that under the EPO scheme, which was developed in a 20-years-from-earliest-filing-date, 18-month-from-earlier-priority-date-publication system, a later-filed application with claims that are obvious over an earlier application can only extend about 18 months beyond the expiration of the earlier patent. Evidently, in weighing the trade-off between granting exclusivity to a second party versus encouraging additional research, this 18 months isn’t considered by the EPO to be onerous.

    In contrast, under old US 17-years-from-grant law, one can envision a much longer period of additional exclusivity being granted, as the dates of issuance of the first patent and the second patent (the latter having claims that would have been obvious over the earlier patent, had the earlier patent been published before the priority date for the second patent) could be many years apart, especially given the existence of continuation practice under the 17-years-from-grant system. So perhaps it could be argued that the *policy* under Haseltine made sense for its day, even if couching it in terms of “prior art” was a mistake.

    At any rate, I don’t see how it can be asserted that under the system now in place in the US, viz. 20-years-from-earliest-priority and 18-month publication, it makes sense for courts to continue with the strange logic of Haseltine.

    1. You can’t know what hasn’t been published. Period.

      You – as a real person – is NOT the focus.

    2. The policy behind prohibiting the patenting of obvious variations knowledge that is already in the public domain is to prevent withdrawing from the public that which it already has.

      The policy behind prohibiting the patenting of obvious variations another’s invention, disclosed in a filed application, but yet to be made public is to protect the first inventor.

      The policy behind prohibiting the patenting of an invention disclosed in an earlier-filed application of another is to protect the first filer.

      1. Your policies here do not address my comments about who the focus is for any of these items of art.

        Hint: NOT real people (inventors, filers or otherwise).

        Second Hint: the legal fictional person called Person Having Ordinary Skill In The Art.

        When one loses sight of this critical focus, all kinds of “feelings” creep into the discussion.

      2. Ned, I agree with your first and third para but cavil at your second. The first filer F1 gets enough protection when each and every later filer F2, F3 etc is required to demonstrate, in every one of their proffered claims, clean novelty over every last little bit of (enabled) disclosure in F1’s earler filing.

        Any more “protection” than that gives F1 too much “protection” and fails to strike a fair compromise between rival innovators who all file on much the same subject matter around much the same date. Each filer’s sponsor has invested a heap of money in a genuine invention, in 100% good faith that they have done everything to deserve a patent of a scope commensurate with their respective contribution to the art.

        Incidentally, the PHOSITA is a legal construct so the legislator is free to imbue it with as much or as little knowledge as it pleases. Best choose in a way that preserves the credibility of patent law amongst business people, investors, pols, engineers and scientists, eh? Or are such considerations “scheiss egal” to members of The Congress?

        The model chosen by those who wrote the EPC for the multitudinous jurisdictions of Europe was to imbue the notional skilled person with all the knowledge that an absolutely diligent member of the public could have gathered “by written or oral description, by use or in any other way” while witholding from the PHOSITA all the knowledge that, regardless of the degree of diligence inputted, was beyond anybody’s power to acquire.

        What definition of the PHOSITA is more sensible and objective and fair than that? Hence the AIS’s use of the words “made available”.

        1. Not “AIS”. Typo. I meant “AIA”. Of course.

        2. Incidentally, the PHOSITA is a legal construct so the legislator is free to imbue it with as much or as little knowledge as it pleases. Best choose in a way that preserves the credibility of patent law amongst business people, investors, pols, engineers and scientists, eh?

          I agree with this, but this does not get Prof. Crouch as far as he is trying to go. He contends that “by definition, information only available in a secret patent filing at the PTO would not be known to this mythic POSITA.” This is total non sequitur. The PHOSITA, as you say, is a legal construct, so we can impute to this mythical personage any knowledge we care to. It would be entirely rational (if not at all prudent) to say that the PHOSITA is aware of absolutely every idea reduced to writing on the day before filing—even private writings in sealed envelopes locked in confidential filing cabinets. Therefore, there is nothing definitional about Dr. PHOSITA that should exclude her from knowing the contents of confidential patent applications.

          The problem, of course, is that the legislature never specified any characteristics of the PHOSITA. Congress is perfectly free to specify what knowledge should be imputed to Dr. PHOSITA, but Congress has not done so. In the absence of Congressional precision, the ordinary workings of stare decisis in our legal system requires that the PHOSITA continue to hold the attributes historically ascribed to her. I would welcome a change by Congress to make the PHOSITA to function here as she does in the EPO, but until Congress does so, the law here must be that the PHOSITA knows about everything filed with the PTO that happens eventually to publish.

          That is not ideal, to be sure, but given that Congress did not revise the statute to change the attributes of the PHOSITA, she must continue on as she has been.

        3. Hence the AIS’s use of the words “made available”.

          Two points.

          (1) The AIA §102 does not say “made available.” It says “otherwise available.” This is a small point, but if you are going to use quotation marks, you should reproduce the words exactly as they appear.

          (2) The words “otherwise available” appear in §102(a)(1). The provisions dealing with filing-date art appear in §102(a)(2). In other words, the “available” language has nothing to do with the part of the statute that is actually relevant to the present discussion in any event.

          1. Thanks for that Greg. I have in the meantime printed out some USPTO pages, to read up on the subject.

  14. And, almost by definition, information only available in a secret patent filing at the PTO would not be known to this mythic POSITA.

    Do you want to support that.

    With anything?

    1. In a lot of cases I have to say that I pretty much agree with the statement regardless of whether there is something to “support that” with.

      In several cases I deal with we’d be talking about obscure technical details, say a composition for a material, or some sort of special property of some combo or something.

      But, so long as POSITA is mythic and purely an imaginary creature then lawl makers get to do with them as they please with legal fictions and all that.

      Is that really fair? Meh, probably not.

  15. The rationale provided by the Supreme Court in Haseltine certainly does not apply to the situation where priority is claimed under 119 either to a provisional or to a foreign application. The inventor has not done all he could they have’s patent issued but for patent office delays.

    This rationale applies only to non-provisional applications and I would argue only to the extent the applicant requests immediate publication and pays for it.

  16. This approach of applying secret prior art is nonsensical. How could it be obvious to a POSITA to combine a known reference A with an unknown reference B? It is impossible. It cannot be obvious on the whole at the time of the invention/filing. Sounds like a measure to include in the upcoming US Inventor Act.

    1. Known – by whom?

      Awfully easy to forget that PHOSITA is not a real person, is it?

      Awfully easy to forget that the legal fiction is solely to show “the state of the art” – regardless of ANY actual “possibility,” eh?

      You know, things like near-omniscience – and with the AIA that power extends to all countries all languages all (catalogued) libraries…

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