Solicitor General Weighs-In on Prior Art Date of Provisional Applications

The pending petition in Ariosa v. Illumina focuses on a narrow but important issue of prior-art status of a provisional patent application.  Really, the question is: what is the “prior art date” of a provisional patent application?

Whether disclosures in a published application that refers back to an earlier filed provisional application are prior art as of the filing date of the provisional application.

The basic answer that we received from the Federal Circuit is “sometimes.” A provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).

This impacts a large number of US patents: Although I have not recently measured, I my expectation is that most non-provisional patent applications add some amount of new matter beyond their provisional priority documents.  If that new information makes it into some of the claims — the result is that the provisional filing date will be immaterial with regard to prior art (under current Federal Circuit precedent).

CVSG: The petition for certiorari is well written, and the Supreme Court called for the views of the Solicitor General. The SG has now submitted his brief — joined by the USPTO — suggesting denial of cert.

In its brief, the US Gov’t argues that the Federal Circuit is totally wrong in its analysis, but that this case is not a good vehicle for reviewing its approach because petitioner’s argument is also mistaken.

The government brief follows my approach outlined in my 2015 Dynamic Drinkware post:

Anyone who works with prior art knows that this [priority requirement] 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.  My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

The government brief agrees that interpretation of proper priority claim under “119(e) has no bearing on the date on which a patent application qualifies as prior art under Section 102(e). There is no textual basis for using that provision’s priority rules to backdate patent applications sought to be relied on as prior art.”

Rather, the Government argues that, under the statute, all provisional applications count as prior art as of their filing dates once relied upon for priority by a published non-provisional application. According to the government brief, publication of the underlying application also lays-upon the file history and effectively publishes the provisional as well.  Thus, at that point, the provisional counts as “‘an application * * * published under section 122(b)’ and therefore constitutes prior art as of its own filing date.”

The Government brief acknowledges that Section 122(b) states flatly that a provisional application “shall not be published.”  Although this appears to contradict their statement that the PTO is publishing those applications, the Government brief argues that the statement only refers to provisional applications abandoned without being relied upon for priority.

Where, as here, a provisional application has been incorporated by reference into a later non-provisional application, the referenced provisional application effectively becomes part of the non-provisional application. Under those circumstances, the USPTO’s obligation to publish the non-provisional application encompasses the contents of the provisional application.

In its Brief, the Government explains that “the Federal Circuit has not directly addressed the question whether a provisional application may itself qualify as prior art under Section 102(e)(1), without recourse to Section 119(e).”

The brief here suggests a GVR (Grant-Vacate-Remand) order from the Supreme Court to address this particular issue on remand.

Solicitor General Brief

Interesting to read this particular brief for style.  Although this is certainly a complicated area, the SG brief did not really attempt to simplify it in any way — perhaps to further discourage the Supreme Court from taking up the issue.

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Note here that this particular case focuses on “old” pre-AIA Section 102(e).  Although the AIA substantially altered Section 102, I don’t believe that the alterations will change the outcome in this case.  As such, the case is important.

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

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

 

60 thoughts on “Solicitor General Weighs-In on Prior Art Date of Provisional Applications

  1. 15

    anon has invited me to produce a hypothetical, to explore the “prior art effect” of a pro filed at the USPTO one year before a non-pro which goes on to be laid open by the USPTO 18 months after the filing date of the pro.

    OK then. Think about a claim to a depilatory composition which has as active ingredient a salt of acid X. That might be nonsense but never mind. It is only for the sake of debate.

    Applicant A finds that the Na salt works and files a pro (no claims) with this worked Example.

    One week later, Applicant B files a pro with K as the cation in salt X in a worked Example.

    Both A and B work hard and 49 weeks later B files non-pro, with Examples for Li, Na and K and claims the group of alkali metal cation salts of X depilatory.

    One week later, A files non-pro, also with Li, Na and K Examples and the same “alkali metal” claim.

    Which of A and B get which claim to issue?

    Under the EPC, the answer is self-evident. B gets “Alkali Metal – Na”, because B was first to file for that invention. A gets “Na” because A was first to file for that invention.

    How would it work out under the AIA?

    1. 15.1

      You have NOT done as I asked.

      I asked that you FIRST come to understand the legal contexts, and only then develop you hypothetical.

      Let’s see you show that you understand the legal contexts as I asked.

      1. 15.1.1

        You and I have argued interminably about your idea that the EPC sets up not one but two different persons skilled in the art. Our readers will not thank us for going again over old ground, not least because it is irrelevant to my question.

        My question again: What, under US law, is the answer to my hypo?

        1. 15.1.1.1

          Your hypo is irrelevant until you grasp the law to which you are setting your hypo in.

          DO NOT ask questions until you know the context in which you want to ask those questions.

          Whether or not “readers thank us” is absolutely immaterial to the point here. You state that you are doing what I ask when you are NOT doing what I ask.

  2. 14

    Once you are in First to File country, you need to treat the disclosure in a provisional application the same, whether for its priority-conferring effect or for its prior art effect.

    Otherwise, you have a gap, a gap that lawyers will immediately exploit. And because of that gap, you will find that you cannot decide cleanly which of rival Applicants was the “First to File” on any given invention. And because you can’t decide, you end up having to give more than one rival the rights that derive from First to File status, or having to deny all rivals any rights, or giving the rights to a party other than the one which, for those skilled in the art, was plainly the First to File on the invention in issue. Lawyers, this is not a good way forward.

    It is quite interesting, from outside the USA watching the USA get used to the consequences of switching to First to File.

    1. 14.1

      Max, the expectation of headaches that come with first to file caused many practitioners to say, not here, please.

    2. 14.2

      whether for its priority-conferring effect or for its prior art effect.”

      Repeating yourself does not lessen the inanity of you ignoring the points that I provided.

      1. 14.2.1

        You allude (I suppose) to your comment at 71111, to the effect that priority is “personal” but prior art is not. i do not see how your “point” gets you anywhere useful.

        In the competition for patent rights between A and B, in a First to File jurisdiction, with interlaced filing and priority dates, and each of A and B relying on their respective priority date and each confronted with their rival’s priority date as prior art, what is “personal” for A is prior art for B, and vice versa. So a priority date issue is both personal and not personal. You announce to us that a priority date is a personal matter. In the context of the discussion here, why should that insight impress me at all?

        1. 14.2.1.1

          Your “lack of seeing” is a YOU problem.

          I am merely pointing out critical characteristics of the law that you want to gloss over (but should not gloss over).

          I cannot force you to drink from the well to which I have brought you. Only you can decide to put the effort into seeing why the difference I present is not only in fact a real difference, but what that difference means.

          Priority and prior art – even as they use similar terms simply have to be understood in their proper legal context.

          By the way, I do “get” why this is more difficult for you to grasp than may be for others, as you are full into a “my Sovereign is best” mode, and that Sovereign (as is their right) has chosen to be inconsistent in its application of the legal person of PHOSITA, and has to a degree mixed that legal person with the notion of real persons.

          The US Sovereign — and our law — has not made that same choice, so here, those that understand the law, can “see” that contextual separation a lot easier.

    3. 14.3

      Otherwise, you have a gap, a gap that lawyers will immediately exploit. And because of that gap, you will find that you cannot decide cleanly which of rival Applicants was the “First to File” on any given invention.

      Claptrap.

      You raise a “boogeyman” and provide zero connection from that scare to the condition that you assert results from that scare.

      Your argument is inane.

    4. 14.4

      Max, we are not the only one’s with some confusion on this subject. You have the European and others split of prior application prior art into “novelty only” prior art [vaguely and not always clearly like U.S. 102] and full prior art [like 103] only after that application is published.

      1. 14.4.1

        No confusion, Paul, about the distinction between obviousness and lack of novelty, anywhere in the world except in the USA. And that is mainly thanks to the scarifying effect of Art 54(3) EPC, which is the patentability provision that you would have me believe so confuses you.

        We have a novelty filter to prevent any re-patenting of earlier subject matter. We have an obviousness filter serves a different but complementary purpose, namely to stop the issue of patents lying in the road (ob Via) of technological development. It helps to avoid confusion, to keep those different objectives in mind. it helps to divvy up fairly, between rival Applicants who all file at the PTO for much the same subject matter on much the same date. These considerations, both logical and pragmatic, are what prompt the Article 54(3) distinction in the EPC, to which you allude.

        Unique to the USA is the extension of the obviousness filter to the “secret” prior art constituted by the disclosure content of patent applications filed a day before yours and not PTO published until 18 months after your patent application was filed. It is this invocation of such subject matter in filtering your claims for obviousness (I repeat, unique to the USA) which strikes me as unfair, illogical, damaging to legal certainty, counter-productive to the promotion of progress in the useful arts and liable to bring confusion to all with new technology who are contemplating investment in the USA.

        I guarantee you, Paul, with a bit more thought about Art 54(3), any confusion you are suffering will soon evaporate.

        1. 14.4.1.1

          No confusion, Paul, about the distinction between obviousness and lack of novelty, anywhere in the world except in the USA. And that is mainly thanks to the scarifying effect of Art 54(3) EPC, which is the patentability provision that you would have me believe so confuses you.

          Wow, that is some super heavy spin there MaxDrei.

          First and foremost, you attempt to denigrate the US choice, when (as I have shown you) THAT choice is actually the one that plays most properly to consistency.

          I “get” that other Sovereigns may well choose to NOT be consistent and I respect those decisions. But I do not engage in the rather bizarre 1984 Doublespeak that you want to engage in.

          Not only is your denigration NOT deserved, it is also NOT on point.

          Further, you mention EPC Article 54(3) (which I take to be the specific article that Paul alludes to), but then you spin this as something that “so confuses [Paul].”

          Paul is NOT saying, admitting, or even remotely implying that HE is confused by your law. YOU clamor to say that YOU are not confused, and try to spin this as Paul MUST be the one that is confused.

          You then introduce truisms (the fact that novelty and obviousness serve different legal purposes) as some type of “this is why this is so clear.” Of course, this is utter balderdash, as those same exact types of differences are true in all sovereigns that provide those different sections of law, and there is NO advantage — per se, and in particular — to the fact that the EPC also provides the different sections of law for their putatively different reasons.

          ALL jurisdictions (no matter their choice of form) give credence to the “logical and pragmatic” nature of having these different sections of law.

          What you then label as “unique” is merely what I have shown to you to BE the natural and logical extension of being consistent in using the legal (and not conflating with the real person) context of PHOSTIA.

          I “get” your feelings as to why a different decision may be (and to take you at your word, that ALL of the rest of the world, has) made.

          But your “feelings” do NOT change the fact that US decision IS one based in consistency of application of the meaning of the legal term.

          Another way of looking at this may stem from the different foundational meaning to the underlying barter, the underlying Quid Pro Quo, that served as the foundation for the unique US experiment: Particularly, OUR Sovereign “deal” was the exchange of a fully granted legal property right (to the inventor) for the ability of the Sovereign to merely publish.

          Other Sovereigns (and notably the one that you think to be the absolute Gold Standard and all others therefore must be “wrong”), provide a substantially DIFFERENT “deal” in that the exchange for the Sovereign side of the deal of publishing, the inventor obtains merely the opportunity to have his inchoate right examined – and there being NO actual full legal property right in the direct mix of the deal.

          Keeping this critical element in mind then, not only was the US version of “First to Invent” substantially different than “First to File” (and even our current step towards a more universal approach with our still different “First Inventor to File” approach), but the underlying basis of the bargain was — and is — substantially different.

          I have often stressed to you the importance of recognizing – and respecting – the differences in Sovereigns.

          You still lack that respect.

          And it shows in multiple ways as you “spin” what Paul has stated and want to make it seem that Paul is the one confused.

          You remain the one confused because – in part – you remain unwilling to acknowledge that the choice of your Sovereign (perfectly fine for the Sovereign to make) is NOT a consistent legal choice.

          Do not take this as a put down of the choice of the Sovereign.
          Take this as a put down of your unwillingness to understand what is actually going on.

    5. 14.5

      In the light of the feedback, I offer another way of looking at the issue. Consider rival Applicants at the USPTO. Both have filed a provisional. Both are US nationals, US resident. Both rely on the priority effect of their own pro and both rely on its prior art effect against their rival’s pro. If, under the law, the prior art effect of a pro is stronger than its priority date- conferring effect, then neither rival can get its claims to issue. But if its prior art effect is weaker than its priority date-conferring effect, then both parties can get through to issue.

      It is not in accordance with the underlying principles of First to File patent law that the outcome of a priority competition between A and B is that either both or neither of A and B gets through to issue. For any given claim, one and only one of two rival Applicants should prevail, namely the one who was “First to File” and the law must provide a functioning mechanism to deliver that result. It does under the EPC. Does it (yet) under the AIA?

      1. 14.5.1

        If, under the law, the prior art effect of a pro is stronger than its priority date- conferring effect,

        You are STILL trying to confuse and conflate two different aspects of law.

        Priority and Prior Art, even as they use similar terms, MUST be understand in their own separate legal contexts.

        You are STILL conflating a legal PHOSITA with a real person effect.

        As I have pointed out – this is quite natural for you, as you are in essence “nose-blind” to the smell of the inconsistency that your Sovereign has permitted to be imbued in the legal notion of PHOSITA as that legal term is then used in the different sections of law pertaining to the different items of novelty and non-obviousness.

        You still show that you do not understand this direct point, so any hypothetical that you construct that is bound in the lack of appreciation of the proper contexts is simply bound to NOT be instructive.

        First try to understand.
        Then construct a hypothetical to try to make your point.

        You “claim” that you have a “functioning mechanism.” But do you really? Do you have such in view of the US standard of consistency?

        You seem to NOT grasp just what you are talking about.

        Still.

  3. 13

    So as I understand it, the Solicitor General brief makes these points:

    (1) Section 119(e) is irrelevant here because provisional applications THEMSELVES qualify as prior art under Section 102(e)(1) (pre-AIA). This is because, according to the SG brief, once the NON-PROVISIONAL application publishes, the provisional application separately qualifies as “an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent,” under 102(e)(1). In other words, publication of the non-provisional application effectively “published” the provisional application because it is made publicly available, such that it independently qualifies under 102(e)(1) without regard to the requirements of 35 U.S.C. 119.

    (2) The SG brief goes on to say that Supreme Court should deny cert because the Federal Circuit has never ruled on this cool argument, and if the SG is right, then the Court would never even have to reach the 119(e) issue. So you should remand and let the Federal Circuit address this issue first.

    It is a somewhat disingenuous way to try to convince the Supreme Court to deny certiorari–set up an alternative and clever argument that no one is talking about that will save the day, even though the argument under close inspection fails on the merits. The argument in the SG brief has been known among patent practitioners for years, but no one has taken it seriously, and that’s why it’s not discussed in the previous decisions about Section 119.

    The argument fails because Section 122(b)(2) itself directly identifies provisional applications as an exception to the publication requirement. And the regulations governing publication, 37 C.F.R. 1.211, flat out say that provisional applications are not published. So it’s hard to make a straight-faced argument that a provisional is “an application for patent, published under section 122(b),” pursuant to 102(e)(1), when section 122(b) itself makes clear that what is “published” is not the provisional.

    The SG brief rests on the semantic wordplay that once the provisional becomes publicly available it should be considered “published.” But 102(e)(1) doesn’t just say a “published” application; it requires “an application… published under section 122(b).” The SG argument tries to read “under section 122(b)” out of 102(e)(1). And the argument ignores the longstanding distinction between an application “published” under Section 122 and an application that is open to public inspection. And there is nothing in the statute to support the SG’s argument that the exception to publication in 122(b) only applies to “abandoned” provisionals in which no non-provisional application was ever filed. This argument has no basis.

    I really hope the Supreme Court takes this case, and actually considers the important 119(e) issue presented and doesn’t get head faked by this easily debunked distraction.

    1. 13.1

      ” This is because, according to the SG brief, once the NON-PROVISIONAL application publishes, the provisional application separately qualifies as “an application for patent, published under section 122(b),”

      I don’t think that he is arguing that they “separately” qualify. He argues that they become part of the non-prov when the non-prov publishes. As he states later on down the article. In so far as the brief may say “separately” somewhere, that is a misleading/confusing way of wording what his argument actually is and is mistakenly leading people to believe he is arguing something he is not.

      “The SG brief rests on the semantic wordplay that once the provisional becomes publicly available it should be considered “published.” But 102(e)(1) doesn’t just say a “published” application; it requires “an application… published under section 122(b)”

      Nah bruh, his argument is that the prov literally becomes a part of the non-prov, which itself (the non-prov) gets published under 122b.

      Although I agree with you that the setup is bonkers. Ultimately the SG’s way is the only way that will make sense and eventually congress would need to correct this if the SG doesn’t get the way they want. We as a gubmit can’t be having priority dates getting handed out without those dates making them available as prior art. It goes against the whole “first inventor to file” mantra/setup congress adopted.

      1. 13.1.1

        I respectfully disagree, the SG does argue that the provisional separately qualifies as prior art under 102(e)(1), provided that the non-provisional application publishes. Don’t take my word for it, here is what the SG argues on pages 9-10 of its brief:

        “In contrast to the parties, the United States does not believe that Section 119(e) bears on prior-art determinations under Section 102(e). In our view, although Section 119(e) does not provide a basis for treating a non-provisional application as prior art as of the date of an earlier-filed provisional application, a provisional application may itself qualify as prior art under Section 102(e). If the provisional application has been published in connection with a related non-provisional application,
        then it may qualify under Section 102(e) as ‘an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent.'”

        So there you have it. You can wordplay all you want around about my use of the word “separately,” but that is what the SG was saying when it argued, “a provisional application may itself qualify as prior art under Section 102(e).”

        And that’s what the SG has to argue, frankly, to get the benefit of the provisional filing date.

        The SG disclaimed any reliance on 119(e), which forced the SG to argue that the provisional, itself, separately qualifies as an “application” under 102(e)(1), and can be used as prior art when its corresponding non-provisional application later publishes.

        The argument you are outlining, that the provisional “becomes part of” the published non-provisional application, would only allow you to use the disclosures of the provisional as prior art. It wouldn’t give you the benefit of its earlier filing date. That basically forced the SG into arguing that the provisional itself qualifies as application under 102(e)(1), which magically gets “published under section 122(b)” upon the publication of the non-provisional, notwithstanding that section 122(b) specifically carves provisionals out from publication.

        But I agree with you that everyone’s trying to get to the same result, that disclosures of a provisional should be available as prior art as of the filing date of the provisional (without regard to whether the provisional provides support for subsequently issued or applied-for claims). But I don’t think the SG’s argument is a viable way to get there, and it does more harm than good by discouraging the Supreme Court to take up the real issue under Section 119(e).

        1. 13.1.1.1

          “I respectfully disagree, the SG does argue that the provisional separately qualifies as prior art under 102(e)(1), provided that the non-provisional application publishes. Don’t take my word for it, here is what the SG argues on pages 9-10 of its brief:”

          yeah but he means “as a part of the other document which it became a part of”. They just mean that the prov document itself, once published, is, the whole part of the prov document, prior art, EVEN IF the non-prov doesn’t actually contain all of the subject matter set forth in the prov (thus they use the word “separately” when they literally mean “as a part of the overall published doc, tho separate in subject matter”).

          “So there you have it. You can wordplay all you want around about my use of the word “separately,” but that is what the SG was saying when it argued, “a provisional application may itself qualify as prior art under Section 102(e).””

          Yeah but he means as a part of the whole, and I hear you that it is somewhat wordplay, but all of this whole discussion and issue is wordplay.

          “The argument you are outlining, that the provisional “becomes part of” the published non-provisional application, would only allow you to use the disclosures of the provisional as prior art. It wouldn’t give you the benefit of its earlier filing date.”

          Sure it does, because then it is literally a part of the overall document having a priority date back to the prov date (should the non-prov be amended to include such subject matter, it will typically get that prior date iirc, because the prov is taken as just another effective filing date pushing back app as normal). Could be wrong on that but I don’t think so.

          Either way, one way or the other the SGs position is the one that will near surely win after the dust settles.

          “notwithstanding that section 122(b) specifically carves provisionals out from publication.”

          Totally hear ya, but that’s just talking about provs by themselves, obviously they get published with the doc that relies on them now, if you think that is illegal, that probably needs to be challenged separately and then you run into Chevron deference (agency getting the bene of the doubt interpreting the laws rules pertaining to them).

          “But I agree with you that everyone’s trying to get to the same result, ”

          Good times.

          “But I don’t think the SG’s argument is a viable way to get there, and it does more harm than good by discouraging the Supreme Court to take up the real issue under Section 119(e).”

          Could be.

          1. 13.1.1.1.1

            Sorry 6, but your “yeah but he means” CANNOT carry to support the position that you want.

            That would be like calling “black” as “white.”

            LR carries this point.

  4. 12

    “Where, as here, a provisional application has been incorporated by reference into a later non-provisional application, the referenced provisional application effectively becomes part of the non-provisional application. Under those circumstances, the USPTO’s obligation to publish the non-provisional application encompasses the contents of the provisional application.”

    Which is why the provs should either be published as a wholly separate document complete with classification, or else tacked onto the actual publication of the patent as an addendum/appendix like area at the end of the document, and not merely buried in the file wrapper. Which they currently fail to do.

    1. 12.1

      Does your “complete with classification” then induce “examination?” – certainly, perhaps, not “full” examination on the merits, but also certainly, some examination, eh?

      I suppose that the bottom line with the entire “provisional” situation is that THAT system is as Congress set it to be, and that applicants are simply following what Congress provided. This then goes back to the point I made to SVG: one should not punish an applicant that merely avails themselves of the mechanism provided by the government.

  5. 11

    Agree re – Something weird here. I think the phrase “later published application (or issued patent)” should be replaced with the phrase “provisional application.” — The key is that an applicant cannot try to claim priority to a prior application (to limit prior art asserted against it) when the prior application does not support what the applicant is claiming. It’s nearly the classic CIP situation where the prior app’s priority shouldnt count for a claim if the prior app doesnt support the CIP claims.’

  6. 10

    The rule that a patent is prior art as of its filing date came about in Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651, 1926 U.S. LEXIS 419 (U.S. Mar. 8, 1926) because the Court was convinced that the delays of the Patent Office should not cause a different result when the first patent is not actually granted until after the second patent application is filed.

    Nowadays, the year between the provisional filing date and the non-provisional date is not caused by the PTO but by the first applicant. Hence, the relevant date should be the filing date of the non-provisional, ignoring the filing date of the provisional altogether.

    1. 10.1

      Interesting spin. But that case is not good law after the 1952 Patent Act.

      1. 10.1.1

        Hm, I arrive at the same conclusion as you, but for a different reason. The 1952 Act codified Milburn, so Milburn remained good law after the 1952 Act. However, the AIA was intended to change the US from a first-to-invent into a first-to-file, so the rational of Milburn (which was decided against a first-to-invent background) no longer holds water in view of the AIA statutory scheme.

        1. 10.1.1.1

          I’m not sure a first-to-file “background” would change the result in Milburn. Your conclusion seems to conflate priority and disclosure to the public, which the Federal Circuit has done (and which the Solicitor General criticizes). The Supreme’s 1965 case of Hazeltine Research underscores the constructive disclosure to the public in 102(e) when filing a patent application, even when not disclosing the “same invention” by another. In filing a non-provisional application, the applicant has done all that is necessary to _disclose_ his application to the public on the date it was filed “but for” delays by the Patent Office, same as in Milburn. As noted, that rationale does not apply to the filing of a provisional application. Further action by the applicant is required before any disclosure to the public.

          The Solicitor General’s brief contends that the potential prior-art filing date of a provisional comes from Section 122(b). A provisional magically becomes, consistent with the BPAI precedent of Ex parte Yamaguchi, “an application for patent, published under section 122(b)” when a corresponding non-provisional is published at 18 months. With a song, a dance, and a little seltzer down the pants around the fact that Section 122 directs that provisional applications “shall not be published.”

          1. 10.1.1.1.1

            The bubbles to that seltzer are “deemed” and “effective.”

            But what of that? Also, you seem to be in the same weeds as SVG, and want to publish an applicant that merely follows what Congress (the government) sets forth.

    2. 10.2

      Actually, the “cause” is STILL the government, as it was the government that set up the rules of (and provided the mechanism of) the provisional patent application path.

      THAT set-up provides for that year protection, and it would be untowards to penalize the applicant for taking advantage of the direct fruit provided by the government (with NO warning that doing so has such an impact as SVG would desire).

      1. 10.2.1

        “it would be untowards to penalize the applicant for taking advantage of the direct fruit provided by the government (with NO warning)”

        So instead you tell the second applicant about prior art only after he has invested in creating the invention, searching the prior art, paying a high-priced attorney to draft a patent application, and paying a substantial fee to the USPTO… with NO warning.

        1. 10.2.1.1

          Life is full of risks. In the first-to-invent world, it was impossible to know until years later whether someone else had invented before you. Now, under the first-to-file rule, it is still often impossible (until years later) to know that someone else filed before you. Regrettable, I agree, but unavoidable nevertheless.

          1. 10.2.1.1.1

            Impossible to know until “years” later? Are you thinking of those USPTO filings that are NOT published at 18 months from their priority date? I accept that one does not know if there is one of those lurking inside the USPTO till “years later”. But who worries about them? The de facto standard all over the world now is publication at 18 months, indexed for search databases. So, in well under two years, you have on your desk the full content of every filing earlier than your own. Do you contend that this is “years later”?

            1. 10.2.1.1.1.1

              So like MaxDrei to try to insert his own “EPO glasses” for someone else’s eyesight issue.

              As has already spelled out, the US Sovereign operates under a significantly different Quid Pro Quo, MaxDrei: our deal in its original glory was the exchange of a full granted legal property right for the ability of the government to publish. Your deal was the government publishing and the inventor merely getting the opportunity to be examined for a property right.

              The thing is, MaxDrei, here in this Sovereign, one has the ability to request non-publication** and obtain that same full value exchange.

              ** Of course, there are caveats.

              What this means though as far as your “too-eager” to jump to that 18 month (greedy grab) publication, is that there remains a fair size of non-provisional filings in the US that will not see publication until grant.

              You ask “but who worries about them?

              What a bizzaro question.

              That — even at some small percentage of total filings — may well be critical.

              I would also add that often clients will especially pursue the non-publication route explicitly for timing reasons, and to NOT tip off any potential competitors.

              Since you have in the past professed to do clearance work, I would think that your view on this point would be the exact opposite of what you post.

        2. 10.2.1.2

          So instead you tell…

          Maybe you should read some of the posts on the related threads – the “issue” you allude to is NOT constrained at all to provisionals (and is reflected in the VAST amount of “secret” prior art out there.

          I “get” that you don’t like the impact to the second comer, but that impact exists QUITE APART FROM the provisional scenario that you have stated at post 10.

  7. 9

    As originally noted, the subject Fed. Cir. decision below would appear to bizarrely allow a patent owner to change the prior art date either backwards or forwards by changing at least one of the final claims in an application based on a provisional?

    1. 9.1

      As originally noted, this is far less bizarre given that an applicant can (still) make an entire prior art item disappear completely.

  8. 8

    Really, the question is: what is the “prior art date” of a provisional patent application?

    An important adjunct question that drives the answer to the first question (and reveals why there is an apparent oddity is:

    By whom is this determination of “prior art” judged?

    Some people (even some Sovereigns) apply an inconsistent answer to this adjunct question.

    The answer, of course, is that the nature of “prior art” is viewed NOT by any particular real person, but is instead viewed by the legal construct of a Person Having Ordinary Skill In The Art.

    Also, as noted below, there is an important nuance that informs the answers to both questions, and that is the nuance of the original balance of the Quid Pro Quo trade between equal partners: disclosure for a turning of an inchoate personal right into a full legal property right.

    At least as set up in the US Sovereign, the government’s ability to “cash in” on their side of the equal trade could only be effected after a grant was obtained, and the applicant decided to proceed with the grant by paying the issue fee. As originally set up, an applicant could decide even after grant to nix the deal and remove their contribution and that contribution would be treated (BY that legal fiction of PHOSITA) as never existing.

    Enter internationalism and treaties and players that upset that Quid Pro Quo with a non-US view that publication should happen BEFORE grant, and thus, the deal was fundamentally altered to be an exchange of a mere possibility of turning the inchoate personal right into a full legal property right in exchange for disclosure.

    Mind you, there are pragmatic ramifications that tend to support this: one being that for those attempting to obtain patent rights in other Sovereigns (who played with different Quid Pro Quo deals), disclosures were already being agreed to. In such a case, applicants really already had decided, and it sort of makes sense that the US deal may be impacted.

    Then again, the US Sovereign fully realized that MANY seeking US legal rights were NOT “international players” and so a path to maintain the traditional Quid Pro Quo was provided. This path was the ability to opt for Non-publication. (I certainly hope that patent practitioners FULLY advise their clients as to the benefits of this option).

    Another wrinkle reflecting this nature is Patent Term Adjustment, and how that mechanism was meant to preserve aspects of the original Quid Pro Quo (timing there is meant to reflect that an applicant would see a full and meaningful first examination on the merits before the publication date, and be able to intelligently decide whether to nix the ongoing deal by express abandonment or not).

    All of these things that I speak of (and the disdain that I have for those that do not recognize the underlying drivers are based on the original Quid Pro Quo) are natural PRO-Patent positions.

    Of course, one may choose to have different opinions. But choosing to have different opinions does not mean that one can then choose to call those different opinions “Pro-Patent.” That’s like being able to call “black” to be “white.”

    1. 8.1

      There is no need to complicate the debate by importing aspects of international law. Consider instead two corporate competitors resident and incorporated in the USA and inventing in the USA, each laying down a carpet of USPTO filings, and each filing on two important inventions and all within weeks of each other. No longer will interference proceedings determine who gets what patent rights, on each of the two inventions. Instead, it will be the interlaced pattern of respective dates of filing of respective provisionals. Each corporation will seek the earliest priority date for their own pro, and the latest prior art date for the pro filings of the competitor because those respective dates recognised by the court will be decisive in the correct division of patent rights between the two rivals, under First to File patent law. If the division fails to accord with reality, then the Law is shown up to be unfit for purpose.

      1. 8.1.1

        Not sure what point exactly you are trying to make, MaxDrei.

        The introduction and “importing aspects of international law serve a clear purpose in my post. Why in the world would you wish to pull a Wizard of Oz “pay no attention to that man behind the curtain” on its impact?

        Certainly, the US Sovereign has decided to change its laws from the first to invent to the first inventor to file (not quite matching up to the rest of the world), but so what?

        What exactly is your “if the division fails to accord with reality” statement supposed to mean? The reality IS how the Sovereign chooses to structure its system. You appear to not what to complicate by obfuscating with a meaningless truism.

      2. 8.1.2

        MaxDrei,

        As seen above with your latest comments, there very much IS a need for my position here to be accorded its place in the discussion.

        Whether you want to characterize that as “complicate” is rather immaterial.

        The need is there.
        The need is real.

        Ignoring that need leads to incorrect comparisons of the choices of the different Sovereigns (and YOU are one who so often insists on inserting the different choices of different Sovereigns).

        You seem (Still) unable and even unwilling to accord the necessary ramifications OF reality and accord simple respect (your feelings of “fit for purpose” falling short because they still do not reflect a full understanding) as to the reality of those Sovereign choices.

  9. 7

    Dennis writes: “publication of the underlying application also lays-upon the file history and effectively publishes the provisional as well. ”

    I read “lays-upon” as “lays open” and note that the Government asserts that such “laying open” of a PTO wrapper constitutes an “effective publication” of the disclosure content of the provisional.

    Is there a difference between “publication” and “effective publication” and if so, does it matter? In particular, is it determinative of this case?

    1. 7.1

      Yes I suspect, although I haven’t take a close look at this, that it is simply not clear what to do with provisional applications. There is no doubt that as soon as they become available to the public that they are prior art as of that date, but the problem is whether by including them in the utility patent application that the date snaps back for the provisional application for purposes of prior art.

      Seems like the statute isn’t clear. Really illustrates how poorly our laws are written and that they are not proofed by experts and are written by lobbyists.

      1. 7.1.1

        Thanks, Night. Of course, for those of us who nothing other than “First to File” it is axiomatic that neutrality between rival Applicants requires symmetry between the priority and prior art attributes of a provisional application. Sauce for the goose and the gander, as the saying goes. The Golden Rule (of reciprocacy in ethics), all that sort of thing.

        It is interesting to watch the USA come to terms with the consequences of switching to a First to File regime.

        1. 7.1.1.1

          Max >>it is axiomatic that neutrality between rival Applicants requires symmetry between the priority and prior art attributes of a provisional application.

          I absolutely agree with this.

          1. 7.1.1.1.1

            Apples and oranges.

            Yes, both are fruit, but priority is personal (and to a real person), while prior art is NOT personal (it may help to remember that ALL personal bar effects were also removed in the AIA, but that’s a bit of a tangent), and prior art is determined by a NON-real person.

            Axiomatic?

            No. Not when the proper context is kept in mind.

            1. 7.1.1.1.1.1

              I have kept the proper context in mind and still agree 100 percent with Max.

              1. 7.1.1.1.1.1.1

                Great – your ability to “keep proper context in mind” is then of dubious nature – as per the rest of my post.

                Unless, of course, you have some (any) explanation around those points….

    2. 7.2

      MaxDrei inquires:

      Is there a difference between “publication” and “effective publication”…

      Yes, there is a difference (hence the exact same words are not used).

      and if so, does it matter?…

      No, the difference is without distinction, as the end effect is the same, even as the paths to that end effect are different.

      In particular, is it determinative of this case?

      No, the answer to the second question being “no,” leads naturally to the answer to the last question being “no” as well.

      Leastwise, these are the simple, direct, and logical answers. Those who may want different results that may flow from these simple, direct, and logical answers may wish to provide a path with different answers to your questions.

  10. 6

    >>Anyone who works with prior art knows that this [priority requirement] 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. My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

    I agree with this.

  11. 5

    Not commenting on the larger issue, but only pointing out that if the Government is going to choose to be hyper-critical as to textual tie-ins, then they cannot — in good faith — attempt the NON-textual distinction of:

    the Government brief argues that the statement only refers to provisional applications abandoned without being relied upon for priority.

    The statute simply lacks any support (textually) for a “but only a subset that meets a condition” to selectively apply the aforementioned “refers to.”

    (Also, not to redirect the thread, but this “issue” is LARGER than only provisionals, and implicates a substantial (issue and amount) of “Secret” prior art of non-published Non-provisional applications, of which it would be fair to say that a substantial number may never BE published….

    1. 5.1

      “Secret” applications remain one of the remaining travesties of the “old” US patent system.

      1. 5.1.1

        …as one with an abject cognitive dissonance would state….

        Do you understand precisely WHY the ability to “ditch” an application and have the contents remain secret was important in the original system? Or how “forced**” publication effects a substantial change to the very essence of the balanced trade of the Quid Pro Quo?

  12. 4

    The government brief agrees that interpretation of proper priority claim under “119(e) has no bearing on the date on which a patent application qualifies as prior art under Section 102(e). There is no textual basis for using that provision’s priority rules to backdate patent applications sought to be relied on as prior art.”

    The government is wrong here in saying “no textual basis.” I agree with Prof. Crouch that the better reading of Title 35 as a whole leads to the government’s conclusion, but the Dynamic Drinkware reading of Title 35 is a not crazy. There is, in other words, some textual support for the Dynamic Drinkware rule, just not enough to sustain such an obviously loopy conclusion.

  13. 3

    once publicly available, all provisional applications should be considered prior art as of their filing dates.

    Agreed. This is the better rule.

    A provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).

    Where are you finding support for the boldfaced text in either Dynamic Drinkware or the follow-on cases? To my mind, the question of whether the provisional must support all claims in the non-provisional, or only at least one claim in the non-provisional in order for the provisional to count as filing-date art is still an open question. I seem to recall that there is a case that squarely presents that question pending before the CAFC (argued either Apr or May) but I cannot remember the case’s name.

  14. 2

    DC: My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

    I agree, for the reasons provided by you and the government.

    See how that works, Dennis? Now if you could only muster up the courage to discuss the basic aspects of subject matter eligibility with the same forthrightness.

    1. 2.1

      if you could only muster up the courage to discuss the basic aspects of subject matter eligibility with the same forthrightness.

      Stultifying.

      You first, Malcolm.

      And by “you first,” I mean in an inte11ectually honest manner without your mindless ad hominem and propaganda-filled claptrap.

      1. 2.1.1

        There is literally nobody in the patent universe who has been as crystal clear (and consistently crystal clear) about his positions regarding subject matter eligibility (in all of its various incarnations) and his reasoning behind those positions than I have been, Bildo.

        F’in A, you disgusting tr0ll, I explained the issue in Mayo v. Prometheus to every one of the hundreds of s0 ckpuppets you wielded back when you thought it that was a winning strategy. Go fk yourself. And the go fk yourself again. And then go fk Big Jeans.

        1. 2.1.1.1

          Before you get all excited in reaching around to pay yourself on the back, READ what I actually posted.

          Clarity, or even consistent clarity, does NOT entail mindless ad hominem free, propaganda-filled drivel free, or anything remotely close to being inte11ectually honest.

          You celebrate as you miss the most important aspects.

  15. 1

    Dennis (describing the CAFC’s position): A provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).

    Something weird here. I think the phrase “later published application (or issued patent)” should be replaced with the phrase “provisional application.”

    1. 1.1

      agree / likely copypasta error

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