Ariosa Diagnostics v. Illumina: Prior Art Date of a Provisional Patent Application

by Dennis Crouch

The new petition for writ of certiorari in Ariosa raises the questions of what “counts” as prior art — what is disclosed or what is claimed?  The petition asks:

If a patent discloses but does not claim an invention, does that disclosure qualify as prior art as of the date of the application in which it was first made, such that no one else may patent the same invention based on a later-filed application?

[Ariosa Diagnostics Inc. v. Illumina Inc. – cert. petition].  Here, the prior art statute at issue is pre-AIA 102(e), whose equivalent is in the post-AIA 102(a)(2).  The statute seems to squarely answer the question above — a disclosure in an issued US patent will count as prior art as of its filing date regardless of whether the all features of the disclosure were actually claimed in the patent.

102 A person shall be entitled to a patent unless (e) the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before before the invention by the applicant for patent.

In the simple case outlined above, the courts all agree that the disclosures found in an issued patent or published application  count as prior art as of the patent’s filing date.  The difficulty comes when we bring priority-claims into play (such as priority to a provisional application).

In this case, the Federal Circuit ruled that a published application can count as prior art as of its provisional filing date — but only as to features actually claimed in the application.  According to the court, features disclosed in the provisional but not claimed in the published application will only be prior art as of their date of public disclosure.

The patent challenger argues that this interpretation is wrong — and particularly that the effect of the priority claim should be governed by 35 U.S.C. §§ 119(e)(1) and 120, which provide for applications properly claiming priority back to an earlier filing “shall have the same effect, as to such invention, as though filed on” the earlier date.  On the other side – the statutory hook for the Federal Circuit’s limitation here is the fact that the statute gives priority for “the invention” — i.e., the claimed invention — but not for the disclosure as a whole. In addition Sections 119 and 120 develop the rules for patents claiming priority — not for prior art.

In the petition, the patent challenger offers the following question:

Question presented: Do unclaimed disclosures in a published patent application and an earlier application it relies on for priority enter the public domain and thus become prior art as of the earlier application’s filing date, or, as the Federal Circuit held, does the prior art date of the disclosures depend on whether the published application also claims subject matter from the earlier application?

There are several important prior cases on-point:

  • Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) (judicially establishing the precursor to 102(e)).
  • Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965)
  • In re Wertheim, 646 F.2d 527 (C.C.P.A. 1981)
  • Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)

The petition cites my Patently-O commentary on the situation in which I argue that a disclosure’s prior art status should not depend upon what is claimed.

A leading commentator has observed that “[a]nyone who works with prior art knows that this setup is an oddball way to address the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed.” Dennis Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result; see also id. (“The result here is silly—and somewhat disturbing—that under the first-to-invent rule the second inventor gets a patent.”).

Although it is unclear, I don’t believe that the AIA will be seen to have changed the statute in a way that changes the rule here.  Thus, the outcome of this case will likely bind post-AIA cases as well.

114 thoughts on “Ariosa Diagnostics v. Illumina: Prior Art Date of a Provisional Patent Application

  1. 13

    There is a lot of commentary below about broad issues of secret prior art, but the only issue legally disputed here is the much narrower novel issue created by the subject Fed. Cir. decision. Namely whether the effective date of unchanged parts of the contents of AIA provisional applications is to be determined and changed by what parts of it are later CLAIMED.

    1. 13.1

      but the only issue legally disputed here is the much narrower novel issue created by the subject Fed. Cir. decision.

      As if any of the other discussion points somehow lacks merit…?

      Paul, your advocacy remains most odd.

      Certainly, the point you raise is an important point. But just as certain, that point is not – and cannot be – constrained merely to the provisional application aspect.

      Why you would seek to so constrain the legal issue is not clear. ANY reasoning that goes into that much narrower issue MUST still survive being applied to the larger contexts, as the larger context carries with it the very same issues at heart.

      Advocacy that amounts to “clench tight your eyes and do not think” is not advocacy worth pursuing.

  2. 12

    I will start a new dialogue, rather than continue with anon at #10.

    as to Art 54(3) EPC, anon enquires:

    “How is it that you “add” the secret art to the one but not to the other? What is actually the driver there?

    To which I reply: The Driver is First to File. You will find that the entire world (other than the USA) does novelty and obviousness this. The Driver in the USA is continuity with the pre-AIA First to Invent law of USC 35. Why change a winning formula is the logic, I suppose.

    I (and every jurisdiction save for the USA) say that obviousness should be decided relative to the prior art universe, everything already made available to a member of the “public” by written or oral description, by use, or in any other way, not including “secret prior art”.

    But of course, that alone is not enough to prevent double patenting.

    To address that, EPC Art 54(3) simply requires that an Applicant demonstrate novelty over everything that has already been filed at the EPO (provided the earlier Applicant takes their filing as far as EPO A publication).

    The attributes of the PHOSITA for novelty and obviousness are constant and do not change, when attention shifts from obviousness to novelty.

    There. For somebody willing to try to understand, that’s not so hard, is it?

    Anybody else want to play?

    1. 12.1

      Saying “does not change” does not make it so.

      All that you have done is more of the same that I have “disdained” previously – for the very reasons that I have provided for that disdain.

      Note your words here: “made available to a member of the “public”” as your difference.

      That is not a legal notion public, but a real person public. The legal notion public (per the US sovereign choice) applies a consistent view to both novelty and obviousness.

      You just cannot BE consistent when you (the Royal you) chose differently.

      Your choice is a “real person” driven aspect.

      Note then that you baldly state that you treat novelty differently (while stating consistency) – without regard to the very driver that I pointed out being one NOT driven by the legal notion or the actual state of the art PER that legal notion.

      You do not explain why “secret prior art” is “OK” for novelty but not for obviousness.

      Nor do you explain why the benefit of PHOSITA understanding secret prior art all of a sudden disappears for the legal notion of PHOSITA when viewing obviousness instead. All of your reasons (note that I do give credit that you are providing reasons) are instead driven by real people and NOT the legal fiction.

      Why would any such (absent) reasoning differentiate between how a PHOSITA would see a reference (of that secret art nature)?

      No, MaxDrei, you simply cannot claim consistency. Consistency would mandate that you either do not allow secret prior art at all or that you allow it for both novelty and obviousness.

    2. 12.2

      The reason the U.S. is different, that certain secret prior art can be used in an obviousness determination, is judge-made law from the 1965 U.S. Supreme Court case of Hazeltine Research v. Brenner. The Court said that when an applicant files his application in the PTO, he has done everything necessary to disclose his invention to the public, “but for” delays of the patent office. The application could, under the law, be issued as a patent the day of filing. For obviousness purposes (35 usc 103), the Court removed the effect of any delays, after filing, in disclosing the invention, and imputed that knowledge to “a person having ordinary skill in the art to which the claimed invention pertains.”

      Hazeltine Research dealt with what we now call nonprovisional applications. The content of present provisional applications, in contrast, cannot be publicly disclosed without further action by the applicant — i.e., disclosure to the public is not dependent solely on PTO delays.

      The reasoning of Hazeltine Research thus does not apply to provisionals. Note, however, that under Hazeltine Research the result would be the same under “first to invent” or “first to file” — it’s about public disclosure and what “could” of “should” have been known to the artisan at the time of invention, not so much about priority.

      — BTW, when I studied comparative patent law I wrote a paper that concluded the U.S. could benefit from a provisional application system. But I’m somewhat confident they got the idea somewhere else. —

      The Federal Circuit, in the case of In re Giacomini, held that a provisional application could be used in a rejection for lack of novelty. Giacomini appears based on concerns about priority, as opposed to imputed public disclosure of secret prior art. Ariosa Diagnostics is also about lack of novelty. Off-hand, I don’t know of any Federal Circuit precedential opinions that have dealt with an obviousness rejection that relies on disclosure in a provisional application. Perhaps Hazeltine Research still applies — to nonprovisionals but not to provisionals. Perhaps Congress essentially overruled Hazeltine Research in legislating that provisionals can allow a later nonprovisional to “have the same effect, as to such invention, as though filed on the date of the provisional application.” However, that statutory language seems to be about priority, not about what could or should have been disclosed to the public. In any event, that language pre-dates the U.S. first-to-file system. I don’t see that it’s a matter of first-to-invent vs. first-to-file.

      1. 12.2.1

        Tommy,

        You are close, but still miss a critical concept:

        1965 U.S. Supreme Court case of Hazeltine Research v. Brenner. The Court said that when an applicant files his application in the PTO, he has done everything necessary to disclose his invention to the public, “but for” delays of the patent office.

        1965.

        At that time, publication was done at issuance (only – post grant), and up to and including just before actual issuance, an applicant had the power to expressly abandon and thus maintain secrecy.

        Provisionals reflect this same attribute – in at least the case that within that first year, an applicant may elect a conversion (not a claim to priority) and the provisional becomes a non-provisional. The ability to preserve the priority of the filing may be seen as merely an administrative rather than substantive feature.***This may happen with NO MORE of an “impact” that was fully available to the applicant in 1965.

        Understanding the larger context then provides a better informed view of just what the Hazeltine “interpretation” provides. Bottom line for then (and now), for non-provisionals (and provisionals) is that the vehicle at the point of contention is “whole and complete” at time of filing (the US “no new matter” rule makes it so), and may through the actions of the Office mature into something LATER that because the item WAS complete at filing, “earns” – especially to the legal notion of PHOSITA – that date as reflecting what the legal fiction understands to be the state of the art.

        The “day of filing” is important – but its importance is more than merely your “could be printed but for Office delays” that a mere wooden read of the Supreme Court decision may at first glance provide. Then – as now [with a non-publication request**] – the power to expressly abandon in order to stop publication is an important ability of anyone engaging the patent system.

        (as a side note, I will also point out that related to the changes of publication PRE-grant, the entire notion of Patent Term Adjustment was built on a foundation that the applicant would at least have a good “first look” examination PRIOR TO any publication, thereby preserving the ability to expressly abandon and keep secret.

        As a larger concept, the fundamental aspects of the Quid Pro Quo are a context that NEEDS to inform many other contexts of patent law – including those being interpreted in Hazeltine.

        **Of course, since non-publication requests were an aim at preserving the status quo anti that existed in 1965, the use of such may well survive and apply to that decision. It may be an interesting case (of which, I have never heard of) that suggests otherwise. To wit, I am not aware of any case standing for the proposition that the ability (or use of) a non-publication request changes the result of the Hazeltine decision. I grant that such a case may exist, and upon reading that case, I may change my view.

        ***Likewise to he ability to prevent publication for a straight-up non-provisional, that ability is available for BOTH a converted provisional-to-non-provisional as well as a non-provisional “preserving” the date of a related nonprovisional. As noted, this feature was intended to be able to save the status quo ante that existed in 1965 at the time of the Hazeltine decision.

      2. 12.2.2

        Very interesting. Many thanks Thomas Pain.

        What changed since Hazeltine (at least outside the USA) is that Applicants know that (unless they abandon or withdraw in time) their as filed specification will be published by the Patent Office 18 months after their priority date.

        The reality is that various corporate Applicants, all unknown to the other, file in that 18 month period, on subject matter that is at a general level the same but which differs in the (valuable) finer detail.

        Novelty Y/N is a binary question, much simpler to adjudicate than Obvious Y/N. So, administratively, allowing “secret prior art” earlier filings for novelty will work, administratively. And so it has proved. First filer gets the broad patent. Later filers get patents on the novel details in their respective filings. Allowing obviousness attacks based on secret prior art renders everything far more complex, legally, without any reasonable justification.

        More importantly though, all those rival Applicants get a scope of protection commensurate with their contribution to the art. Permitting the first filer to wipe out all the others with obviousness attacks delivers perverse results and so damages the integrity of the patent system, long term.

        1. 12.2.2.1

          Administratively…
          Reasonable (justification)….
          Wipe out all other…?

          Your feelings are noted.

        2. 12.2.2.2

          From your perspective, it gets even worse. The information that can be used in an inventive-step analysis in the U.S. includes, but is broader than, the “prior art” defined in the novelty statute (35 usc 102). A footnote in the case of In re Bergy (internal citations omitted), by a co-drafter of the 1952 Patent Act (Giles Rich), sums it up this way:

          — Section 103 of Title 35 U.S.C. which makes nonobviousness of the invention a prerequisite to patentability requires a determination of ‘the differences between the subject matter sought to be patented and the prior art.’ Title 35 nowhere defines the term ‘prior art.’ Its exact meaning is a somewhat complex question of law which has been the subject of legal papers and whole chapters of books. Basically, the concept of prior art is that which is publicly known, or at least known to someone who has taken steps which do make it known to the public, or known to the inventor against whose application it is being applied. —

          1. 12.2.2.2.1

            or known to the inventor against whose application it is being applied

            That personal bar has been removed by the AIA…

            Per Congress (now), “new” is what is “new to you,” and no longer contains the elimination of “not new to the inventor” (as in, the inventor may have been well aware, even keeping a trade secret, and STILL if “new to you” (others), than it is legally new.

          2. 12.2.2.2.2

            I don’t know your qualifications and experience, Thomas Pain, but you continue to post good stuff. Thank you.

            I gather from you that, in the context of 35 USC 103, the caselaw informs us that its “prior art” embraces that which is:

            A: “publicly known”, plus

            B: “known to someone who has taken steps which do make it known to the public”, plus

            C:”known to the inventor against whose application it is being applied.”

            As to A, I get that. As to C, I get that. It is category B that has me scratching my head.

            Given that one who files at the USPTO can “pull” that filing and prevent its publication by the USPTO, I struggle to see why the one who has filed at the USPTO a week before my filing of today has taken any steps which “do” make his specification “known to the public”.

            1. 12.2.2.2.2.1

              Isn’t is a question about what evil each aspect of the law seeks to prevent?

              Novelty against public prior art prevents that which was available to, and in principle therefore being used by, any member of the public, becoming forbidden by a monopoly – it prevents a land grab of the commons.

              Nonobvousness against public prior art prevents the reward for a patent (a 20 year monopoly) being given too lightly for innovations which would have happened routinely without the inventor’s special contribution – and it confirms that the skilled artisan is free to combine all information available to him in routine ways. In doing so, it again prevents a land grab of the commons, since obvious combinations of what was publicly available are themselves part of the commons.

              Neither of these evils are better prevented by making secret prior art part of the state of the art, because secret prior art does not belong to the commons.

              What then is the purpose of secret prior art? It is to prevent a first filer being surprised by a claim, by a second filer, to that which he disclosed in his first filing. This is to ensure that the invention goes to the first to file, and not to the first to file and the second to file (so long as the second to file files quickly enough).

              Does including secret prior art into the art relevant for novelty go far enough to prevent this evil? Yes

              Is it then necessary to include secret prior art into the art relevant for obviousness to prevent this evil? Like all legal questions, it depends on a balance of competing interests. Should the first filer be protected from a second filer patenting obvious developments of his invention, which he did not disclose in the application but which it would be obvious to include? If so, then the second filer should be confronted with obviousness attacks based on any one piece of secret prior art + any part of the public prior art. This is improved fairness for the inventor, as he is free to work his disclosed invention in any what which was obvious on the date of filing. If not, then the secret prior art should not be considered for obviousness at all . This is improved fairness for the second filer, who on the basis of the same public prior art came up with a further development of the first filer’s invention, even without knowledge of that invention. This is also a policy tool to encourage any invention disclosure in an application to be as complete as possible.

              What is hard to see a policy justification for is to allow combinations of two secret prior art documents in assessing inventive step – I cannot see the evil that this aspect of the law addresses.

              1. 12.2.2.2.2.1.1

                You err in your presupposition that the state of the art is not affected by the so-called “secret prior art” and you forget that the state of the art is NOT made in reference to actual filers (and what they can and cannot see) , but instead is made in reference to the legal notion of PHOSITA, who ALREADY is blessed with “seeing all” (and certainly more than any real inventor could see.

                To answer your question then of “Isn’t is a question about what evil each aspect of the law seeks to prevent?

                No. that is not the question.

            2. 12.2.2.2.2.2

              Perhaps I should have included the citations.

              “A” is easy.

              “C” refers to knowledge about the prior invention of another who has not abandoned, suppressed, or concealed it. Section 103 (obviousness) was amended to exclude that “prior art” if the subject matter was commonly owned (e.g., within the same company). Under AIA, that exclusion has been essentially moved to the novelty statute (Section 102). “C” also refers to admissions of prior art, which will always be relevant.

              “B” refers to public patent documents, but with a “prior art” effective date earlier than public disclosure. I.e., a type of secret prior art that later becomes public. Specifically, Bergy refers to the 1926 Supreme Court case of Milburn Co. v. Davis Co., the result of which was codified as 35 usc 102(e) (initially, patents effective as prior art as of the date of application filing, and later, including published applications). Milburn Co. uses the same reasoning later endorsed by Hazeltine Research. Because an inventor had “taken steps” that would make his disclosure public as soon as the PTO did its work, potential delays were given no effect.

              1. 12.2.2.2.2.2.1

                C. Well, yes. Naturally. Of course. Goes without saying.

                Under a First to Invent law, earlier filings at the USPTO for the identical subject matter are of course, prima facie, First-er to Invent so have to be addressed, taken into account, recognised.

                Under a First to File law though, one needs a system that doles out patents according to who FILED what first. simple as that.

                In these days of ferocious competition, rival corporations routinely file on overlapping subject matter on similar dates. What to do to sort out which actor gets to take what claims to issue, efficiently, speedily and judiciously?

                Declare an interference?

                1. “Declare an interference?”

                  I don’t know how closely you followed the US developments. We did not go to a first to file system, exactly. They call it “first inventor to file.” Interference proceedings are being replaced with AIA trial “derivation” proceedings, in which a first inventor may show that an earlier application was filed, without authorization, in which that inventor derived the invention from the first inventor. Things could get … interesting.

                  Had a first to file system been put in place, the system would have been challenged as contrary to the US Constitution, with the reasonable argument that the “inventors” in the language of the Constitution means inventors, not filers.

    3. 12.3

      To which I reply: The Driver is First to File.

      1) your driver is a real person effect

      2) your driver does not explain AT ALL the very thing to which you want to apply this driver to: How is it that you “add” the secret art to the one but not to the other?

      First to file (or first to invent, or even first inventor to file) does not explain the inconsistency of when you allow and then turn around and NOT allow secret prior art.

      Leastwise, you have provided no explanation that is tied to a consistent notion of the legal person of PHOSITA. As noted, consistency is the white to the black of your choice of applying secret art differently.

      Secret prior art is – or is not – visible. To be consistent, you either have it or you do not.

      There. For somebody willing to try to understand, that’s not so hard, is it?

      That any one (or nearly all) sovereigns have made a choice does not explain the difference IN that choice. As I have also made abundantly clear, I DO understand the reasoning behind your sovereign’s choice. For some inane reason, you seem to want to insist a lack of understanding on my part where no such lack exists.

  3. 11

    I wonder if there is a nexus here, between the AIA and the Paris Convention, on the issue of declaring the priority of an “earlier application” indiscriminately whether it be a provisional filed at the USPTO or at the UK Patent Office.

    I’m thinking Hilmer Doctrine. I’m thinking the pre-1978 UK “prior claiming” method to fix what is prior art and I’m thinking that the Paris Convention right of priority is dependent upon the earlier application being in respect of the “same invention”. How else do you determine that other than by studying the claims.

    An answer to the certiorari question is needed. No doubt about that. But I agree with PM/MM at 2.2 below, that the question could have been formulated more pithily:

    PM: “Can the teaching contents of a publicly disclosed provisional patent application be created or removed as prior art smply by changing the claims in the subsequent application?”

    It’s possible to finesse this question to express a bit more of the nuance (e.g., “removed as prior art as of the filing date of the provisional patent application“) but I agree that Paul’s question gets closer to the nub here.

    1. 11.1

      The question should not be constrained solely to the effect of claimed priority to a provisional (given that one may claim priority to an unpublished non-provisonal).

      Below it is remarked that a non-provisional “may be published” the day it is filed (by Tommy at 2.3.1.1 – blocked by the ‘do not have a dialogue’ count filter).

      But this is largely a non-sequitur, and reflects neither the much larger set of non-provisionals that do not fit that hypo, nor does it account for the fact that (albeit rare), a provisional may be directly converted into a non-provisional rather than merely being something that is claimed priority to.

      As I have noted, this directly impacts the notion of “secret prior art,” for which distinguishing between provisional and non-provisional technically matters little if at all.

      1. 11.1.1

        I agree. Let’s not confine the debate to the case where the “earlier application” just happens to be a provisional.

        The Paris Convention doesn’t say that. It just says “right of priority” and “earlier application” and “same invention”.

        As to how the AIA (First to File) implements in domestic law, logically and equitably, that commitment by the USA to that Convention, interested people need to know.

        1. 11.1.1.1

          Commitments to the Paris Convention pre-date the AIA and are only binding in so far as our Congress chooses to implement (most) any parts of a treaty as they desire to do so – and in this case, the IP treaty definitely falls within that sphere.

          You might want to realize just how “the commitments” actually work (legally) before you start going on about “logically” and “equitably. Interested people need to understand the context of any such legal implementations.

          1. 11.1.1.1.1

            Well alright then. Let’s not get into all that. Forget any international aspects. Let us just revert to my original hypo, about rival US-resident, US nationality corporations, X Corp and Y inc, filing all their “first applications for protection” exclusively and prolifically at the USPTO under the AIA. X and Y are both active in the same technical field, and so both finding, on a regular basis, that the other one filed on much the same subject matter at much the same date.

            Who gets what scope of protection, to assert against the other, depends decisively on who filed what first. Sauce for Goose X, one day, is sauce for Gander Y the next.

            In that, the “what” needs sorting out according to some agreed process of analysis, in which the question, who was first to invent is no longer of any consequence whatsoever but the question which of them was “First to File” is of decisive importance.

            Such a process I do not yet see.

            Hence the need for The Certiorari Question.

            1. 11.1.1.1.1.1

              I think that we may actually be fairly close then on this topic (outside of perhaps my wanting a cogent legal reason why our Office deigns to close its eyes to the sense of “secret prior art” that not only that it knows about, but has in its possession – and that which – if the legal fiction of Person Having Ordinary Skill In The Art is used consistently for its intended purposes (and not conflated with “policy impacts of real persons”) reveals a “state of the art” with such “secret prior art.”

              1. 11.1.1.1.1.1.1

                I would dearly like to understand the point you have been trying to make here, on various threads, for weeks on end, about the legal definition of the PHOSITA being dependent upon which provision of the Statute one is addressing. The point interests me, given the statutory provisions and caselaw, here in Europe, which involve the person skilled in the art. But I still can’t understand you.

                I have tried various replies, all of which you have treated with disdain.

                I have seen no reply from anybody else.

                So you’re still on your own on this one, I think.

                1. Any disdain that you may pick up is directed at the lack of candor about the choice to not be consistent as to the definition of the legal fiction. Arguments about policy that (subtly or not so subtly) switch to a focus on some real person while pretending to still be focused on the legal fiction based on (our version of) 103 as opposed to 102 are unnecessarily obfuscating.

                  There is no disdain for the choice itself – as I respect that a sovereign may chose as it will. My issue arises when the choice is couched and pretensions are engaged to obscure the fact that the legal notion is not being consistent.

                2. You say that a jurisdiction takes the sovereign choice to be not consistent as to the attributes of the PHOSITA.

                  In reply, I say that the EPC is consistent as to the attributes of its PHOSITA, that it gives that single notional person one set of docs to look at for assessing obviousness, but that, for examining patentable novelty, it gives that same single person, in addition, the “secret” prior art of earlier filed EPO A-publications that were published only after the date of the claim.

                3. You saying black is white is what earns disdain.

                  The distinction you want to draw to the “same” legal notion is an artifice, as your draw into what you merely label as “the legal notion” what a ‘real person’ may see even though BOTH the novelty and the obviousness questions are geared NOT to that real person [that serves as your actual legal distinction between novelty and obviousness], but instead to the legal construct (and it is to THAT legal construct that the state of the art is measured by).

                  The state of the art is informed to that legal construct for both novelty and obviousness, but you couch the obviousness in an inconsistent application (and pretend – and here continue to pretend – that no inconsistency is present.

                  How is it that you “add” the secret art to the one but not to the other? What is actually the driver there? (hint: that driver is NOT the notion of the legal fiction). Why is it “ok” for you to apply that secret art ONLY to novelty? The legal fiction is not actually present in the answer to that “why?”.

                  As I have said all along, I “get” that a sovereign may choose at it will and that the US sovereign has chosen differently. But to call “your” choice consistent is dissembling – as it cannot be so when compared to an actual consistency as chosen by the US sovereign. BOTH choices – while each legitimate – cannot be consistent due to the fact that they are different.

  4. 10

    After gallons of spilled ink on patent blogs about an ingenious legal scheme to avoid IPRs, the Federal Circuit today held that tribal sovereign immunity does NOT apply to IPR proceedings, affirming the PTAB’s ruling. Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Nos. 18-1638 to 18-1643. No dissents and one concurrence. It leaves for another day the question of whether there is any reason to treat state sovereign immunity differently.

    1. 10.1

      Next important questions: does the PTAB still have time to resume and decide this IPR before the IPR statutory extended time period expires? Is that an unavoidable deadline, or was that deadline stayed by the conduct and interlocutory appeal of the original patent owner and/or the allegedly [and PTAB contested] assigned Mohawk patent owner?

      1. 10.1.1

        There are multiple IPRs, but I looked up the first-filed. Trial was instituted more than 18 months ago. This’ll be interesting.

        1. 10.1.1.1

          … interesting because the statute requires final determination not later than one year from instituting trial, with the Director’s extension for good cause of not more than six additional months.

          1. 10.1.1.1.1

            Another afterthought — the statutes do not say what happens if an IPR deadline is missed. The PTO claims it has never missed one of these deadlines. I’ve talked to people in other agencies that are subject to statutory deadlines, where they work from behind and miss them frequently. It only becomes an issue in a reviewing court if there is an egregious delay.

            1. 10.1.1.1.1.1

              ? The applicable IPR statute says:
              (a) The Director shall prescribe regulations–
              ***
              (11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c);
              Does the fact that this statutory deadline is not direct but rather is an empowerment and/or direction to the Director for rulemaking allow the Director to suspend its rule in the interest of justice as in some other situations? Or, does the one indicated exception in this statute suggest there can be no others?

              1. 10.1.1.1.1.1.1

                “Does the fact that this statutory deadline is not direct but rather is an empowerment and/or direction to the Director for rulemaking allow the Director to suspend its rule in the interest of justice as in some other situations?”

                That’s an interesting take. Maybe it’s not a “statutory” deadline at all. In addition, the Board’s trial rules allow the Board to waive or suspend its rules. In any event, Mohawk will likely seek to file a motion for dismissal but the deadline will not hinder the PTO’s final determination. The Fed. Cir. will likely decide this or a similar AIA “tolling” issue at a later date.

              2. 10.1.1.1.1.1.2

                I’ve heard “statutory deadline” so many times in the past six years that it hadn’t occurred to me that maybe it’s not. There’s no remedy in the statutes for an AIA trial that goes into overtime. It seems Congress (with PTO’s input) set a framework for the goal of trials going no longer than one year, or 18 months at the max. The number of deadlines missed, and why, might be merely topics for Congressional oversight hearings as to how well the PTO is using its resources.

              3. 10.1.1.1.1.1.3

                “regulations…requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter” suggests that the rules, to be compliant with the statute, must provide that if no final determination has been issued 1 year after the Dir. notices the institution, no final determination may be issued at all. The case just dies. However, I suppose that some other action may be taken which is not a “final determination”, in those cases. Quite what that would be, I do not know.

                That’s all aside from the question as to why the statute mandates that the Director prescribe such a regulation, rather than including a corresponding provision expressis verbis. That I cannot fathom.

                1. Some things to consider:

                  The AIA is noted as being horribly written (and not just in this section, and not just for different areas of change for substantive law).

                  Here, the mandatory language is clear, and ANY permissiveness is quite constrained to the specific area of that permissiveness. One may consider then that the overall section was not written in a “expresis verbis” manner due to the fact that not everything in the section IS expressly mandatory. The presence then of a subsection with some limited leeway is why the section as a whole is not written in a total command tone.

                  One would then need to rely on the fact that words such as “must” and “require” are not words of permissiveness.

      2. 10.1.2

        As just noted in a comment on the latest Gene Blog [the usual overly-optimistic “Sup. Ct. will ride to the rescue” prediction] Ariosa was an unusual interlocutory appeal interrupting long-pending IPRs on the sole issue of alleged tribal immunity. That is, before even any final PTAB decisions [which can now be quickly concluded], much less a final Fed. Cir. decision on all the remaining issues from the PTAB final decisions. The Sup. Ct. would not normally even consider cert before a final decision, and these cases could even be moot by then on other grounds.

        1. 10.1.2.1

          “final PTAB decisions. . . [which can now be quickly concluded]. . . .”

          Not necessarily. The proceedings return to the PTO’s jurisdiction not on the Fed. Cir.’s decision date but when the court issues its mandate, which will be — when? That’s up to the Fed. Cir.

          1. 10.1.2.1.1

            Is that true for decisions denying interlocutory appeal relief, as here?
            [I don’t see the Fed. Cir. wanting to delay PTAB proceedings any further than it had to.]

            1. 10.1.2.1.1.1

              According to the Mohawk decision’s jurisdictional statement, it’s just an appeal from a PTAB decision; Fed. Cir. has not treated it as a death row case. Under FRAP 41 and the court’s local rule, the mandate likely will not issue before the period for a request for rehearing has expired, or after the decision denying. And, potentially, not before a SCOTUS denial of cert. (it happens).

              1. 10.1.2.1.1.1.1

                Given the value of the matter (and the infirmities noted at the other blog, which Paul does not mention), I would certainly expect a request for rehearing en banc.

                1. Anon, is en banc rehearing that likely when the Fed. Cir. panel decision was unanimous and very thoroughly addressed confusing precedents? Since the applicant(s) have spent so much in legal fees on this scheme already I would think they would just file a cert petition?

                2. en bancs have very little (if any) relation to the make-up of a panel decision.

                  as to any notion of “very thoroughly addressed confusing precedents” – maybe instead of taking your usual snide shot from the sidelines, you read the article on that other blog site and rethink (or think the first time) about just how “thorough” the decision was.

                  as to how much someone has spent, that certainly is a relative term, and as I noted, the relative is in relation to how much (remains) to be gained.

                  when you see the bigger picture, you will realize that it is far more likely than not that the fight is not over (regardless of how you feel about “gallons of spilled ink.”

            2. 10.1.2.1.1.2

              Furthermore, the real issue in dispute here is not tribal immunity for ALL IPRs, but whether a tribe can SELL tribal immunity to a company with no immunity with an agreement that is nowhere near a normal assignment and still leaves the company in control, as the primary owner, and “the real party in interest.” Due to the strange nature of the special interlocutory appeal in this case that issue was not addressed here, but it should not be ignored in a final decision since it was fully raised and disputed below.

              1. 10.1.2.1.1.2.1

                Your “further more” point was expressly NOT reached, as that is what sounds in the legal notion of a sham deal.

                And the “not reaching” had absolutely nothing to do with the type of appeal.

                It was not reached due strictly to a remand for other reasons.

                1. By the by, I think that the court did s disservice by not reaching the sham deal question. As we have discussed previously, a sham deal is a legal term of art that while being accused of being in place here (even you are insinuating such), was NOT actually legally there as such.

                  The accusation alone does not reach the plain facts present (as the legal term is understood), and the FULL alienaiblity of property (be it public franchise or private personal) would have been worthy for the court to make clear.

                2. There was no such “remand for other reasons.” The Ariosa decision clearly states that it was taken on appeal for the alleged unreasonable or arbitrary denial of IPR motions [not final decisions] for sovereign immunity, and the decision of this Court is solely as follows: “For the foregoing reasons, the decision of the Board is affirmed.” No remand was even needed because the IPRs are still pending, unless the time deadline also discussed in comments here is fatal, and that de novo issue would presumably cause another Fed. Cir. appeal.

                3. Yes, you are correct and I misspoke as to remand.

                  But you remain in error as to the main point in the misstated remand comment. Shall I quote that part to you?

    2. 10.2

      They obv ra cist. Tribe’s gotta turn em in to OHR for this outr age!

      1. 10.3.1

        “They argue the Board is not adjudicating claims between
        parties but instead is reconsidering a grant of a government
        franchise. ”

        “This reinforces the view that IPR is
        an act by the agency in reconsidering its own grant of a
        public franchise.”

        franchise

        ^key takeaway. Few others in there too.

        1. 10.3.1.1

          6, Isn’t that just the Fed. Cir. panel restating parts of the April Sup. Ct. decision in Oil States?

          1. 10.3.1.1.1

            Yes it is, I’m just pointing out how that is now directly affecting some decisions already.

            Down with property! Let the revolution commence comrade! The gubmit owns all!

        2. 10.3.1.2

          The “public franchise” language still grates against the Congressional view of personal PRIVATE property…

          But IF this is but a “public franchise,” then clearly the government is acting as the franchisor with its fingers still on the property of the franchise.

  5. 9

    The CAFC decided St. Regis Mohawk today. How is there not a thread already to discuss the demise of the rent-sovereign-immunity strategy?

  6. 8

    I think the disconnect is that provisional applications are never given prior art effect back to their filing date, but only to their date of publication. Their “date of publication” is effectively only when they are first identified or relied on in a published application.

    Published applications, on the other hand, get prior art effect back to their earliest effective filing date, and therefore can make the material of a properly claimed and incorporated provisional prior art as of the same date. However, they can only claim an effective filing date back to the filing date of the provisional if the claims are fully disclosed and enabled by the provisional. So if (and only if) the published application has a claim that is fully disclosed by the provisional, the prior art date of everything in the published application including a properly incorporated provisional is the filing date of the provisional. Otherwise, the prior art date of the non-provisional is the actual filing date and the prior art date of the provisional is the publication date of the non-provisional.

    Yes, it’s a counter-intuitive mess, but that seems to be what the words of the rules actually lead to.

    Once the court had decided that the non-provisional application was not entitled to the effective filing date of the provisional application, it no longer mattered whether the entire contents of the provisional application were properly incorporated, or whether claims could have been written that would have allowed the provisional to be relied upon. The non-provisional application, including any material that might have been incorporated by reference, could only be seen as prior art as of its actual filing date.

  7. 7

    The patent challenger argues that this interpretation is wrong — and particularly that the effect of the priority claim should be governed by 35 U.S.C. §§ 119(e)(1) and 120, which provide for applications properly claiming priority back to an earlier filing “shall have the same effect, as to such invention, as though filed on” the earlier date. On the other side – the statutory hook for the Federal Circuit’s limitation here is the fact that the statute gives priority for “the invention” — i.e., the claimed invention — but not for the disclosure as a whole. In addition Sections 119 and 120 develop the rules for patents claiming priority — not for prior art.”

    I knew some nonsense like this would eventually happen as a result of people NOT GETTING THEIR LANGUAGE STRAIGHT WHILE DRAFTING THE STATUTE. Go d these drafters make me angry.

    1. 7.1

      It hadn’t occurred to me that 119(e) and 120 are arguably ambiguous with regard to whether “as to such invention” limits the scope of: (i) “the application for patent” that receives the earlier effective filing date, which is limited to the portions applicable to such invention; or (ii) “the effect” of the earlier effective filing date of the patent application, which is limited to such invention. The Federal Circuit’s relies on the first interpretation, but I believe that the second interpretation makes more logical sense because an earlier effective filing date is a benefit to a claim. The remaining portions of a patent application do need priority.

      1. 7.1.1

        I meant “do not need priority.” [No joke intended]

        1. 7.1.1.1

          but they DO “need priority” in order to put into effect the effective filing date statement.

          The effective filing date statement is the filing of the entire application – not merely parts thereof.

  8. 6

    Wonder if we will start to see omnibus type claims: “We claim: all embodiments disclosed herein” followed by a quick preliminary amendment.

  9. 5

    Because 102(e)(2) only references filing dates, priority claims should theoretically be irrelevant. The filing date of a patent application doesn’t change if it claims priority to an earlier filed application. From a policy standpoint, relation back makes sense. However, I don’t see how that is supported by the text unless “application for patent by another” means the entire priority chain of that patent application. Using that definition, there is no basis to parse the priority chain based on claim support because the prior art status of a patent under 102(e)(2) isn’t limited to its claims.

    1. 5.1

      Effective filing dates…?

      Claiming priority is in effect claiming a different effective filing date.

      So while indeed true that an actual filing date cannot change, the context here involves more than just a prosaic “common sense” understanding of the actual date and involves the legal sense of the actual and effective dates.

      1. 5.1.1

        You are missing the point which is that on its face, 102(e)(2) is not limited to what is described in the portion of the patent application that supports the allowed claims, but that it is being applied. If the “effective filing date” were treated the same as the actual filing date, there would be no need to parse the specification.

        1. 5.1.1.1

          I do not understand your reply.

          effective versus actual filing dates do not intersect your attempted argument about parsing.

          If anything (see other posts and see the comments on the linked articles), I have been MORE in line with what you are attempting to point out (vis a vis “its face, 102(e)(2) is not limited to what is described in the portion of the patent application that supports the allowed claims” – and this strengthens my position here, not detracts from it.

          1. 5.1.1.1.1

            Unless I am mistaken, under current case law, a provisional patent application is prior art under 102(e)(2) only with respect to the portion that supports the allowed claims in a later issued patent that claims priority to it. Presumably, any remaining portions are not prior art under 102(e)(2). Thus, the provisional application must be parsed to determine which portions support allowed claims and which portions do not. My argument is that the text of the statute does not support this type of parsing regardless of whether 102(e)(2) applies to actual filing dates or effective filing dates.

            1. 5.1.1.1.1.1

              You appear to be arguing against me with arguments that are my arguments (for me).

              1. 5.1.1.1.1.1.1

                Do we disagree?

                1. It’s hard to tell – but you were the one that first appeared to disagree by telling me that I was missing a point…

  10. 4

    I believe the result in Wertheim and Dynamic Drinkware is changed in the AIA by new 35 USC 102(d).

    1. 4.1

      Geez, I agree. I was going to write a new note because I had just now noticed the last paragraph of the Professor’s commentary on Ariosa.

  11. 3

    One can throw a (rather large) wrinkle into the questions here by attempting to differentiate if the type of prior art is to be pertinent.

    That is, “sets” of prior art for 102 effect are simply not the same “sets” of prior art for 103 effect.

    Note that this has to do with having a consistent legal fiction of a Person Having Ordinary Skill In The Art for both 102 and 103, but differentiating – not in the legal fiction – but rather on what may serve in the different “sets” for the legal purposes.

    Then recall that the purpose (for 103) is NOT geared to what some real person (inventor) might personally read, but rather, what the “state of the art” is. This is the primary reason why the courts push the “effective date” to the filing date.

    Note as well that several times now I have asked – and as yet have not received a cogent reply – as to the existence and use of the so-called secret art that the Office does know about but may be in a state of flux as to “existing” for the legal fiction of PHOSITA.

    For example, I have put forth that filed applications that carry with them non-publication requests may create examination problems if their existence is ignored. Such are very much real prior art items – or to be more precise, may be deemed to be real prior art items when (eventually) published [IF they are eventually published]. One wrinkle of course is what happens if during prosecution, the applicant decides that she cannot obtain the desired scope, and let’s the NON-published non-provisional application become abandoned. Of course, the same “circumstance” applies to provisionals, but I reference non-provisionals to point out that the condition may be more extensive than people may want to admit.

    Upon abandonment of these non-published applications (both non-provisionals and provisionals), they no longer can serve as prior art (not even secret prior art), and are treated as if they never existed at all.

    1. 3.1

      Noted. Note also sword and shield issues arising under FtF.

      In a First to File system, operating for strong domestic US competitors X any Y, on Monday X will be using his pro filing date to get his nose in front of Y while, on Tuesday, in an unconnected duel, X will see Y using his own pro filing date to stop X’s patent. One would suppose that “pro as prior art” and “pro as filing backdater tool” issues ought to be set in harmony, under the AIA.

      The court might want to take this petition because i) my point is one which, under FtF, comes up all the time and ii) equality of arms, fairness and a level playing field for X and Y, is essential to the orderly and proper functioning of an FtF system.

      See also MM at 1.3.2.1.2 in this thread.

      1. 3.1.1

        I agree with what Malcolm has to say (not so surprising if one realizes that Malcolm is actually sticking to a legal point at his post at 1.3.2.1.2 – and doing so without his usual empty ad hominem). That is, as far as the comments go (he does not reach the “secret prior art and possible disappearance of same that I lay out).

        But I am also on the watch for your own “camel nose into the tent” with your comment about policy drivers such as “equality of arms, fairness and a level playing field” as those are notions of real persons and not notions of the legal fiction, and lead to the (albeit chosen, as is any Sovereign’s right) inconsistent defining of PHOSITA.

        Your hypo is a bit cloudy, as to the nature of sword and shield is unclear concerning what you may “feel” to be a proper balance (the why of which, one can presume to come from your forty plus times around the block that you are familiar with).

        1. 3.1.1.1

          You file a provisional at the USPTO. In a FtF landscape there are two reasons for that. First, you want the earliest date for your own claims. Second, you want the earliest date for your pro as prior art to use against your competitor’s claims.

          It would be strange if your own pro is effective in one of those tasks but ineffective for the other task. when drafting your pro, you should not have to choose which one of those tasks the drafting is required to discharge. The same drafting should be equally efective for both tasks.

          For example: can a pro without claims ever “count”as prior art?

          1. 3.1.1.1.1

            I am not sure what the point is that you are aiming for.

            Your question of “: can a pro without claims ever “count” as prior art?” is odd – Of course it can. Prior art is everything in a filing, not just claims. In fact, it is rare to receive an Office Action in which the Office uses claims as a basis for their prior art finding.

    2. 3.2

      “Upon abandonment of these non-published applications (both non-provisionals and provisionals), they no longer can serve as prior art (not even secret prior art), and are treated as if they never existed at all.”

      That is one of the key benefits of a non-publication request, if you are not going to get a patent, then at least you retain the possibility of having a trade secret.

  12. 2

    Glad to see this attempted cert petition, but think the “Question Presented” could have been written a lot stronger. E.g.:
    “Can the teaching contents of a publicly disclosed provisional patent application be created or removed as prior art smply by changing the claims in the subsequent application?”

    1. 2.1

      Considering the high percentage of U.S.-origin U.S. patent applications initially filed as provisionals, both the IPO and AIPLA should be filing amicus briefs here.

      1. 2.1.1

        I remain somewhat surprised by the under-utilization of the non-publication request path.

        1. 2.1.1.1

          Non-publication is not available to the majority of U.S. applications – all those which are either based on foriegn applications or are intended for priority date foreign filing. Plus, non-publication allows competitors or others to obtain later-filed patents on similar technology during its pendency, since the unpublished application is not available even as defensive 103 prior art until the patent finally issues, and it is vastly harder and more expensive to kill off such patents once they are issued.

          1. 2.1.1.1.1

            I certainly am not talking about the population of applications for which non-publications is not an option.

            And I am still waiting for a cogent reply as to what you merely assume with your “not available” comment.

            In other words, your reply kicks up dust by diverting to a condition that I am clearly not taking about, and then assuming the point to which an answer need be (cogently) given, without giving a cogent reasoning.

    2. 2.2

      PM: “Can the teaching contents of a publicly disclosed provisional patent application be created or removed as prior art smply by changing the claims in the subsequent application?”

      It’s possible to finesse this question to express a bit more of the nuance (e.g., “removed as prior art as of the filing date of the provisional patent application“) but I agree that Paul’s question gets closer to the nub here.

      I agree with Dennis that Dynamic Drinkware was the wrongly-decided case that set this issue up.

    3. 2.3

      The “publicly disclosed” part is a legal fiction, since provisionals are not published when filed. How about, “Can contents of a provisional patent application be removed as prior art simply by rewriting the claims in a subsequent non-provisional application?” Or, to get to the elephant-in-the-room question, “Did Congress sub silentio overrule the Supreme Court’s decision in Hazeltine Research when it enacted 35 usc 119(e)(1)?”

      1. 2.3.1

        Tommy, you too are missing the point as even non-provisionals can be not published (the non-publication request route).

        Treating the topic only as a “provisional” issue is a mistake.

        1. 2.3.1.1

          A non-provisional can be published (as a patent) the same day it is filed, regardless of any request for non-publication.

          1. 2.3.1.1.1

            Reply has been blocked – I note an answer above (see 10.1).

      2. 2.3.2

        TP, I like even better your Ariosa Diagnostics Inc. v. Illumina Inc. improved cert. petition “Question Presented” of “Did Congress sub silentio overrule the Supreme Court’s decision in Hazeltine Research when it enacted 35 usc 119(e)(1)?”

  13. 1

    This may be slightly off-point regarding this particular case, but does anyone have thoughts regarding the prior art applicability against third party inventors of any descriptive contents in a portion of a provisional application that never actually makes it into the regular application itself? Although the regular application is published and contains a cross-reference to the provisional application laid open for public inspection for priority purposes, are there any expectations by those of ordinary skill in the art that a provisional application could contain additional content not found in the regular application, or what it might be? Could an Examiner cite the published application and then try to rely upon the additional provisional application content not found in the published application itself?

    1. 1.1

      Like Prof. Crouch, I think that the Dynamic Drinkware rule achieves a suboptimal policy outcome. Still and all, I think that the CAFC’s affirmance of the PTAB’s decision in Ariosa v. Illumina demonstrates that it is not enough for a provisional to disclose a claimed invention, if that portion of the provisional is not carried over into the non-provisional. As the PTAB’s decision explains it (slip op. at 11):

      [A]s held by the Court of Appeals for the Federal Circuit in In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010), “an applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. nonprovisional application.” Thus, the material being relied upon as teaching the subject matter of the challenged claims must be carried through from that earlier filed application to the patent document being used against the claim.

    2. 1.2

      If an application claims priority to a provisional application and/or incorporates a provisional application by reference, the subject matter of the provisional is deem to be published at least as of the date the non-provisional is published because the subject matter of the provisional becomes accessible to anyone who wants to review it. Moreover, by incorporating by reference, the regular application is deemed to include all the content found in the provisional. So if the question is regarding published prior art, the content of the provisional is deemed to be published as of the publication of the non-provisional application. At least that’s my understanding.

      1. 1.2.1

        Your mention of incorporation by reference adds a stickier wrinkle that I do not find in Mark’s original question. Indeed, the very premise of his question is that the subject matter in question is not carried over into the non-provisional. If one really incorporates the provisional by reference, then it seems to me that there is no such not-carried-forward subject matter.

      2. 1.2.2

        My understanding is that the USPTO only permits “incorporation by reference” from (1) granted US patents and (2) US application publications. Otherwise, the actual written description of the subject matter, if essential, must be actually included in the specification itself. Thus, it would seem that incorporation by reference to a provisional application is not permitted, and the question remains as to how any actually unincorporated description from the provisional application is to be treated.

        1. 1.2.2.1

          Your understanding is off.

          If the incorporation by reference is to a provisional, THEN the provisional is made available (effectively published).

          1. 1.2.2.1.1

            My understanding is partly off and I stand corrected. However, the ability to incorporate anything by reference is not unlimited. There seems to be a distinction between essential and nonessential material (i.e. essential to support the invention claimed in the incorporating patent), as to what is and is not allowed to be incorporated by reference.

            Since late 2013, the incorporation by reference regulations have been set forth in 37 CFR 1.57(c)-(e). Previously they were only Official Gazette and MPEP guidance from the Commissioner of Patents given in answer to court directions in General Electric v Brenner, Comr. Pats. 407 F2d 1258, 159 USPQ 335 (Ct. App. D.C. 1968).

            Under the rule, ‘‘Essential material’’ may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. However, other material (‘‘Nonessential material’’) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.

            I assume a provisional application would come under the category “prior commonly owned U.S. application”, so that nonessential matter could indeed be incorporated by reference to a provisional.

            1. 1.2.2.1.1.1

              Thanks Mark.

              You are correct as to there being a difference as to what may be incorporated by reference based on “essentialness.”

              You are also correct to point out the “commonly owned” aspects – of which the AIA may indeed have a wrinkling effect.

    3. 1.3

      My recollection, if any reader can suppport it, is of a Fed. Cir. decision a few years ago in which Canadian patent drawings in the original Canadian patent application but not appearing in the patent were considered to be prior art?

      1. 1.3.1

        MPEP 2127
        Figures that had been canceled from a Canadian patent application before issuance of the patent were available as prior art under pre-AIA 35 U.S.C. 102(b) as of the date the application became publicly accessible. The patent at issue and its underlying application were available for public inspection at the Canadian Patent Office more than one year before the effective filing date of the patents in suit. Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 78 USPQ2d 1684 (Fed. Cir. 2006).

        1. 1.3.1.1

          Thank you!

        2. 1.3.1.2

          This supports my points to the late Ned Heller** as to inclusion of items in the image file wrapper (as opposed to only some end-published item) in what is considered published (or effectively published).

          Sadly, he never did fully join the dialogue.

          ** available at the links provided by the good professor.

      2. 1.3.2

        Ah, that makes an important distinction necessary to answering Mark’s question.

        Mark, do you mean to ask if the laid-open provisional has art effect as of the non-provisional’s publication date, or as of the provisional’s filing date.

        As I said above, I take it from the CAFC decision in this case that the not-carried-forward content of the provisional is not art as of its filing date. I certainly agree with Paul and Greenacre, however, that it is art as of the non-provisional’s publication date.

        1. 1.3.2.1

          I didn’t mean to ask as to the effective date the laid-open provisional matter, but whether it should be treated as prior art at all.

          I seem to recall a prior CAFC (?) case where the essential part of “publication” was “accessibility” to interested persons in the art, including whether, in practice, it could be located. The case had something to do with uncataloged PhD dissertations or something.

          If my recollection is correct, then the fact that provisional applications are not per se searchable or indexed, but only linked to the application publication or patent by a reference, and if there is no reasonable expectation from those in the art that the provisional application’s content would be sufficiently different from application publication itself to consult to see whether there was any additional non-included matters, then perhaps it would fail such an accessibility requirement of publication, even though formally laid-open for public inspection.

          I suspect most people only ever look at provisional applications when they want to verify eligibility for a priority date, and not as prior art.

          1. 1.3.2.1.1

            Correction: whether “any uncarried-over portion” of a provisional application should be treated as prior art at all.

            Obviously, the portion carried over into the regular application (whether claimed or not) will be treated as prior art.

          2. 1.3.2.1.2

            Mark: if there is no reasonable expectation from those in the art that the provisional application’s content would be sufficiently different from application publication itself to consult to see whether there was any additional non-included matters

            Speaking from my own experience looking for prior art and evaluating patent validity, the statement quoted above is not accurate.

            perhaps it would fail such an accessibility requirement of publication, even though formally laid-open for public inspection.

            I highly doubt this based on current case law. The document is very public and very accessible. That the provisional app is not readily found as a direct hit by searching the Internet is probably not going to control in most cases (an exception might be where the material in the provisional but missing from the utility app represents completely different subject matter from the utility app).

            I suspect most people only ever look at provisional applications when they want to verify eligibility for a priority date, and not as prior art.

            This is true of “most people”. But it doesn’t change the fact that there are a lot of people out there looking at provisionals as prior art.

            1. 1.3.2.1.2.1

              OK. Thanks.

            2. 1.3.2.1.2.2

              RE: But it doesn’t change the fact that there are a lot of people out there looking at provisionals as prior art.

              I’ll take your word for it. However, I don’t recall ever having seen a provisional application listed under “References Cited” on the front page of a patent. That could mean that instances of relevant uncarried-forward material in a provisional are sufficiently rare that only the corresponding published nonprovisional applications are cited in information disclosure statements.

              1. 1.3.2.1.2.2.1

                And I don’t recall ever seeing an examiner’s rejection based on information appearing only in a provisional application. I wonder, are examiners provided with a word-searchable database that includes provisionals?

                1. Tommy,

                  See my post below to Greg – your question too goes to something that the government could do with the information in its hands and has chosen NOT to do.

                  As far as I have been able to tell, provisionals are not examined at all (that is, not looked at, let alone catalogued or in any way noted) – unless – an applicant attempts to use their own provisional (and its contents) to get around “traditional” cited prior art from the Office. At that point, the Office may then (and only then) look into the contents of the applicant’s provisional and possibly provisionals of the “traditional” reference that they have chosen.

                  This is a matter of Office choice – not a matter of actually using what the Office may actually have in its hands. As such, the choice is one of mere expediency (and doubtless attempt to save costs), and does not reflect an examination of material in the possession of the Office. It is more of the “closed eyes” syndrome that I have noted in relation to other “secret prior art” situations.

          3. 1.3.2.1.3

            The thesis cases say that it is enough if the thesis is indexed by subject, but not good enough if the thesis is published, but only indexed by author’s name.

            Working from that principle, it seems to me that the not-carried-forward content of a provisional should be treated as art to the extent that it relates to the carried-forward content. That is to say, if I disclose two cancer treatments in a provisional, and then carry one of them forward to the non-provisional, but cut the other, then both medicines should be treated as in the art at least as of the non-provisional’s pub date. The skilled artisan of the cancer treatment arts can find the not-carried-forward treatment by searching for the carried-forward disclosure, so the non-carried-forward one is “indexed” (as it were) by the subject matter of its carried-forward sibling.

            If, however, I disclose an automotive transmission and a cancer therapy in a single provisional, and then carry forward only the cancer therapy to the non-provisional, the skilled person in automotive arts cannot find my hidden transmission disclosure, except by searching a wholly unrelated art field. The disclosure is effectively “indexed” only by inventor name, which is exactly the sort of index system that is not sufficient in the thesis cases. In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989).

            1. 1.3.2.1.3.1

              Interesting.

              Is this an issue of the Government not treating a known item fully (and thus improperly)?

              After all, the sum total of the “parent” is there in black and white and could be fully and properly indexed even if only one section is reflected in a “child” that makes that “parent” fully known.

              And it is not as if only “part of” the “parent” is laid open…

              It’s not as if it is not possible to provide multiple indexing, after all. And the government certainly does not get to decide to ignore subject matter given to it if (for example) the person provided two separate items with each disparate topic on its own. One would expect the government to do its indexing as to whatever it is given. The “secret” nature here then is of the government’s own choice of incomplete indexing. Certainly, one may view the choice as containing at least a measure of rationality, but where does that cross the line into rationalizing away the fact that it is still a government choice to NOT do something with information that it knows about?

          4. 1.3.2.1.4

            suspect most people only ever look at provisional…

            Be careful Mark to not confuse what most (real) people may or may not do with the actual “measuring device” of the legal fiction of the Person Having Ordinary Skill In The Art.

            It’s easy to “get lost” if you misplace the item which is the measuring rod. Any choice of inconsistency should be one made with full awareness that inconsistency is being embraced.

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