The Supreme Court has requested briefing from the US Solicitor General in the pending case of Ariosa Diagnostics, Inc., v. Illumina, Inc., Sct. Docket No. 18-109. The case focuses on core aspects of patent law — what “counts” as prior art.  The petition focuses on the prior art date of unclaimed information found in a published patent application when that information was is also found in a provisional application relied upon as a priority document.

Question Presented: Do unclaimed disclosures in a published patent application and an earlier [unpublished] application it relies on for priority enter the public domain and thus become prior art as of the earlier application’s filing date, or, as the Federal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?

In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), the U.S. Supreme Court provided a portion of the answer — holding that an unclaimed invention found in a later issued patent is “made public property” as of its filing date.  That statement though came as an interpretation of no-longer-active provision that the patentee must be “the original and first inventor.” Rev. Sts. § 4920.  In addition to interpreting a different statute, the court in Milburn also did not consider the priority question.

The relevant statute for this case is pre-AIA 102(e) — which also does not spell out what should happen in this situation — but nothing in the statute suggests to me that we should limit the prior art impact of priority filings to disclosures that are claimed in later patents or patent applications.  However, the Federal Circuit ruled in this case that 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 opposition briefing makes a big deal of the fact that this case focuses on the outgoing pre-AIA statute.  However, I expect that the ruling that the court makes here will carry-over post-AIA. [More on this in an upcoming separate post]

Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result

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


58 thoughts on “Priority

  1. 9

    It will be interesting to see the Sup. Ct. requested brief from the US Solicitor General. I would think the PTO would urge the SG to request overruling this Fed. Cir. Ariosa Diagnostics, Inc., v. Illumina decision. If that is what the SG brief urges, that should substantially improve the normal 1 in 300 odds that certiorari will be granted here, even though this is a pre-AIA case and presumably not applicable to AIA-subject patents. Especially if it is noted that almost all present [and many future] patent litigations are also on pre-AIA patents. [Also a substantial number of pending applications, including divisionals and continuations.]

  2. 8

    Seems like the Scotus micromanages the CAFC. It is interesting that they probably have to given that the Scotus is acting like legislators and enforcing new legislation on the CAFC. The only way they can do this is to micromanage.

    1. 8.1

      >>Greg DeLassus Section 8, 8: To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

      Greg claims that this section of the Constitution applies not only to domestic innovation but also to foreign innovation, e.g., India or China.

      This is the type of argument that is made on this blog to justify the burning down of the patent system.

      1. 8.1.1

        Greg does have a tendency to think in terms of some non-US Sovereign “One World Order” mindset and often forgets that patent law is, was, and remains a Sovereign-Centric law.

        Part of the problem there of course is that a certain set of “customers” (juristic persons) have NO meaningful tie or allegiance to any one sovereign, and would prefer to be able to play a “One World Order” game, being able to move assets and cost factors around the world without regard to any one particular Sovereign. To this set of “customers,” any “Sovereign effects” merely get in the way of the bottom line. To this set of “customers,” Efficient Infringement is an entirely rational justification, and to their short term bottom line approach, any one country trying to build any type of local innovation nucleus can only get in the way.


          Greg, fabricates nonsense to justify the burning down of the patent system is what he does. Likely he is driven by clients that don’t want a patent system and he gets on here with his propaganda.

          His assertions that 50% of claims are upheld at the PTAB for IPRs is equally absurd where he included procedural dismissals and agreements between the party to dismiss, etc.

          Dennis has definitely been a large part of the burning of the patent system.


            Another large part of this is the denial of how much the patent system has been reduced in the last 10 years.

            Patent value is about 20 percent of what it was pre-AIA.

            Patent applications from US inventors is flat for the last 5 years.

            Etc. And yet the Lemley types deny there is any reduction in the patent system.


            His assertions that 50% of claims are upheld at the PTAB for IPRs is equally absurd where he included procedural dismissals and agreements between the party to dismiss, etc.

            For whatever little this is worth, I tried on the other thread to post a response to acknowledge that you are right and I was wrong. The inclusion of dismissals and suchlike is absurd, and you are right to castigate me for that. Unfortunately, that post is (for reasons opaque to me, because I certainly did not use any heated language) caught in the trap. Maybe it will come through eventually.


              To be clear, I wrote that post days ago. It has, in other words, been trapped for several days, much longer than it usually takes for embargoed work to clear. As I said, I am not sure why it remains embargoed.

                1. I wrote it on 29 Oct and it depended from in the “remarks-director-meeting” thread. I know that I hit “post comment” on that one, because I got shunted to the “you have already said that screen” that pops up when one hits “post comment” twice.


            Greg… [l]ikely… is driven by clients that don’t want a patent system and he gets on here with his propaganda.

            I am an in-house counsel to an innovator pharma company. I assure you that my one-and-only client definitely does not want to burn down the patent system, and neither do I.


              If all of this is true Greg, then you really need to take stock of your views. The fact is that this blog generally provides a forum for anti-patent positions. And, there is a LOT of money that is being spent to try and burn down the patent system. The presumption should be– absent proof to the contrary– that any “professor” is really an advocate for the anti-patent lobby.

              We see themes of not recognizing the stunning decline in the value of patents, not recognizing that patent applications from inventions in the US are stagnant, etc.

              The fact is that everyone that I know that is a big player in patents see great weakness and sees a collapse coming. (Probably 40% would be reasonable.)

              Use your critical thinking to challenge the presumptions that are made on this blog.


                Use your critical thinking to challenge the presumptions that are made on this blog.

                Sound advice for all of us, no doubt.

  3. 7

    Perhaps an answer can be found in Article 4H of the Paris Convention (link to, to which the US is a signatory. That provision states the following:
    “Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements”.

    Thus, the priority date to which CLAIMED subject matter is entitled does not depend upon WHERE (ie whether in the description or the claims) in the priority application the relevant subject matter is disclosed. The only thing that counts is that the relevant subject matter is DISCLOSED.

    But then one has to remember that the later (priority-claiming) application, whilst it is pending, could be amended (or divided) to include a claim to ANY subject matter disclosed in that application, regardless of whether or not that matter was present in the claims of the application as originally filed.

    It is therefore clear that ANY subject matter disclosed in the later (priority-claiming) application that is also disclosed (in any way) in the earlier application is entitled to the priority date … as it would simply be absurd if entitlement to priority for the same subject matter were to suddenly change just because the matter is moved from the description to the claims of the late application.

    1. 7.1

      Treaty signatory status may not be sufficient, given that for the US, most treaties are not self-enacting into US law.

      So, your Paris item may not be as compelling as you may have thought.

      This renders your summary paragraph to be a bit circular.

      Mind you, I am already of the camp that an entire earlier document becomes “disclosed” (for its entirety) regardless of whether or not a later document is claiming any specific information from that earlier document.

      The question though remains (for any of that entirety of the earlier document):

      Is it the date of the second document which is in effect the date of the mechanism of uncovering that prior hidden document?

      Is it the date of the prior hidden document itself?

      Part of the underlying issue here goes deeper than the mere status of that earlier document being a provisional or non-provisional. (Let’s not forget that a mechanism still exists to convert — and not just claim priority — a provisional into a non-provisional).

      A foundation piece of US patent law — directly tied to the Quid Pro Quo bargain that must remain in place — is the notion that until grant ***, a patentee remains in charge of the ability to nullify the attempted deal. And by executing and nullifying that attempted deal, the subject matter MAY become as if it never existed (as prior art).

      *** it is with the obfuscation involved in pre-grant publication that throws a massive wrinkle into the equation. It absolutely must be remembered that a pre-grant publication changes the Quid Pro Quo deal in a very detrimental manner for the patentee.

      We moved from

      a “you — the Office — get to share” in exchange for “my inchoate right has become a full Private personal right”


      a “you get to share” in exchange for a chance for a [now with Oil States] Public Franchise right.

      Two additional items to keep in mind:

      This “modified deal” can be reverted back to the original deal for non-provisionals with the avenue of non-publication requests.

      Also, Congress realized a bit of their cheapening of the deal and instituted Patent Term adjustment which was supposed to guarantee that applicants had a meaningful view of what examination would yield PRIOR TO publication, and thereby could still “nullify” their material becoming prior art by abandoning after a first shot examination on the merits and prior to publication.

      Publication, while effectively “done” in some instances (such as filing abroad where the patent deals were never the same as the deal that the US sovereign had chosen), needs to be seen as the detriment to the patentee that it is.

      Once published, the Office has no real stake in the game. They have already “gotten theirs” and there is nothing further to be gained (for them directly through the Quid Pro Quo). This of course leads to slow and shoddy examination, partiality to a Reject Reject Reject mindset, and the overall view that the US Quid Pro Quo should be “Harm-onized” away from Right to mere “chance” for Right.

      Those who understand what helped drive US innovation to be the world leader (typically dubbed “maximalists”) understand the difference between the old US “deal” and the modified US “deal.”

      It is under that backdrop — in that larger context — that this “oddity” of something being or not being prior art should be understood.

      As it currently is, “secret prior art” very much remains a factual matter, and that “secret prior art” may or may not realize itself into being actual prior art (as that term is to be understood in its legal context), based solely on decisions not yet made by owners of that “secret prior art.”

      One need resist an uncritical and blind “well that must be absurd” view that negates this future ability to decide what is – and what is not – prior art.

      1. 7.1.1

        Hmmn. A prerequisite of membership of the PCT system is membership of the Paris Union (link to Thus, if the US does not apply the Paris Convention in its national laws, or at least those national laws applying to ex-PCT applications, then this calls into question whether it can remain a PCT Member State.

        The thing about these pesky international systems is that they provide a common rulebook that all members must follow. Whilst there may, on occasion, be a degree of flexibility on precisely how the rules are implemented, there is very often a minimum standard that must always be observed. Article 4H of the Paris Convention is one of those minimum standards. Thus, if US law does not meet that standard, there could be serious consequences.

        Also, it is important to remember that the US has been a signatory to the Paris Convention since 1887 (link to This implies that current patent law, as well as the immediate pre-AIA law, really ought to be interpreted by reference to the provisions of the Paris Convention … as those provisions were in place (and applied to the US) many decades before the US patent laws in question came into existence.

        By the way, my “it would be absurd” comment should really be interpreted as “it would be illogical”. However, if you are saying that the US courts are perfectly entitled to ignore logic when arriving at a judicial interpretation, then point taken.



            Thanks for pointing out the CAFC case law on the Paris Convention (not being self-executing in the US).

            From discussions relating to TRIPS, as well as this thread on the Paris Convention, it is becoming increasingly clear to me that the US adopts a blatantly hypocritical approach when it comes to international conventions. That is, on the one hand, the US is quick to complain when another country does not honour its obligations under an international treaty. On the other hand, it is rather lax when it comes to honouring its own obligations under the same treaties.

            Whatever happened to the rule of law?


              In the case of TRIPS non-compliance, an aggrieved state can bring a WTO process against an allegedly non-compliant state. I am not sure what recourse one Paris convention state might have against another Paris convention state for breach of the treaty. Does anyone know if a breach of Paris convention obligations can also be adjudicated at the WTO?


                Good question. The honest answer is that I do not know. However, I would have thought that it would put at risk US membership of several key international treaties (including the PCT) that are underpinned by the Paris Convention. Whilst there might not be any obvious way of tackling braches of the PC, there has to come a point where those breaches are so serious that they amount to a country effectively withdrawing from that Convention … and so also withdrawing from the international treaties that rely upon it.

                Question is, which country or countries would ever get the ball rolling on triggering such consequences?


              The rule of law is exactly why our country (generally) does NOT have self-executing treaties.


                All very well, but the inevitable consequence is that other countries will view any agreement or treaty signed by the US as being nothing more than empty promises.

                Also, other countries might feel free to adopt the same approach of paying lip service to obligations under international treaties whilst at the same time ensuring that their national laws do not honour those obligations. If this were to happen, and it were to damage the economic interests of the US, what could then be done? If the US were to complain in those circumstances, it would end up being a case of those living in glass houses throwing stones.

                1. What you say is true.

                  Nonetheless, any other country dealing with the US should already know how the Rule of Law works in this country.

                  Perhaps the lack of anyone challenging stems from the (possible) fact that countries already know the engaging in treaties with a country whose treaty negotiation and signing portion (executive branch) is NOT the portion that has power to enact law (legislative branch).

                  This has been known world wide for some 242 years now.

                  As to the point of “what if other countries do so,” – ok, what if?

                  I don’t see any harm — except perhaps to those pursuing a “One World Order” scenario.

                  That and the Efficient Infringers of multi-national juristic persons (corporations).

                  I will embrace the “ugly American” moniker in one aspect and place US interests above any “One World Order” view.

                  Patent law has always been, is now, and ever shall be a Sovereign-centric type of law.



            Upon reflection, I have a question for you.

            It has been over 130 years since the US signed the Paris Convention. After all that time, how is it that US law is STILL not (fully) aligned with the provisions of that Convention?

            Forgive me for being blunt, but the passage of time would appear to whittle down US legislators’ possible excuses for inaction to a pretty short (and unflattering) list, namely:
            (1) Arrogance (“We don’t have to follow the rules, that’s for everyone else to worry about”);
            (2) Ignorance (“What’s the Paris Convention?”); and
            (3) Incompetence (“We can’t organise ourselves sufficiently to make the necessary amendments”).

            The same applies to provisions of other international treaties (such as certain parts of TRIPS) that are decades old and yet still not implemented in US national law.

            I get that the legislature can decide not to honour international obligations to which the executive has signed up. However, it is a poor show when this can happen simply by inaction, that is where the legislature omits to consider / debate those obligations and to take a vote on whether it wants to honour them. At least if there were a debate and a vote then the courts would have a legislative record to fall back on, instead of just simply turning a blind eye to all international treaties that are deemed “not self-executing”.


              You forgot one excuse:

              “We the legislators choose not to.”

              You asked about Rule of Law and then turn around and do not give respect to the way that the rule of law works in the US.

              What you call a “poor show” is how our Legal system is set up.

              Your way would violate the rule of law and make the President (who has treaty negotiation authority) into a Supreme Legislator. Way back in 1776 we purposefully threw out such a system.

              I “get” that you do not like the “non-self-executing” aspect (having had now twice my remind you of it, and then you only “move forward” when Prof. Crouch shows you an article), but you would do better to accept that that is how the law (and the Rule of Law) works. That is an important aspect of Sovereignty that needs to supplant some of that “One World Order” thing that you have going on.

              “Ugly”…? Sure.

              But for me as a US citizen, I will take my Sovereign choices that make my country better (as a bastion of innovation protection) any day of the week over some One World viewpoint.

              If that is what you are calling arrogance, then I will reply that it is justified arrogance (which, no doubt, is where some of the perception of “ugly” comes from).



                Yes, it is arrogance. And not in a good way.

                If you are invited to play in a game that has a set of rules, then accepting the invitation but proceeding to play by your own rules is plain arrogant.

                The situation in the US is perhaps more akin to a one person from a couple accepting an invitation without first checking with their partner. From my point of view, there is absolutely nothing wrong with establishing a system where the invitation is only truly accepted if both members of the couple agree. It is called a dualist system and the constitutions of lots of countries work that way.

                However, what has happened in the US with the PC and TRIPS does not follow any such logical path. This is because the legislators have not accepted the preconditions of the invitation but have nevertheless turned up to play the game (by their own rules). If they truly had the courage of their convictions, then the only logical course of action would be to decline the invitation.

                And what is your obsession with this “One World Order” nonsense? Do you complain about how there is “One Country Order” when it comes to patent law within the US? Do you bemoan how the individual states have been forced to bow down to federal law? Or do you accept that it makes sense to have a common rulebook to ensure that there are no barriers to trade between the states? And, if so, why do you struggle to view international treaties in that light?

                1. And what is your obsession with this “One World Order” nonsense? Do you complain about how there is “One Country Order” when it comes to patent law within the US? Do you bemoan how the individual states have been forced to bow down to federal law?

                  The nonsense my friend is pretending that some “Over” sovereign exists that may be “higher” than the US Sovereign.

                  You analogy between State and Federal misses precisely because OUR Rule of Law engaged that duality, recognized it, and incorporated into our Rule of Law. No such occurrence happened for trans-US sovereignty.

                  Any type of plea of “does it make sense” misses the point of what IS — and importantly, what is NOT.

                  International treaties are simply not of the same nature — and the different nature should not be lost (as you apparently are eager to do. If any foreign Sovereign wishes to emulate OUR Sovereign choices, and thereby make things “seamless,” that is THEIR prerogative, of which I would fully respect.

                2. This is because the legislators have not accepted the preconditions of the invitation but have nevertheless turned up to play the game (by their own rules).

                  Near as I can tell, Confused, they have been following the Rule of Law of our Sovereign.

                  I think that you may not just like how the “game” gets played – as Greg also indicates (and as I have indicated in the past), I would love some other sovereign to step up and put it to the US that what the US Supreme Court has done in their own re-writing of patent law does not accord with PC or TRIPS or whatever.


                The US deciding to “play the game” by its own rules is not what gets my goat. It is the cherry-picking approach that annoys me, namely the “take the benefits but don’t honour the obligations” approach to international treaties.

                Put another way, my view could be summarised as: play by your own rules if you wish (and as is your right), just don’t expect anyone else to agree to play with you.

                1. It is the cherry-picking approach that annoys me, namely the “take the benefits but don’t honour the obligations” approach to international treaties.

                  It appears that you are annoyed by the fact that a proper Rule of Law permits any such “cherry picking.”

                  That’s kind of how the Rule of Law works though.

                  ALL other sovereigns remain free and clear to do as they wish, including doing as the US does.

                  (btw, I “get” just why you are perturbed – it’s just that such is indeed permissible given the “rules of the road” and the fact that there is no “over” of a Sovereign, and patent law remains a Sovereign-centric type of law no matter what international treaties attempt to accomplish.


                To be clear, I am NOT annoyed by the fact that “cherry picking” is permitted under national laws, including US laws. My issue is with the general attitude and approach of US legislators, in the sense that they far too often (in my view) decide to take the option of “cherry picking”… and seemingly never suffer the consequences of doing so.

                I guess you could say that I have a problem with those who display blatant hypocrisy and bad faith / bad manners. However, like you say, them seems to be the rules of the road.

                There may perhaps come a time when other sovereigns get fed up with that approach, however. That is, it could be that making others suffer from an “America first” attitude could end up with an “America alone” scenario.

                1. For all of your feelings and labels, there is simply nothing wrong with an America First attitude.

                  And such is simply not “must be tied to” an America Alone.

                  What Adam Smith had to say may well apply to the Sovereign level, and a healthy competition to rise may well enable all to rise.

                  There is no — and no need for — apologies for this type of arrogance.

                  I also note that your “sliding” indicates more of a “there should be an Over Sovereign” of the very One World Order that I outright reject. We are free to agree to disagree, and when it comes to the mere “want” of that One World Order nature, we will disagree. Best then not to label with feelings that which traces to something that is NOT a foundation.


              To be very fair, how certain are you that the U.S. is not in compliance with our Paris convention and/or TRIPS obligations? I am unaware of any formal determination by any competent legal authority that we are out compliance.



                Re: the PC, Dennis kindly provided a link (link to that illustrated an instance of US law being out of alignment. Whilst it does not relate to Article 4H, it does establish the point that it is almost certainly futile to try to persuade the courts to use the PC as a guide to interpreting priority in the US.

                With regard to TRIPS, that was discussed on other threads (including a recent one relating to 101). To my knowledge, there is no US court ruling that explicitly addresses the significance (or otherwise) of provisions of TRIPS. However, my view is that the case law on 101 has created significant divergence from the eligibility standard in TRIPS.

                1. I would urge you to pass and re-read Rath. The Rath court did not conclude that the U.S. is out of compliance with our Paris Convention obligations. It decided that even if our Lanham Act does not fully comply with the Paris Convention, that our domestic courts would be obliged to apply the Lanham Act as written. That is not the same thing as concluding that the Lanham Act is actually out of compliance with the Paris Convention. Rather, the Rath court simply declined to reach the question of what the Paris Convention requires.

                  The concurring opinion in Rath actually wrote to point out that the Lanham Act does comply with the United States’ Paris Convention obligations. In other words, the idea that the U.S. is ignoring its Paris Convention obligations is entirely hypothetical. No court of competent jurisdiction has actually concluded as such. To be sure, Dr. Rath complained that the U.S. is ignoring its Paris Convention obligations, but his home country (Germany) has not raised any complaints. Near as I can see, the assertion that we are ignoring our treaty obligations rests mostly on a sour-grapes charge by a losing litigant—not exactly a reliable source.

                  As for TRIPS, I happen to agree that Mayo/Myriad/Alice put us out of alignment with our TRIPS obligations. As I noted above, however, failures to comply with TRIPS can be adjudicated in the WTO. So far, none of our treaty partners have seen fit to bring an action against us. I suspect that this is—at least in part—because many of our treaty partners are just as much out of compliance (the UKIPO has essentially admitted that the EPO is out of compliance with regard to patents for software). I would be delighted to see one of our treaty partners drag the U.S. into the WTO on the grounds that Alice violates TRIPS, but until and unless they do so, it is a bit thick to complain that we are approaching our treaty obligations as a sort of scofflaw. It appears that most of the TRIPS parties are scofflaws to one aspect or another, and if all parties are willing to tolerate the others’ cheating as a price to pay for being allowed each’s own cheating—well, that is just how the game is played, evidently.

                2. “I would urge you to pass and re-read…”

                  Sorry, “I would urge you to pause and re-read…”

                3. What’s that then Paul? “Essentially admitted”. What sort of weasel words are those then? Sorry, I do not see from your link to some 2001 opening remarks by Commissioner Hartnack, to stimulate discussion on patentability of software inventions, any kind of admission whatsoever. Come, be serious, please.

                4. Greg,

                  The long, rambling and wholly unconvincing concurring opinion in Rath is not fooling anyone. It is plainly intended as a judicial fig leaf to try to prevent unpleasant consequences stemming from a decision which plainly states that the US courts do not need to be concerned over whether the Lanham Act complies with the United States’ Paris Convention obligations.

                  The main problem as I see it is that all too often the wording of US national laws diverge wildly from international treaties, for example by using different language from, not duplicating key provisions of, or containing additional restrictions not present in, such treaties.

                  The dispute in Rath is a good example: there is nothing in the PC that even remotely resembles the “primarily merely a surname” rule in US law. If one is to believe that said rule is compliant with the PC, then one has to accept the rather unlikely proposition that it is entirely duplicative / superfluous, ie that it merely describes a sub-set of marks that are unallowable under different grounds. If this is truly the case, then it would have been far more sensible to fully align the wording of the Lanham Act with the provisions of the PC, and to then continue to object to surname-based marks on the basis that they are either descriptive or devoid of distinctive character.

                  To be fair, you are correct that the US is far from being alone in dishonouring its treaty obligations. However, from my perspective, US legislators are repeat offenders who appear to be determined to stick as closely as possible to established US practice, regardless of the chaos that this causes in situations where that practice plainly diverges from the true meaning of the treaty in question.

                  If the legislators were truly intent on honouring treaty obligations, then there are obvious steps that they could take, including replicating all relevant treaty provisions, avoiding “gold-plating” those provisions and/or including clauses that stipulate that certain provisions are intended to have the effects provided for in the relevant treaties. The fact that they have not done this (even for issues as fundamental as priority) is particularly telling.

                  By the way, I think that it would be difficult to argue that the EPC is not compliant with TRIPS when it comes to computer software. This is due to the meaning of “invention”, which encompasses only TECHNICAL subject matter. Given that the EPC permits the grant of patents directed towards software that produces technical effects, I don’t think that any WTO panel is going to worry about the absence of patent protection for non-technical software.

                5. MaxDrei,

                  Maybe what Paul is referring to is that the “as such” and “per se” of “no software” has no teeth and software is routinely patented in the EPO…

                  (not to put words in his mouth, mind you, but that’s the take away I gather).


                  There you go again, making a fundamental mistake: “If the legislators were truly intent on honouring treaty obligations, then there are obvious steps that they could take,

                  It is NOT up to legislators to “truly honor treaty obligations” because you keep on forgetting that treaties are NOT self-enacting, and the treaty negotiation power is in a different branch from our law writing power. To do as you suggest would be to NOT honor our Rule of Law.

                  This is a known fact of dealing with the US for the past 242 years.

                  Instead, our legislators are supposed to put US citizens first – no matter what the executive may have negotiated with a treaty.

                  Interesting historical footnote (as an aside, merely anecdotal, as I cannot remember the reference), but this stems in part because at the time of our country’s formation, there was a vibrant dislike of being drawn into the affairs of other nations because of treaties, and our First Chief Executive George Washington actively shared that dislike of being tied to the wills of NON-US Sovereigns.

                  Very much a part of our political DNA, is this aversion!

                6. Sorry Greg, and Paul, that in my 3:02 am post today I picked up on something Greg wrote but carelessly addressed myself to “Paul”.

                  As anon points out, the EPC Art 52 exceptions to eligibility are cabined by an “as such” restriction, and statutory exclusions are traditionally construed narrowly. Where do you, Greg, get the idea that the EPO is in breach of GATT-TRIPS by excluding all software patents from eligibility? The Hartnack pre-2000 attempt, in Opening remarks at a “Software Parents” conference, to stimulate debate isn’t enough on which to base your assertion, is it?

  4. 6

    Some interesting philosophical angles with this one.

    Is there a difference in kind between ideas expressed in a specification and ideas expressed in a claim, or is this arbitrary CAFC sausage-making*?

    Does disclosing an invention but not claiming it count as a “filing” in the sense that the first person to the office with the invention fully described gets priority, regardless of when claims actually issue or what their precise final forms are? Otherwise, wouldn’t random pace differences during prosecution affect priority?

    Isn’t this the actual meaning of “first to file?”

    Does this implicate the legal fiction assuming the knowability of prior art that is published somwhere, but won’t surface until litigation? Isn’t reducing the role of that legal fiction much of the point of first-to-file?

    * I’m not making a value judgement about judicial sausage-making. Sometimes it works, and is validated by bona fide pursuit of justice, and sometimes not.

    1. 6.1

      More good points re this bizarre Fed. Cir. decision Martin. Also note that there is not even any legal requirement for ANY claims in a U.S. provisional application. And no requirement that final patent claims have to claim the same specification content as other predecessor applications from which priority is claimed. [Often not in the case of voluntary divisionals.]

  5. 5

    So what happens if I write an omnibus claim that reads something like “We claim: any and all methods and apparatuses described and disclosed herein”, which of course then becomes amended via a quick amendment before examination.

    Or what happens if I open a re-exam and then claim the unclaimed features (broadening or not)? Then the prior art date changes, 10 years later? Something doesn’t seem right.

    1. 5.1

      Indeed. These and other bizzare consequences of this Ariosa Diagnostics, Inc., v. Illumina, Inc. Fed. Cir. decision were noted in the comments on its first blog.
      It would indeed be interesting if takes going back to Alexander Milburn Co. v. Davis-Bournonville Co. to overcome Ariosa. It can certainly be argued that Milburn was part of the 1952 patent law codification and thus required for a proper reading of the 1952 statute.

    2. 5.2

      I love the re-exam/reissue hypo. I had not considered that, but you are quite right that if the current holding stands, one can have a retroactive changing of the scope of prior art years after a patent grants. That cannot be what Congress intended when enacted section 102 (pre- or post-AIA).

      1. 5.2.1

        I had not considered that, but you are quite right that if the current holding stands, one can have a retroactive changing of the scope of prior art years after a patent grants. That cannot be what Congress intended when enacted section 102 (pre- or post-AIA).

        Yes, this extreme weirdness definitely made the CAFC decision difficult to accept. There’s not anything as compelling on the other side. Sure, it’s a tiny bit “strange” to permit the filing date of the provisional to be its “effective” publication date (when it was not publically available on that date), but –policy-wise, at least — there’s nothing too upsetting about that bit of fiction (and the CAFC’s “exceptions” only compound whatever “problems” flow from that fiction).

        For those who seek clarity, stability and sensibility in patent law, the way forward here is plainly not the path that the CAFC has taken.


          Why do you involve this concept of “effective publication date”? The question is simply whether the content of the provisional is prior art.




            The question is not only whether it is prior art, but what is the date of that item as prior art.

            The date of the mechanism for uncovering is very often critically different from a filing date of (unpublished) material.

            There exists a noninsubstantial amount of items that may or may not become (note the future tense) prior (note the past tense) art based on decisions not yet made as of today (note the present tense).

            This underlies, and thus intersects, the enjoining discussions of “secret prior art,” to which many of the posts on the topic share my dialogues.

            This also calls for a bit more nuance than calling something “absurd” when a larger context is in play.

            See post 7.1 above for more context.


              I am not convinced. 102(a)(2) states:
              (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
              So, the question is wether the content of the provisional is part of the issued patent or published application even the content is not reproduced in the issued patent or published application.


                Can you explicate further? I am not seeing the point that you are trying to make (in connection with you not agreeing with what I posted).


                1. 102(a)(2) does not define prior art based on the date the subject matter was published. I am not aware of the statute involving an “effective publication date.”
                  Per 102(a)(2), if some subject matter is described in a published application, or a granted patent, this subject matter is prior art as to the effective filing date of the application publication or granted patent (whatever that means, since only the effective filing date of a claimed invention is defined in the statute, but I assume this effective filing date is the earliest filing date that discloses the subject matter).
                  The question is, if the subject matter is not described in the published application or granted patent, but it is described in a provisional application to which the published application or granted patent claims priority, is it prior art under 102(a)(2) as of the effective filing date of the publication or patent (usually the filing date of the provisional).

                2. Thanks for the additional, PiKa,

                  I think that I see what you are saying, and for what it is worth, your summary question is the same one that I stated, and my view is that any material in the early item (here, nominally a provisional, but as I have provided, this may play out with a non-provisional under a non-publication request in the same manner), is “fair game” and IS fair game for the earliest effective date (which is the filing date and not the publication date).

                  We are probably of similar mind here.

  6. 4

    Of course, as those readers who recognize ongoing conversations may remember, the “point” here is NOT just limited to provisional applications.

    Prior non-provisional applications (with non-publication requests) may well mirror the situation with provisionals.

    This too impacts the Office decision to NOT use all of the material that itself has possession of (even if but to make a provisional rejection, as was once how such “secret prior art” was routinely treated).

    1. 4.1

      The continued existence of non-security related non-publication requests is one of the major flaws of the US patent system.

      They serve no purpose except to undermine other aspects of the system.

  7. 3

    came as an interpretation of no-longer-active provision that the patentee must be “the original and first inventor.” Rev. Sts. § 4920

    I am not sure that the characterization of “no-longer-active” leaves a proper understanding.

    Perhaps instead: “That provision has been recognized as absorbed elsewhere.”

  8. 2

    Could you give a specific citation for “However, the Federal Circuit ruled in this case that 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.” I read this decision as saying “However, the Federal Circuit ruled in this case that a published application can count as prior art as of its provisional filing date — but only if at least one feature is actually claimed in the application.” The basis is that if there are no features described in the provisional application that are claimed in the non-provisional application, the non-provisional application is not entitled to claim priority back to the provisional at all.

  9. 1

    “However, the Federal Circuit ruled in this case that that a published application can count as prior art as of its provisional filing date —”

    The only reasonable explanation for calling secret information prior art is that someone knew about the secret information. What difference can or should it make as to whether that information is reflected in a claim? What is the justification for declaring it is only prior art if claimed?

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