by Dennis Crouch
Helsinn Healthcare v. Teva Pharma (Supreme Court 2018) [Helsinn cert petition]
Helsinn has now filed its much anticipated petition for writ of certiorari focusing on the question of how exactly the 2011 AIA changed the “on sale bar.”
Question Presented:
Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
The well drafted petition from Williams & Connolly top Supreme Court lawyer Kannon Shanmugam has a good shot of being granted — especially if supported by a strong amicus brief from the Federal Government. The difficulty here is that the petition asks the Supreme Court to shed an approach it has developed over the past 200 years without (in my view) a clear statutory statement from Congress.
Prior to the AIA, the On Sale Bar prevented the patenting of inventions that had been on-sale more than one year before the application’s filing date. 35 U.S.C. 102(b). Pre-AIA, on sale activities include non-enabling secret offers to sell the invention (so long as the invention was otherwise ready-for-patenting). Because most companies outsource elements of product development and manufacture — the rule has created potential for trapping the unwary.
I will return to this in a separate post, but the basic statutory question is whether the statutory revision eliminates secret or non-enabling sales (or some aspect thereof) from the scope of prior art.
Pre-AIA 102: A person shall be entitled to a patent unless … (b) the invention was … on sale in this country [before the critical date]
Post-AIA 102: A person shall be entitled to a patent unless . . . (1) the claimed invention was … on sale, or otherwise available to the public before the [critical date]
The statutory hook is the “otherwise available to the public” clause that the patentee here argues should be seen as also limiting the scope of the on sale bar to only include publicly available sales activity. This statutory hook is coupled with supporting evidence from the AIA’s passage and about making prior art is coupled with the USPTO’s interpretation of the statute in accord with Helsinn’s approach.
One of the things the AIA repealed was 102(f) in order to overturn OddzOn products. Somehow, the powers behind the AIA thought this case was wrongly decided when the fact it was properly decided. We need OddzOn products.
I have been involved situations where consultants and even patent attorneys were made familiar with existing processes that were secret. What they do? Even while 102(f) was still in place, they patented variations of these secret process. If such processes are not prior art to such faithless consultants, those patents are valid.
It simply has to be that secret processes known to inventors – particularly hostile inventors – must be prior art to those inventors.
So why did the powers that be removed 102(f) as a source of prior art given its seeming necessity? I don’t have a clue. The talk about transparency etc. A lot of smoke screens. The patent bar and Congress were not well served by these folks.
I’m also fairly sure that in England where it was determined that a process was widely practiced, it made no difference that individual firms kept the subject confidential. It was considered to be in public use. I don’t see why the same should not be the case in the United States.
Even if a process is not publicly known, practitioners of the process prior to the patent should not be liable for infringement. There should have been equitable intervening rights even before section 273 was passed.
Also, MM makes a great point. It is beyond unethical for one to try to figure out, perhaps because actually know, what industry is doing and secret and then file patent applications on that for the purposes of asserting the patent against them. That as another reason why we need prior user rights.
But again, I think that if a process is a widespread but secret use it is in fact in “public” use. I further think that a patent based upon an invention that is not one’s own should be invalid. Such people are hardly inventors, but more are like pirates and should be punished, if not imprisoned.
Your “simply has to be” is not.
I “get” that you do not like this.
Talk to your Congressman, Senator, or both.
“ The patent bar and Congress were not well served by these folks.”
Pretty much applies to most all of the AIA.
“ I don’t see why the same should not be the case in the United States. ”
Because our Sovereign has chosen differently. Please stop trying to make the US into an “England-lite.” We chose differently (now and more critically, at the start of this country) for good reasons that you would be better served understanding and accepting even though they may conflict with your personal (anti-deistic) views.
“Even if a process is not publicly known, practitioners of the process prior to the patent should not be liable for infringement.”
Most definitely NOT – spare the rod and all that. The best (and appropriately strong) patent system employs BOTH a carrot and a stick approach.
There simply is NO appropriate reason for Prior User Rights.
None.
“But again, I think that if a process is a widespread but secret use it is in fact in “public” use.”
That too is just not what Congress has stated.
Again, talk to your Congressman, Senator, or both.
“further think that a patent based upon an invention that is not one’s own should be invalid. Such people are hardly inventors,…”
Where (and how) would you draw the line on “Improvement Inventions?” We already have protection against true fraud on the Office. We is it that you would think that more is needed?
anon, when a purported inventor actually is filing on the invention of another he cannot provide a proper declaration without committing perjury. I would hope that any court would find any patent issued on such a declaration unenforceable.
But, what about obvious variations? It seems to me the declaration is not a lie and the patent is valid unless the prior invention/secret use is prior art.
“anon, when a purported inventor actually is filing on the invention of another he cannot provide a proper declaration without committing perjury. I would hope that any court would find any patent issued on such a declaration unenforceable.”
Thanks for repeating back to me my point to you.
“But, what about obvious variations? It seems to me the declaration is not a lie and the patent is valid unless the prior invention/secret use is prior art.”
What about it? If, – as you state – the declaration is not a lie, then what exactly are you complaining about? Your notion of “obvious variation” appears to (purposefully) disassociate from the legal meaning of obviousness. It matters not at all – not one whit – how much an improvement an invention is over something secret, as the choice to keep that initial matter secret carries that risk – and always appropriately did so under a strong patent system.
Choosing NOT to share and attempting to penalize anyone choosing to share (keeping in mind your admission that the term of inventor properly holds) is anathema to the very purpose of having a patent system.
As I have stated in other places, I begrudge no one the choice to go the Trade Secret path. But when you start elevating that path OVER the patent path, then I have some serious reservations about your true intent.
Ned, yes, those situations can occur, if application filing is avoided or delayed. But, AIA patents still require correct inventor designations, including joint inventors, and inventorship oaths, for what is being claimed. Also there could be a IC issue for asserting to the PTO patentable novelty in claim features or claim elements not original to, or contributed by, any of the named inventors.
If the disclosure of a trade secret to a contractor or consultant was pursuant to a confidentiality agreement there is trade secret law recourse. If the disclosure was made without any express or implied confidentiality agreement the trade secrecy was being blown anyway.
Paul, I know there are breach of contract remedies for disclosing a trade secret. But if the ex employee/consultant/patent attorney files on an obvious variation, there may be no contract or trade secret remedy. That is why OddzOn was and still is so necessary.
Why is disclosing someone else’s trade secret in a patent specification which is publicly disclosed NOT both a breach of a confidentiality contract AND a trade secret law damages case?
Paul, if what is disclosed and claimed is an obvious variation of what is being used by the principal, then what is disclosed is not the trade secret property of the principal. Of course, without that background process being public or prior art to the applicant under 102(f), the variation would not be obvious over that which is publicly known.
I have carefully limited my remarks to variations not in use by the principal, but which may be on their road map even if they do not appreciate it yet.
Recall the Japanese use to do this to foreign company patents — surround them on all sides with patents on obvious variations so that the company eventually would have to deal with the Japanese.
Ned,
You cannot have it both ways.
The item shared either IS a Trade Secret violation, of the Trade Secret holder has no legitimate course of action against the (even just a obvious** variant) other inventor.
Further, you continue to attempt to use the word “obvious” improperly. There is no such legal thing as an obvious variant of something that could not on its own serve as obvious (as the proper legal understanding of that term bears) to the other inventor.
This is a just and due risk of NOT sharing and choosing the Trade Secret path.
“Surround” patenting was a different situation, in which pending, unpublished, applications filed in Japan [based on U.S. parents] were allegedly disclosed to Japanese competitors by their MITI agency before their publication and filed-on before those publications. In one E.K. case a “surround” improvement patent even copied a mistake in the unpublished application. In other cases the U.S. and Japanese companies had joint ventures and the base invention was disclosed to the joint venture partner before filing.
“Recall the Japanese use to do this to foreign company patents — surround them on all sides with patents on obvious variations so that the company eventually would have to deal with the Japanese.”
And this is a perfectly legitimate exercise.
What then is your problem?
Ned and I have been discussing in this thread trade secrets and PUR, in the context of inventions of interest to national defence.
Ned are you aware of the very long-standing NATO Agreement that allows patenting throughout the NATO area, while keeping as a secret (even till after the patent expires) the subject matter of the patent? Does that not assuage your concerns?
If not, here’s a link:
link to en.wikipedia.org
MaxDrei,
You overstate what is being allowed. (hint: what is being allowed is the cross-alliance-nation filing – the actual grant and use thereof remains constrained by any one nation’s secrecy orders)
A deeper link is: link to treaties.un.org
The more you post, MaxDrei, the more apparent it is that you have no actual experience in these types of matters.
Didn’t know this.
Neither did MaxDrei (and here, I am talking about what the treaty actually states, as provided by my deeper link)
Meanwhile: “Pharma Bro” Martin Shkreli admitted that he was “very far from blameless” in a letter to a judge asking for leniency, according to court filings. “I was wrong, I was a fool. I should have known better,” Shkreli wrote in his letter to Brooklyn federal court Judge Kiyo Matsumoto. “I accept the fact that I made serious mistakes, but I still believe that I am a good person with much potential,” Shkreli said.
Hey, Martin, you can always write patent articles for Big Jeans’ blog, even in prison. Or maybe start your own. You can call it “The Broken Scoreboard”.
You associated the “broken scoreboard” in an entirely dishonest manner, as that person has never referenced the concept.
This is yet another flavor of the all too typical Accuse Others, being YOU are at least as dishonest as the person (Shkreli) you are attempting to pan.
You associated the “broken scoreboard” in an entirely dishonest manner,
Not at all because Martin Shkreli and you have a lot in common, “anon.” More than you’ll ever be able to understand … unless you get some really expensive therapy which you can’t afford because you’re professional incompetence is so severe.
perhaps freed from the filter:
Your comment is awaiting moderation.
March 6, 2018 at 8:37 am
“Not at all because Martin Shkreli and you have a lot in common, “anon.” ”
Utter B$ – and as pointed out, it is YOU and Shkreli that have that “lot in common.”
And there is no need for any therapy of any kind (expensive of otherwise) to see your Accuse Others meme in action.
Man, does it s u c k to be you.
This issue was first debated by Arkwright as justification for his non disclosure of the secrets of his carding machine, a technology that made England an economic powerhouse at the time: Whether the national interest requires that significant technical advances that put the nation into economic leadership be treated as national secrets or published that the world might use them in competition.
The English courts were unimpressed with the argument and invalidated his patent. I still think Arkwright had a point and that we should consider some way to keep such technology secret. Obviously, new manufactures and machines can be reversed-engineered justifying a patent system to protect such. But, manufacturing technology is entirely different.
Your “issue” is NOT the issue before the Court here.
anon, but it was raised in the discussion: trade secret vs. patent protection vs. prior user rights. There is another issue and I raise it here. It is the same reason we must impose tariffs on steel and aluminum: to maintain a national industry. Those who do not understand the national security implications, but only argue economics, are the problem.
I understand that there is more TO “the issue” than merely the legal issue at hand.
But that does not mean that your insertion of other “legal” wrinkles is on point.
Specifically, the legal point that you present from Arkwright will only lead to confusion of the actual legal point here.
Yes, other aspects are important (and note as well that I also discuss the other aspects). But I do not use those other aspects as a dust-kicking on the particular legal point.
In fact, if you bothered to read my posts with any sense of openness, you would see that my points form a cohesive view, not only of the legal point directly at issue, but also as to the proper legal position of the accompanying topics.
It is (often) as you may MIS-interpret the point at hand, and then use your selective historical remembrances (while omitting critical items particular to the US experience) that you end up doubling down on being not only off-point, but remain off on the actual legal point at hand.
“anon” my points form a cohesive view
LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
It’s cwazee time, folks!
LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
More mindless and hominem…
Arkwright erred on by putting the cart before the horse. He should have negotiated non publication (or restricted publication) before he got his patent or before his specification was accepted.
From a recent article written about Arkwright, it appears the British Crown did in fact prohibit the export of carding technology at some point in time. This might be considered a Pyrrhic victory of sorts by Arkwright.
“anon”: the “smarter” play would be to not devastate the patent directly
Who on earth cares about a patent being “devastated”?
Hardly anybody owns them and that’s always going to be the case.
Someone’s patent gets tanked by some prior art that they weren’t aware of … oh noes! BFD. Happens all the time. The difference with secret prior use is that the fruits of the technology are actually in hands of the public *and* the public is free to practice the “secret” process after it reverse engineers or arrives at the process independently.
So who cares about “the patent”? I mean other than low rent patent attorneys like yourself who need every last ounce of work they can scrounge up because they would otherwise be outcompeted in the attorney marketplace. Why should anyone except the patentee be bothered because a patent was “devastated” by the discovery that someone else was already practicing the claimed method?
Please tell everyone without invoking your and Ron’s ridiculously self-serving and transparent b.s. that “nobody will innovate and nobody will invest” unless you get your way. Go for it, guys!
Note that I’m not suggesting that there is not, somewhere, a compelling argument for the result you seek. But you aren’t making it. And lurking in the background is the obvious fact that, waiting in the wings, as always, is this group of well-heeled ethically bankrupt rent-seeking scriveners who file applications based on what they assume BigCorp is doing.
The answer to your question of “who cares” is already in the post.
As to the rest of your rant, there is nothing there but your usual screed.
Ron Katznelson, cracking me up:
Paul and Max, have you ever sat in an investor presentation where a patent holder for a new powerful process that solves a long-recognized problem seeks an investment in his technology?
News flash, folks: Ron has never sat in one of these meetings either, as far as anybody can tell. But he loves waxing on about it! Mmmmmm, “investors”. “Powerful process.” So exciting!
C’mon, kids, let’s make sure Ron continues to have as much as possible. More patents for everybody! Crank it up to eleven! It’s all about him.
Kind of you, MM, to show us that quote from Ron. I laughed too. Ron fantasizes about investors piling in, and then suing for infringement a BigCorp who has been basing its profits on Ron’s invention for years prior to Ron’s priority date.
Ron dreams that he’s going to identify and move against the infringing acts committed after his patent issues, when the same acts that happened before his filing date are totally invisible to him.
Ron supposes that when a potential investor muses to him that BigCorp might have been aware of Ron’s invention for years, the Investor’s thought is not that there are infringers out there to be milked but rather that i) BigCorp might already have done the work to establish that Ron’s invention is, sadly, a lemon and that ii) Ron’s specification falls short of an enabling disclosure how to commercialize the invention profitably.
Ron, you can take this as another “insult” from me, if it pleases you to do so. Feel free.
I have to warn you, gentle reader, as to PUR in a FtF landscape, beware of know-it-all Chickens Little running around, squawking that the sky is about to fall in. But it’s entertaining, I’ll give them that.
Mmm – enjoy “the swagger”
Max, you make good point here I make another point at post 9 and would like your comment on that.
But on this point, the Supreme Court in Kewanee Oil upheld the constitutionality of state trade secret protection because a decision to keep a process secret would run the risk that a third party might discover and patent the secret and eventually move against the original inventor. Thus regardless of the risk or nonrisk taken by the startup, it is the fact that they exist which is important to the Supreme Court. Remove the risk of third-party patenting of a trade secret by prior user rights, and the reasoning of the Supreme Court in Kewanee Oil would suggest that a trade secret protection would be unconstitutional.
The alternative argument would be that the recent trade secrets act and the authorization of prior user rights expresses the policy of Congress in favor of trade secret protection which the Supreme Court would respect absent some mandate by the Constitution itself.
Ned, I hardly know where to start, in addressing your invitation to discourse on national security.
The UK Patents Act has a complete chapter of provisions about Government use of patented inventions “for the services of the Crown”. Then there is the NATO Agreement on the mutual safeguarding of inventions of defence interest. More recently, there is the current activity in Germany to address the problem that China has acquired the national champion in robotics manufacturing. At what point does a NATO member veto share dealing in industries relevant to national defence?
The Crown User provisions allow HMG to use patented inventions for the services of the Crown, and pay compensation afterwards. The Nato Agreement allows HMG to impose secrecy on patents, if necessary indefinitely.
Serious people have chewed through these issues ages ago. The UK statute with all this stuff, these finely tuned and proportionate checks and balances in it was enacted in 1949, long before patent law got sexy, and interesting for the carpetbaggers. Even the 1973 belongs to the time when patent law written by experts, undisturbed by the monetarizers and creative accountants.
“1949, long before patent law got sexy, and interesting for the carpetbaggers”
Wow – that is an ignorant statement on so many levels.
“anon” that is an ignorant statement on so many levels.
Please identify just three of these “many levels,” Billy.
The year,
The reference to carpetbaggers,
Patent law has always been “sexy”
The US also focuses on military, space and nuclear technology. Encryption is right up there, on the top. But clearly, the German initiative regarding robotics seems to shine a light on technology critical to German manufacturing that needs to be husbanded.
Suppose, for the sake of argument, that I was the inventor of a new method of making silicon-carbide, the next gen substrate for integrated circuits. This technology may actually be critical to the manufacture of ICs in the future. The problem I see in seeking patent protection is that a patent application publication instructs the entire world while protection is national. I sorely wish there was some way I could delay publication of the US specification until after the eventual US patent expires. I know already that international protection without publication is impossible.
Then again, it is not up to me, the inventor, to create national policy, but to abide by it. But it certainly seems to me that the US Congress should address the issue of national security more broadly than just military, space and nuclear technology. I would think the technology behind the manufacturing of integrated circuits to be right up there as something that should not be shared outside the US.
Ned see my #11 above. You write that international protection without publication is “impossible”. That simply isn’t so. See, people had thought of that, and devised a solution, back in 1960.
“and the reasoning of the Supreme Court in Kewanee Oil would suggest that a trade secret protection would be unconstitutional.”
Even with my “Ned-IMHO” glasses on, I cannot see even this in that case.
Where do you see any support for such a statement?
anon, “We conclude that the extension of trade secret protection to clearly patentable inventions does not conflict with the patent policy of disclosure. Perhaps because trade secret law does not produce any positive effects in the area of clearly patentable inventions, as opposed to the beneficial effects resulting from trade secret protection in the areas of the doubtfully patentable and the clearly unpatentable inventions, it has been suggested that partial pre-emption may be appropriate, and that courts should refuse to apply trade secret protection to inventions which the holder should have patented, and which would have been, thereby, disclosed.[20] However, since there is no real possibility that trade secret law will conflict with the federal policy favoring disclosure of clearly patentable inventions partial pre-emption is inappropriate. ”
The assumption made is that trade secret protection is weak because it does not prevent independent invention which the court deemed highly likely thereby forcing the inventor to seek a patent to enjoy exclusivity. Today, with the advance in protection of trade secrets, I am not so sure that trade secret protection is not sufficient. I am also not convince that others can invent secret processes all that quickly.
Just for example, why is it that it takes countries like Iran or Pakistan or India that do not have access to the data and techniques developed by the Manhattan Project, many decades to build an atom bomb? With enough security, trade secret protection can keep fundamental advances from rapidly spreading.
“when the same acts that happened before his filing date are totally invisible to him.”
Max, you mentioned that prior use rights are infrequently an issue, but didn’t really provide a reason why they should be protected. At a minimum, PUR lessen the motivation to disclose ASAP. Under a system without PUR, anyone can protect themselves for free by publishing on the net a description of their process. So why should PUR be observed?
Arrrghhh!
Ben, please. Use some common sense man.
Not particularily persausive, Ned.
Ben,
There are plenty of reasons for protection (Ned’s cited case does discuss several of them).
That being said, there is ZERO reason why patent rights should be diminished in any manner by the NON-Article I Section 8 allocation of authority to the Legislative Branch to write the Federal statutory law that is patent law.
And yet, people are only too eager to conflate the different “times of protection”
The whole point is to not publish one’s valuable trade secrets.
NOT
PUBLISH.
is the WHOLE point and objective of prior user rights.
Any system that actually forces one to publish one’s trade secrets in the first place is a very bad system, IMHO.
I also think it is a bad idea to publish the trade secrets to the world as a condition of obtaining a patent. This has to be rethought.
The point of the patent system is to promote progress in the useful arts.
How does saying ‘if you use this in secret, we will protect you from other people who actually disclosed the same ideas to the public’ promote progress in the useful arts?
Trade secrets are not otherwise without risk, correct? Why isn’t this just another risk in the trade secret calculus?
Why PUR? Ben, the way I see it is as follows:
I hope we agree, that innovation enriches everybody. We should do all we can to encourage it.
One excellent way is to provide a system of patents: a period of exclusivity, contingent on the giving, at the outset, of an enabling disclosure.
But that’s not the only way to foster innovation. In general, fostering trust in business partnering does it too. Trade secret law nurtures trust.
To maximise innovation, all tools in the encouragement box need to be sharp and specialised. A balance is needed, between the cutting edge of the patent tool and the cut of the PUR tool.
In Europe, PUR is there, but strictly confined, to protect parties who already invested heavily in commercialization of an invention. The “U” of PUR means what it says.
Do you not have in the USA some reticence about applying retrospective changes in the law to parties who took the earlier law as they found it, in all good faith? Do you not see, that parties who have already sunk a lot of money into commercializing innovation are to be commended, and deserve some “slack” against Johnny Come Lately’s who only invent, file later and are lucky enough to bamboozle the PTO into granting them a right they can assert against all and sundry.
Don’t make the elementary and one-eyed patent attorney mistake, of supposing that the economy revolves around the patent system. It’s the other way round. Or should be. Patent rights are a restraint of trade and need to be strictly constrained. Just like PUR rights need to be. OK?
Utter balderdash: “Trade secret law nurtures trust.”
Quite the opposite.
There is NO nurturing – Trade Secret law is enforced through the threat of force through law suit of a personal nature.
Your view that “patents cut” while closing your eyes to the knife edge of Trade Secret law is “a hoot.”
How often have YOU personally been involved with PURs? You speak of them as if purely from a textbook, even while you heap disdain on Ron K. Your posts come across as shallow and merely being a mouthpiece, MaxDrei.
Even your view of patents is hackneyed and contradictory.
Contrast “I hope we agree, that innovation enriches everybody. We should do all we can to encourage it.” with “ Patent rights are a restraint of trade and need to be strictly constrained.”
You simply do not get patents at all. No matter how many times you have been “around the block.”
Ned very much has the “guild” mentality.
MaxDrei,
Like I said, your comment exposes the scope of your ignorance about the nature of due diligence investors and startups go through. It shows that you are clueless about how the uncertainty of the scope of secret art vs alleged patentable subject matter in pending patent applications must be represented to investors. So to you “gentle reader” of the startup community, just ignore Max’s nonsense; talk to your M&A patent asset counsel and find out how you should navigate through your disclosure obligations to investors. Then talk to your Congressional representative and explain how PUR “helps” you raise capital.
Ron,
MaxDrei is on the order of Malcolm (except far less ad hominem).
He is a shill and is not capable of any cogent interaction.
Ron, the cert “Question” here starts with “Whether, under the Leahy-Smith America Invents Act….” I.e, properly asking a specific legal question, rather than making a statement or argument or going into a background discussion of the prior case law [which the brief itself does, where it belongs]. [Unlike some poor cert petitions.] [And “Whether” is a shorter version of “Whether or not”]
From the briefs lengthy prior case list:
“Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829) …………..[pp] 5, 26 ”
There is no constitutionality issue here, since this is not a challenge to bars against patenting previously publicly available n products. Nor has their ever been a constitutional challenge to Fed. Cir. and other Metallizing Engineering Doctrine case law.
Paul, I think the point is that the question assumes that an on sale bar is prior art. On the one hand, prior art is that which is already available to the public. On sale, by the inventor, only require commercial exploitation, and it does not require disclosure of the invention.
The petition openly is trying to confuse and conflate, just like the arguments made to Congress.
It is Congress that sets the rules of the patent game, Ned.
You keep on wanting a different branch of the government to do that.
“New to you” is the official “new.”
Ned, your view that an “on sale” only applies to the inventor and was not prior art if done by anyone else is the opposite of the position of respected patent law treatise writer Robert Harmon citing In re Epstein (Fed Cir. 1994), J.A. LaPorte Inc. v. Norfolk Dredging Co. (Fed Cir. 1986), and Milliken Res. Corp. v. Dan River Inc. (Fed Cir. 1984) and Baker Oil Tools Inc. v. Geo Van Inc. (Fed Cir. 1987).
Is there an elephant in the room? I mean, if “available to the public” qualifies “on sale” then an inventor of, say, a new and improved injection molding process can extract more than 20 years of exclusivity with an initial period of, say 20 years of keeping it a trade secret followed by 20 years of patent protection. Isn’t it abhorrence of that possibility (40 years of exclusive rights on the invention) which is prejudicing the judges of the CAFC, and decisive to the outcome, thus far?
This elephant was, albeit rather briefly, a big issue in Europe in the 1970’s when the EPC, with its “or otherwise made available to the public” formulation was the new patent law kid on the European block.
If not an elephant, why then is it not mentioned, either by Judge O’Malley or by Petitioner Helsinn?
I mean, it is not as if the AIA abolished “secret prior art”. Just as before, also under the AIA obviousness attacks will continue to be routinely built around secret prior art.
Or is it me? Am I the one who is overlooking something important?
“can extract more than 20 years of exclusivity with an initial period of, say 20 years of keeping it a trade secret followed by 20 years of patent protection. Isn’t it abhorrence of that possibility (40 years of exclusive rights on the invention) which is prejudicing the judges of the CAFC, and decisive to the outcome, thus far?”
That’s no elephant – that is the clear ERROR that I discuss below. (and yes, you are overlooking something important)
Trade Secret law has its genesis OUTSIDE of the realm of patent law.
As noted, Congress has chosen for our Sovereign to make “new to you” as the new “new” for patent purposes.
And at core, why not? If after ANY length of time of a Trade Secret, the item can still obtain a patent, then the bargain of the Quid Pro Quo is still fully recognized.
Max, those behind the legislation continue to conflate and confuse “prior art,” which is applicable to all because it is in the public domain, or legally in the public domain by statute, with the on-sale bar, which is a personal bar to the inventor/applicant. The on-sale bar prevents the inventor from exploiting the invention commercially prior to filing an application in a manner that does not itself create prior use “by others” prior art. The policy is discussed in Pennock, which those behind the AIA never brought to the attention of Congress. Not once, as far as I can tell. They intended to confuse Congress, and some of the things that Senators and others said about secret prior art said was complete nonsense. (One of the things I can recall is that without this proviso third-party Chinese secret use would become prior art to American applications because the scope of public use would become worldwide. Where in the world that they get that?) It is almost as if the people behind the AIA were committing fraud on the court – instead they were committing fraud and Congress – by misrepresenting the law.
It is the same folks a gave us IPR’s. The brief goes out of its way to comment approvingly on these post-grant proceedings. That gives me pause for a different reason. I don’t think I can trust these folks or the folks behind this petition at all. They do not have the best interests of the United states patent system in mind.
Ned,
Personal bare were removed by the AIA.
That’s kind of the point here.
Yes OK Ned but the reality is that replacing FtI with FtF changes the foundations so much as to render Pennock logic no longer viable, under the AIA.
One always had a choice whether or not to file, and if so, when. But under FtF, the penalty for any tardiness in filing can be disastrous. I mean, not only no patent for you, my friend, but worse than that, a valid and enforceable patent for your ugliest competitor. No amount of lab notebook writing, no amount of diligence, no acts of actual reduction to practice will get you out of the hole.
As a way to “promote the progress”, therefore, Ftf is unrivalled. with 18 month A publication of a disclosure that enables over the full scope of the claim it gets even more promotional. An “on sale bar” brings no further promotional advantage. Under FtF it is superfluous. It muddies the legal landscape, deprives business of legal certainty and therefore retards rather than promotes progress. It has no place in any FtF jurisdiction.
As the USA gets to find its way around the new FtF landscape it too will come to this realisation.
Max, two points: 1. Prior user rights. 2. This from Pennock citing the English, the source of the rule:
In the case of Wood vs. Zimmer, 1 Holt’s N.P. Rep. 58, this doctrine was fully recognised by lord chief justice Gibbs. There the inventor had suffered the thing invented to be sold, and go into public use for four months before the grant of his patent; and it was held by the court, that on this account the patent was utterly void. Lord chief justice Gibbs said, “To entitle a man to a patent, the invention must be new to the world. The public sale of that which is afterwards made the subject of a patent, though sold by the inventor only, makes the patent void.” By “invention,” the learned judge undoubtedly meant, as the context abundantly shows, not the abstract discovery, but the thing invented; not the new secret principle, but the manufacture resulting from it.
Ned, two replies. Prior user rights are needed, lest the prior user be stopped, by the enforcement of the patent, from doing that which he started, in all good faith, prior to the filing of the patent application. Any defensible patent system needs to provide such rights.
The Wood case point is relevant if we ask ourselves, what is the quid pro quo of the patent system. Is it to encourage inventors to make an early enabling disclosure to the public, that disclosure promoting the progress? Or is it to encourage investment in innovation in manufacturing business? If the former, then we need to distinguish between the sort of public use that makes the claimed subject matter available to the public, and that which does not. Europe, under the EPC, did all this in the 1970’s and 80’s. But the judge in Wood surely never saw that distinction, did he?
These days, I expect more from our patent judges.
Prior User Rights are neither sensible nor needed.
Spare the rod – spoil the child.
All that Prior User Rights does is spoil the child and weaken the stick aspect of a carrot and stick approach.
(MaxDrei, you should note that Ned claims to have has a hand in the original Prior User Rights legislation)
I agree with Anon, but let me be a bit more specific as to why I do.
Prior user rights (PUR) are an anathema to the patent system. Consider the scenario where two inventors A and B both come up with the same invention, inventor A chooses to patent, and inventor B chooses to practice the invention as a trade secret. Under a legal system with no PUR and with a personal bar to patenting after secret commercial use (as was in pre-AIA times), inventor A, the inventor that chose to patent, elected to assume only one risk – the risk of disclosure in exchange for exclusive rights for a limited time. On the other side, inventor B who chose to maintain the invention as a trade secret runs two risks. First, by commercial use of a trade secret,and not filing for a patent, inventor B forfeited the right to ever obtain the patent. Second, should the patent issue to inventor A, it would be enforceable against all, including against inventor B, the trade-secret inventor. The quid pro quo of the patent system is the reward of a right to exclude, in exchange for disclosure. But only one inventor can hold a patent for the invention, and thus the dual risk for B is an incentive to be inventor A rather than inventor B.
Under a legal system with PUR, things are turned over: the trade secret user, inventor B, may have a defense against a patent issued to A, who made the disclosure for the patent right. Inventor A would never be confident that the patent can be enforceable against a major competitor. The PUR system thus transfers enormous risks to those who participate in the patent system from those who do not. It fundamentally shifts the reward from those who make their inventions public to those who keep their ideas secret.
A shift to a PUR system favors large market incumbents over startups and small disruptive innovators. Large market incumbents have sufficient market power without patents and their choice to be inventor B makes inventor A’s risk larger because of their inability to appropriate returns from a larger share of the market.
To those who argue that PUR is fair because it protects substantial investments, I say that substantial investments in new technologies can, and should be protected by participating in the patent system – not by undermining it. In essence, PUR makes prior use akin to prior art, equating, illogically, a secret with a public good. Our Forefathers had some experience with the ills of hoarded secret technologies from the guilds in Europe and wanted instead to encourage disclosure in order to promote the progress of the useful arts. A shift away into a PUR system is a recipe for undermining a patent system.
Ron, it depends. When you have had a lifetime of experience of FtF + PUR, you will see it differently.
The only defence to being enjoined by the patent owner is when the accused commercial act is one that the accused has been doing, continuously, since before the priority date of the asserted claim. The defence is narrow; the act must be exactly the same, for the defence to succeed. Hardly surprising then, that the defence is seldom invoked. You know, I cannot recall a single case since the CPC was done in 1973 when it succeeded.
But it’s there, just in case.
You say it turns everything over. I see it’s a Once in a Blue Moon event.
I recall that when the AIA was going through Congress there were many Chicken Little commentators telling us that the sky would fall. It seems that they haven’t wearied yet, of running around warning of disaster.
Hmm,
The insertion of the little “emoticons” appears to have been negated by editorial control.
I wanted to signify agreement with Ron’s excellent post with the “handshake” icon.
I would rebut MaxDrei’s attempt (below) that some sense of “fairness” is present with PUR, as well as the false notion of frequency of use of the defense as any indicator that the defense is just.
First, as Ron so eloquently states, PUR undermines the “stick” portion of the carrot and stick approach, and heavily weighs in favor of the large trans-national type Big Corp as yet another reason NOT to share (when they feel that they do not want to share).
Giving a reason (and protection) for NOT sharing can only logically be viewed as anti-patent. to clothe this “anti-patent” in the sheepskin of equity belies that lack of understanding that the patent system seeks to (as Ron notes) make the choice of being type Inventor A more worthwhile than being type Inventor B. The notion of “equity” attempted with “protecting” Inventor B – no matter how “Blue Moon” or infrequent any subsequent use may be does not change the nature of that action.
As Ron points out, the damage is already done in the undermining of the certainty that SHOULD be present in the choice to pursue patent protection.
One thing though that I will correct Ron’s “A” and “B” notion though: the original*** Quid Pro Quo presented was not for a mere chance at a patent with the exchange of the information released to the public. Rather, the exchange was far more substantial (and balanced) in that an applicant was to be able to see that a patent was or was not likely BEFORE the publication hit.
***this deal was denigrated with the move to a de facto timed publication stance – a stance that can be defused with the extra step of a non-publication request. It is standard practice with all of our clients that we advise them to take this non-publication request as a default, and then add a later review milestone for those items that employ a world wide effort that would necessitate rescinding the non-publication request. Further, the guarantees put in place with Patent Term Adjustment are there in substantial part as a type of prodding of the government to take substantial examination effort on the application prior to the publication mark so that applicants could still decide whether or not to pull the application prior to publication.
It would be a mistake to “easily” switch thinking of what the Quid Pro Quo is meant to be from a meaningful exchange to a mere “lottery” – and a poor one at that, seeing as at the point of publication, the government has taken the entirety of their side of the bargain (leaving NO impetus to be reasonable, either in timing or effort, with the applicant) .
There is no Fed. Cir. decision in which anyone has ever defeated a patent suit with either the old or the AIA expanded commercial prior user rights statute. I did that research myself a few years ago. There are also additional restraints on trying to use that statute besides the one’s Max mentioned.
Thus, irrespective of the public patent disclosures of inventions policy arguments against such a statute, it is not being used in patent litigation.
On the different issue here, of tacking a patent protection term onto a long trade secret protection term, that concern is eliminated if either the Fed. Cir. or the Sup. Ct. holds that the personal forfeture or estoppel of Judge Learned Hands Metallizing Engineering doctrine was NOT eliminated by the AIA.