Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926)

Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926)

Syllabus

1. Where a patent application fully and adequately disclosed, but did not claim, the thing patented to a later applicant alleging a later date of invention, the later applicant was not the “first inventor” within Rev.Stats. § 4920. P. 270 U. S. 399.

2. As regards “reduction to practice,” a description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an application. P. 270 U. S. 401.

MR. JUSTICE HOLMES delivered the opinion of the Court.

This is a suit for the infringement of the plaintiff’s patent for an improvement in welding and cutting apparatus alleged to have been the invention of one Whitford. The suit embraced other matters but this is the only one material here. The defence is that Whitford was not the first inventor of the thing patented, and the answer gives notice that, to prove the invalidity of the patent, evidence will be offered that one Clifford invented the thing, his patent being referred to and identified. The application for the plaintiff’s patent was filed on March 4, 1911, and the patent was issued on June 4, 1912. There was no evidence carrying Whitford’s invention further back. Clifford’s application was filed on January 31, 1911, before Whitford’s, and his patent was issued on February 6, 1912. It is not disputed that this application gave a complete and adequate description of the thing patented to Whitford, but it did not claim it. The district court gave the plaintiff a decree, holding that, while Clifford might have added this claim to his application, yet as he did not, he was not a prior inventor. 297 F. 846. The decree was affirmed by the circuit court of appeals. 1 F.2d 227. There is a conflict between this decision and those of other Circuit Courts of Appeal, especially the Sixth. Lemley v. Dobson-Evans Co., 243 F. 391. Naceskid Service Chain Co. v. Perdue, 1 F.2d 924. Therefore a writ of certiorari was granted by this Court.

The patent law authorizes a person who has invented an improvement like the present, “not known or used by others in this country, before his invention,” etc., to obtain a patent for it. Rev. Sts. § 4886, amended by Act March 3, 1897, c. 391, § 1, 29 Stat. 692. Among the defences to a suit for infringement the fourth specified by the statute is that the patentee “was not the original and first inventor or discoverer of any material and substantial part of the thing patented.” Rev. Sts. § 4920, March 3, 1897, c. 391, § 2, 29 Stat. 692. Taking these words in their natural sense as they would be read by the common man, obviously one is not the first inventor if, as was the case here, somebody else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back. But the words cannot be taken quite so simply. In view of the gain to the public that the patent laws mean to secure, we assume for purposes of decision that it would have been no bar to Whitford’s patent if Clifford had written out his prior description and kept it in his portfolio uncommunicated to anyone. More than that, since the decision in the case of the Corn planter Patent, 23 Wall. 181, it is said at all events for many years, the Patent Office has made no search among abandoned patent applications, and by the words of the statute, a previous foreign invention does not invalidate a patent granted here if it has not been patented or described in a printed publication. Rev. Sts. § 4923. See Westinghouse Machine Co. v. General Electric Co., 207 F. 75. These analogies prevailed in the minds of the courts below.

On the other hand, publication in a periodical is a bar. This as it seems to us is more than an arbitrary enactment, and illustrates, as does the rule concerning previous public use, the principle that, subject to the exceptions mentioned, one really must be the first inventor in order to be entitled to a patent. Coffin v. Ogden, 18 Wall. 120. We understand the circuit court of appeals to admit that, if Whitford had not applied for his patent until after the issue to Clifford, the disclosure by the latter would have had the same effect as the publication of the same words in a periodical, although not made the basis of a claim. 1 F.2d 233. The invention is made public property as much in the one case as in the other. But if this be true, as we think that it is, it seems to us that a sound distinction cannot be taken between that case and a patent applied for before but not granted until after a second patent is sought. The delays of the patent office ought not to cut down the effect of what has been done. The description shows that Whitford was not the first inventor. Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon as the Patent Office did its work, although, of course, amendments might be required of him before the end could be reached. We see no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact when Clifford had shown knowledge inconsistent with the allowance of Whitford’s claim, [Webster] Loom Co. v. Higgins, 105 U. S. 580, and when otherwise the publication of his patent would abandon the thing described to the public unless it already was old, McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424. Underwood v. Gerber, 149 U. S. 224, 149 U. S. 230.

The question is not whether Clifford showed himself by the description to be the first inventor. By putting it in that form, it is comparatively easy to take the next step and say that he is not an inventor in the sense of the statute unless he makes a claim. The question is whether Clifford’s disclosure made it impossible for Whitford to claim the invention at a later date. The disclosure would have had the same effect as at present if Clifford had added to his description a statement that he did not claim the thing described because he abandoned it or because he believed it to be old. It is not necessary to show who did invent the thing in order to show that Whitford did not.

It is said that, without a claim, the thing described is not reduced to practice. But this seems to us to rest on a false theory helped out by the fiction that, by a claim, it is reduced to practice. A new application and a claim may be based on the original description within two years, and the original priority established notwithstanding intervening claims. Chapman v. Wintroath, 252 U. S. 126, 252 U. S. 137. A description that would bar a patent if printed in a periodical or in an issued patent is equally effective in an application so far as reduction to practice goes.

As to the analogies relied upon below, the disregard of abandoned patent applications however explained cannot be taken to establish a principle beyond the rule as actually applied. As an empirical rule, it no doubt is convenient, if not necessary, to the Patent Office, and we are not disposed to disturb it, although we infer that originally the practice of the Office was different. The policy of the statute as to foreign inventions obviously stands on its own footing, and cannot be applied to domestic affairs. The fundamental, rule we repeat, is that the patentee must be the first inventor. The qualifications in aid of a wish to encourage improvements or to avoid laborious investigations do not prevent the rule from applying here.

Decree reversed.

38 thoughts on “Alexander Milburn Co. v. Davis Bournonville Co., 270 U.S. 390 (1926)

  1. 4

    Here is a little bit more context: In Micon v. Burton-Dixie Corp., 147 F.2d 19, 21, the Court of Appeals for the Seventh Circuit said in 1945: “Novelty is negatived by a full description, in the specification of a prior public patent, of the subject covered by an American patent, even though that subject was not covered by any of the claims of the prior patent.” Courts cite traditionally to to Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) (Holmes, J.) (announcing the The Milburn rule); and Minerals Separation North American Corp. v. Magma Copper Co., 280 U.S. 400 (1930) (Holmes, J.). The predecessors to Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) are: Sundh Elec. Co. v. Interborough Rapid Transit Co., 198 Fed. 94 (2d Cir. 1912); Lemley v. Dobson-Evans Co., 243 Fed. 391 (6th Cir. 1917).

    1. 4.1

      Super comment. The well-established and no longer controversial (if it ever was) “Milburn Rule”. “Whole contents” then, and not its rival “prior claiming”.

      Been there. Done that. Back in 1926. Bit late to the harmonisation party then, the European Patent Convention, in 1973.

      1. 4.1.1

        Shall I take your silence below as concurrence, MaxDrei?

        1. 4.1.1.1

          I see you responded below – thanks

        2. 4.1.1.2

          (additional thoughts below)

  2. 3

    It is said that, without a claim, the thing described is not reduced to practice. But this seems to us to rest on a false theory helped out by the fiction that, by a claim, it is reduced to practice.

    This reminds me of another dialogue that some of us have had in regards to how (or how much) of a prior family member — both non-provisional and provisional — may serve as prior art “for what it teaches” vis a vis that only that that reaches to a claimed item (purportedly) may so serve.

    (I seem to remember there being a “cusp” in that dialogue)

  3. 2

    I wonder if Dennis seeks, with this post, to stimulate discussion about the relative merits of a “prior claiming” and “whole contents” approach to sorting out “who gets what” amongst rival filers at the PTO.

    The issue arose and took much time to settle, back in 1973, when the European Patent Convention was being drafted. Fortunately, the Convention drafters got it right.

    1. 2.1

      Or not.

      They made a sovereign choice, as is their right.

      As we have both noted though, MaxDrei, your “convention writers” have chosen to not have a uniform view of prior art when it comes to applying that prior art for each of novelty and non-obviousness (vis a vis submitted “secret” prior art).

      Neither “right” nor “wrong,” and certainly a Sovereign’s choice.

      1. 2.1.1

        That being as it may, anon, is there not, even as we speak, some case or other on “secret prior art” wending its way through the upper regions of the US court system? I suppose, therefore, there is considerable debate, even as we write, about which fork in the road the courts of the USA might choose. Is not this posting by Dennis supposed to stimulate that debate?

        Novelty and obviousness perform different and complementary functions. The novelty provision is there to ensure that the patent goes (amongst rival independent filers) to the one who was the “first”. The obviousness provision is there to stop patents being granted on contributions to the state of the art that are (assessed through the prism of the PHOSITA) not inventive.

        So of course the definition of the prior art ought to differ, as between novelty and obviousness. Say we both, independently of one another, file a provisional without claims at the USPTO , you on Monday next week and me on Friday this week. Funnily enough, there is a degree of overlap between your disclosure and mine. In Layman’s Terms, we both thought of the “same” Inventive Concept. Independently, mind.

        Of course, there is a ton of difference in detail between your content and mine and neither of us knows which feature combination will deliver the blockbuster commercial success we both crave. Such situations happen a lot, these days.

        The PHOSITA next Monday knows nothing about your filing or mine. We are both inventive over the state of the “non-secret” art.

        But how to decide equitably which one of us (as between you and me)comes out of it with which issued claims. That’s the challenge for the law.

        1. 2.1.1.1

          The statement of “The PHOSITA next Monday knows nothing about your filing or mine.” is legally incorrect.

          You (again) seem to want to insert a real person in place of the legal fiction of the Person Having Ordinary Skill In The Art.

          And while it is indeed true that novelty and non-obviousness are different, the difference in our views is unrelated to that fact. Such then is a non-sequitor to our dialogue.

          A more on-point distinction is that the legal fiction serves as a State of the Art keep out zone, and that is governed NOT by what you or I personally (and as real people) know or see, but by the legal fiction of PHOSITA.

          As I have noted, the treatment OF PHOSITA for this notion of “keep out” (even as the particulars are — and remain — different) are consistent in regards to the “secret” prior art.

          Your Sovereign’s choice is to be INconsistent, using the “secret” prior art as “keep out” for lack of novelty but not for obviousness (and real people cannot see such in BOTH cases.

          As I have discussed, this is a Sovereign’s choice to be inconsistent. But let’s not pretend that somehow there is not inconsistency.

          1. 2.1.1.1.1

            … damm autocorrect:

            “Inconsistency” ==> “inconsistent”

          2. 2.1.1.1.2

            …or to put it another way,

            Your statement of “not knowing” is not even true for your own Sovereign — for the different purpose of defeating novelty.

            Your Sovereign has made a choice to have the same legal fiction “know” AND “not know” the same item.

            Now, this may be more pedantic and not worth as much candle, but it grates when such is not simply admitted for the inconsistency that it is.

            Why this may not be worth too much candle does relate to the point that novelty and non-obviousness are different.

            How our sovereign realizes this difference is not whether or not the PHOSITA “sees” the item — as the item. Instead, our Sovereign chooses to treat the seen item as to whether or not that seen item has a legal effect for the different “keep out” zones. The “rules” for those different keep out zones are what differentiates.

            For example, factors important for legal effect for obviousness such as “level of skill” and for novelty such as “taught as is in a single reference” are applied differently by the same PHOSITA to the same seen art to determine whether that same seen art meets the different legal aspects of being “prior” for the different legal functions.

            Thus, differences are accounted for while maintaining a more consistent notion of the legal fiction.

          3. 2.1.1.1.3

            Now we are getting closer. To the extent that it is fair to categorize as “secret prior art” the content of those who filed at the PTO before you, the EPC is indeed:

            “using the “secret” prior art as “keep out” for lack of novelty but not for obviousness”

            This is its way of ensuring that exclusive rights go only to the one who was “First to File”.

            I am not happy with your notion that the state of the art is a “Keep out Zone”. It is the claim that performs a “Keep Out” function.

            The state of the art is the exact opposite. One hopes that the state of the art is free to use by everybody, and will be used by everybody, to enrich society.

            Conversely, we want people to invent, to file and to get exclusive rights that are commensurate with their further contribution to the state of the art. I assume you agree, that a fair distribution of rights, as between rival independent filers of similar, but not identical, subject matter, is a basic requirement in any properly functioning patent system.

            1. 2.1.1.1.3.1

              As to: “ “using the “secret” prior art as “keep out” for lack of novelty but not for obviousness”– This is its way of ensuring that exclusive rights go only to the one who was “First to File”.

              Your second sentence does NOT explain the difference in the first sentence.

              BOTH 102 and 103 (and your equivalents) ensure that exclusive rights go only to those that deserve them.

              Each – in different ways – provide that only the First to File is the one ensured as being the one deserving.

              Do you have an explanation that has substance as to why you want to treat the legal notion of PHOSITA differently for 102 and 103?

              It appears that you are not applying PHOSITA — at all — in regards to 102, as you seem to focus only on a “race” aspect between two real people.

              While there is certainly an aspect of that race, that aspect is not the sum total of what PHOSITA is for.

              If anything, you are not using PHOSITA at all in your race scenario.

              Is that a fair restatement of your position?

              As to: “I am not happy with your notion that the state of the art is a “Keep out Zone”. It is the claim that performs a “Keep Out” function. — The state of the art is the exact opposite.

              No. You have confused the subject of the term “keep-out zone.” That subject is the inventor, as the second portion of your statement is indeed the driver for creating a keep-out zone of other people trying to obtain patent rights.

              Perhaps you though that my use of “keep-out” was somehow talking about keeping others out of a patent protected zone. Not sure how you came to take that meaning though, as the context of my use is pretty clear.

              As to your last paragraph, I am not sure what point it is that you are striving for. Why would you ask the questions that you ask there? And why do you ask in terms of “real people” again? You seem intent on setting up a conflation between that “real people” aspect and the legal notion of PHOSITA, yet again.

              If anything, your last paragraph (as near as I can tell) actually supports my view that BOTH 102 and 103 serve to provide that patent protection is only granted to those who win the race AND are otherwise deserving.

              There are — of course — differences in how “otherwise deserving” is determined, but that is not due to an inconsistent PHOSITA. Rather, it is due to the differences themselves in what 102 and 103 entail.

            2. 2.1.1.1.3.2

              Thinking more on “One hopes that the state of the art is free to use by everybody, and will be used by everybody, to enrich society.” it dawns on me that you may have some other notion for “state of the art.”

              It appears that you may have a notion of “state of the art” not including anything that may still have protection to anybody.

              Is your “state of the art” limited to public domain items?

              That, I dare say, would be a rather novel meaning to invoke for state of the art.

              1. 2.1.1.1.3.2.1

                Notwithstanding whatever take you have on “state of the art,” your statement of “we want people to invent, to file and to get exclusive rights that are commensurate with their further contribution to the state of the art.” is also a bit confusing.

                Given that (as I understand it) you will not use the legal notion and instead insist on a real-person notion (which flows from not using “secret” prior art for 103), your statement is not reached as far as the words “further” and “exclusive” are concerned.

                I suppose that this may be tied to a notion that State of the Art is only for public domain items, but such a view then draws the notion of “further” to include instances of overlap. Both a first filer and a second filer may provide items further than public domain items, while overlapping each other. But in such an overlapping case, has the second filer provided “further” to ensure a deserving patent? In any sense of exclusively further? If your view of state of the art goes merely to “public domain,” then “further” and “deserving” run smack into overlap and non-exclusive. It’s as if the notion of obviousness is not even in play.

                1. And here is Art 56 of the EPC, setting up the obviousness enquiry, relative to everything already “made available” to any member of the “public”.

                  As far as I know, only the USA runs an obviousness enquiry against a database that includes secret prior art. It is unique, perverse, turbo-FtF, giving everything to the first filer and nothing to any party who, one day later and completely independently files an application directed to much the same inventive concept but full of useful enabled disclosure that is indisputably novel over everything in the other application filed one day earlier.

                  Art 56 EPC: An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

                2. MaxDrei,

                  Your “relative to everything already “made available” to any member of the “public”.” does NOT mean that available aligns with “Public Domain” (as in, something BOTH in the public view AND free and clear of any IP protections or limitations). In other words, let me clarify what “public domain” indicates, as that term means MORE THAN merely available to the public. Something may well be “available,” but may not be FREELY available. I had hoped that that distinction would be self-evident, given as we are discussing patent law items.

                  As to “As far as I know, only the USA runs

                  So what? It is NOT the point as to which Sovereigns have chosen which. Please do not kick up dust with such non-sequiturs.

                  As to “but full of useful enabled disclosure that is indisputably novel over everything in the other application filed one day earlier.

                  Why are you trying to confuse novelty and obviousness? We both have noted that the two items serve different purposes. Again, this comment is a complete non-sequitur.

                  As to your quote then of Art. 56 itself. why? We BOTH already know that the EPC (Sovereign) has chosen what it has chosen. Your listing the choice of the Sovereign speaks nothing to the point we are discussing. Such a non-sequitur cannot help move our conversation forward.

                  Your reply here is incredibly misaimed. You insert at least three non-sequitors to the actual point presented to you, and you have not come close to addressing that point.

                  Please try again.

                  With focus.

              2. 2.1.1.1.3.2.2

                So, here is Art 54 (1-3) of the EPC, defining the “state of the art”.(1)
                An invention shall be considered to be new if it does not form part of the state of the art.
                (2)
                The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
                (3)
                Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

                1. As noted above, “made available” is not the same as “made FREELY available.”

                  Further still, the CHOICE of the Sovereign in defining “state of the art” is NOT consistent!

                  You (the Royal You) use “state of the art” for the equivalent of 102 that is a different “state of the art” for the equivalent of 103. Yes, I “get” that THAT is what the EPC regs state.

                  That is precisely one of the points that I am trying to get you to accept the plain fact of.

                2. anon, about Art 54(3) and 56 EPC, you write:

                  “That is precisely one of the points that I am trying to get you to accept the plain fact of.”

                  No need to keep on trying. I accept the statutory provisions of the EPC as “plain fact”.

                  What I cannot swallow is all your stuff about the EPC PHOSITA being “inconsistent”.

                3. Well obviously, the need to keep on trying pertains to the point of my comments and NOT to the vacuous non-sequitor that you inserted.

                  It’s somewhat humorous that you claim “no need” to the “point” that you present and that I callout as not pertinent. You’ve basically confirmed my counter to you that you have submitted a non-sequitor instead of addressing my point straight on.

                  Maybe we can get to this from another angle.

                  Do you (the Royal you) use the concept of PHOSITA in view of novelty? In any sense of that legal test?

                4. …or perhaps from this angle:

                  Given that the date of filing in the Art. 54 requirement is speaking of a second filing, and that a first filing (but not publication) has been made prior to that second filing…

                  Does your Art. 54 (2) read — or can be read —(with emphasis added):

                  The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.”…

                  …in relation to the bold emphasis:

                  for novelty — PHOSITA understands the state of the art to include the first filed but non-published item?

                  But, for obviousness — PHOSITA understands the state of the art to NOT include the first filed but non-published item?

                5. This in reply to anon at 06:03 hr.

                  Art 54 EPC is written so as to avoid deeming earlier EPO filings, not yet published, as having been in any way “made available” to the public.

                  The logic is that the “state of the art” for obviousness is everything “made available” to any member of “the public” in any way whatsoever. All non-secret art is “in” and all secret art is “out”. Patent applications are not “made available” to the public as of their filing date because Applicants have the right to withdraw them after filing, in time to stop their A publication.

                  For novelty, however, the state of the art has to be expanded, to include any such EPO A publications. Otherwise there is nothing to stop later filers getting patents on subject matter already enabled and filed by an earlier filer.

                  This is why I don’t equate 54(3) with the “any other way” of 54(2) EPC.

                6. Art 54 EPC is written so as to avoid deeming earlier EPO filings, not yet published, as having been in any way “made available” to the public.

                  In any way…?

                  Any?

                  Even for novelty?

                  You answer this with:

                  For novelty, however, the state of the art has to be expanded,

                  And yet, you have continued to fight the plain fact as I have put to you that you (again, the Royal you) do NOT have a consistent PHOSITA in relation to the very admission that you make here.

                  Why is it so very hard for you to simply say: “anon, you are correct.”…?

                7. This should then bring us full circle to the fact that the EPC “Sovereign” has made a choice (as is its right) to NOT be consistent.

                  As I have noted, and to “piggy-back” (again) off your proffered “defense,” of “nothing to stop later filers getting patents on subject matter already enabled and filed by an earlier filer.” – realizing that to EACH of 102 and 103**, the common purpose (for their different ends) is the SAME “stop later filers from getting patents on subject matter… by an earlier filer.”

                  Once again, we are on a cusp. Will you this time embrace what I have been trying to teach you?

                  ** Is it “OK” for you that the rules prevent non-novel type of duplication but embrace the possibility of obvious type of duplication?

                8. anon I do not accept your premise that:

                  “EACH of 102 and 103**, the common purpose (for their different ends) is the SAME “stop later filers from getting patents on subject matter… by an earlier filer.””

                  The reality is that the novelty section and the obviousness section are there for different purposes. Both filters on patentability are necessary. One but not the other is not enough.

                  In any patent staute, the novelty provision is there to stop the state of the art being patented twice. By contrast, the obviousness provision serves a different purpose, namely to frustrate the construction of road blocks to progress in the useful arts, road blocks that are the consequence of permitting exclusive rights to be obtained on subject matter that is “lying in the road ” (Latin ob Via) of technical progress.

                9. You say that you do not agree with me — and then post reasoning that DOES agree with me, AND makes my point.

                  Take a look at my posts again.

                  Answer my direct points to you.

                  Get beyond that cusp (finally)

                10. MaxDrei,

                  Maybe you can share just what part of the premise of

                  EACH of 102 and 103**, the common purpose (for their different ends) is the SAME “stop later filers from getting patents on subject matter… by an earlier filer.””

                  are you not accepting?

                  The premise fully acknowledges that 102 and 103 are different mechanisms, so there can be no issue there (and your repetition of “but they are not the same” is unavailing to explain your nonacceptqnce). Both serve to “keep out” or prevent the issuance of a patent to later fliers based on what existed before, and each does so in its own way, with its own legal constraints (as I have noted above).

                  What then of the premise is not accepted?

                  To me, it appears that you are struggling mightily with finding a way to NOT recognize that it is mere Sovereign choice to have an inconsistent PHOSITA for each of 102 and 103. I “get” that you are providing a reason why the choice has been made for an inconsistent PHOSITA, but I do not get why you continue to deny the existence of that inconsistency.

                11. This in reply to anon at 07:46 today.

                  When rival inventors file independently of each other, both on dates before either publishes (or tolerates publication of) any of their own disclosure, on subject matter that is not obvious in relation to everything hitherto made available in any way to any member of the public, both are in line to receive a patent on the same invention. Art 54(3) EPC is the filter to restrict grant of exclusive rights to the earliest of the rival filers.

                  There was a well-known teaching example, years ago, about a polymer composition, in which there were no less than nine rival filers, all oil companies, and all independent of the other eight. Sorting out which oil company got which enforceable rights was quite complex, even without adding obviousness into the mix.

                  If you are going to use the identical definition of the state of the art for both novelty and obviousness, there is no need for two patentability filters. Just the obviousness one will do. It will take out subject matter that lacks novelty even faster than it takes out that which is obvious.

                  But assumoing one decides obviousness relative to everything already made available to the notional member of the public, and no secret prior art, Art 54(3) is needed. But only for the limited task of divvying up rights between rival unpublished applications.

                  It is perverse and unfair and a hindrance to progress in the useful arts, in a First to File patent regime, to do that division with the obviousness provision.

                12. both are in line to receive a patent on the same invention.

                  Funny that – our Sovereign has chosen to not allow that.

                  If you are going to use the identical definition of the state of the art for both novelty and obviousness, there is no need for two patentability filters.

                  Absolutely false – and likely a source of your reluctance to admit what is as clear as day.

                  It is perverse and unfair and a hindrance to progress in the useful arts, in a First to File patent regime, to do that division with the obviousness provision.

                  Those are merely feelings. Hey, I respect the fact that your Sovereign has chosen differently (and has that right TO choose differently), but such ad hominem clearly shows a lack of respect to the FACT that other Sovereigns are free to choose as they may.

                13. What I cannot swallow is all your stuff about the EPC PHOSITA being “inconsistent”.

                  cf

                  If you are going to use the identical definition of the state of the art for both novelty and obviousness, there is no need for two patentability filters…

                  It is perverse and unfair and a hindrance to progress in the useful arts, in a First to File patent regime, to do that division with the obviousness provision.

                  So,… NOT identical somehow is not consistent and to be actually consistent is perverse and unfair and 0h My!

                  Cusp of something else…

  4. 1

    A nearly century old example of a judicial disputation, eliminated by the 1952 and 2013 patent statutes, to get to logical results. I.e., I am not in favor of teaching what is now statutory patent law with casebooks of old cases like this one.

    1. 1.1

      Agreed. Painful to read, too.

    2. 1.2

      I would take issue with the characterization (as broadly implicated) that “secret prior art” is necessarily eliminated by the Patent Acts of 1952 and 2013.

      Leastwise, as to those items of secret art thus yet not published, but within the possession of the Office.

      Likewise as well, that such is merely a “judicial disposition,” as this — much more so than many judicial interventions — is of an interpretative nature (as compared to a making of common law law writing).

    3. 1.3

      I agree Paul — My patent class primarily focuses on the language of the statute first and foremost.

      1. 1.3.1

        Do you cover the lament from Rader in the end banc Alice, or the recent concurrence remarking on the “unworkability” of the NON-text, judicial re-writing of 101?

    4. 1.4

      Who among us does not recall the case of the Corn planter Patent? It behooves us to return on occasion to this prior reckoning, as time may permit, and gaze with refreshed eyes upon the reasoned disputation writ therein.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture