Supporting Amendment to 35 U.S.C. Section 102(a) Clarifying Public Disclosure

Intellectual Property Owners Association (IPO) Board has proposed a “clarifying” amendment to Section 101(a)(1) of the Patent Act:

(a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public publicly disclosed before the effective filing date of the claimed invention, provided that no act of patenting, publication, use, sale, commercialization, or any other act, shall constitute prior art with respect to this section, except to the extent the act results in a public disclosure of the claimed invention; or

The proposal here would legislatively overrule Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 139 S. Ct. 628 (2019) and remove undisclosed sales activity & commercialization from the scope of prior art. Europe uses this approach found in Article 54 of the European Patent Convention:

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

EPC Art. 54. Note that 54(1) and 54(2) are parallel to 35 U.S.C. 102(a) while 54(3) is parallel to 102(a)(2) which the IPO does not propose to change.  Regarding these secret prior patent application filings identified in 54(3) and 102(a)(2); the European approach is broader than the US in some ways because it creates prior art even when the prior filing is the same inventor / owner; at the same time, the European approach is narrower than the US because 54(3) prior art does not apply to the inventive step (obviousness) analysis.

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

EPC Art. 54(3).

 

146 thoughts on “Supporting Amendment to 35 U.S.C. Section 102(a) Clarifying Public Disclosure

  1. 16

    I’m troubled for it not based on feelings, but because it’s odd to me to have motivation to modify that potentially comes from one’s own nonpublic work. In research, much of the motivation for new work comes from one’s own prior work. Do we have a better understanding now, with fewer holes? Because the part about the horses is less than clear to me.

    1. 16.1

      I am with you in preferring a system without “secret” prior art. That said, why do you find the possibility of one’s own work being used against one troubling in just this circumstance. A person’s own prior work is frequently cited against the person’s later work. Why does that point become more troubling in this one circumstance?

      1. 16.1.1

        The sheer volume of nonpublic art qualifying under the vague “competitive exploitation” standard of Metallizing greatly multiplies the amount of self-defeating references and I think in practice renders most patents obvious. Also, all of a firm’s internal research processes potentially relevant to the claimed invention technically should be reported in an IDS. This cannot be a correct result.

        1. 16.1.1.1

          This cannot be a correct result.

          It is not.

          This is ALSO why — as I have written extensively — the Soliloquy (related to the AIA) sought to rectify the past errors of some (admittedly great legal minds) who confused and conflated different legal protections arising out of our Sovereigns different Constitutional drivers.

          (And please note that this does NOT change the legal notions involved in actually filed ‘Secret Prior Art,’ the Rules of State of the Art, and the US Sovereign’s Quid Pro Quo – and related exceptions thereto).

          Quite opposite the rather feeble protests of MaxDrie, the wrinkles here are exquisite.

      2. 16.1.2

        Maybe Greg will have better luck pulling answers out of the likes of MaxDrei (but then again, both are inte11ectual cowards).

    2. 16.2

      No problem with the reference to the horses – that was directed at another.

      Would actually like to explore “motivation to combine” with you, but to the immediate point, I will merely state that EACH of the legal tests for novelty and for non-obviousness depend on a legal notion of State of the Art, and that notion is NOT measured BY any “real person,” but instead is measured by a legal fictional person.

      I fully allow that any Sovereign may well choose to set up and pursue their patent laws as the choose. Here in the US, our Sovereign has chosen a consistent view of that legal fictional person across the related, albeit different tests of novelty and non-obviousness.

      Your views may well be grounded in the choices of a different Sovereign. I can respect that. I hope that you can respect our Sovereign choices (some — like the person for whom the “horses” reference is directed to — cannot).

      1. 16.2.1

        I don’t follow the sovereign point. The distinction between the inventor and a third party for purposes of secret prior art is completely non-statutory – indeed, astatutory. That’s why Metallizing is best understood as rendering an equitable forfeiture. Certainly if judges could create the doctrine they could at least limit its impact to novelty and carve out 103, as is done with the analogous arts doctrine.

        1. 16.2.1.1

          The distinction between the inventor and a third party for purposes of secret prior art is completely non-statutory – indeed, astatutory.

          Actually, you are quite wrong on this point.

          Secret prior art does NOT feed any type of “real person” evaluation of the (quite statutory) notion of either novelty or non-obviousness. As I have been discussing, these notions are instead set by a legal fictional person.

          The notion of “secret prior art” — as I am discussing that term — does NOT include truly secret efforts, but instead includes that material which has been supplied to the Patent Office (and our Sovereign’s well established understanding of State of the Art to include that material for BOTH legal tests of Novelty and Non-obviousness).

          It may do you well to take a step back and realize that the conversations here have been at several levels.

          1. 16.2.1.1.1

            Once again I’m referring to Metallizing art, not unpublished applications.

            1. 16.2.1.1.1.1

              Thanks Dmetry — the term “Secret Prior Art” is more often used for the type of submitted, but not published, so when I see it, that’s where my mind goes first.

              As to the type you are talking about, there is also no meaningful distinction between novelty and non-obviousness defeating art, now is there? (Other than the usual difference between the two)

              1. 16.2.1.1.1.1.1

                I think it’s odd to me to have your own prior secret work supply the PHOSITA’s motivation to combine. That’s my distinction. I don’t mind having nonsecret art supplying motivation.

                1. Dmitry,

                  I am not following your distinction for two separate reasons:

                  Are you tracking what I have been saying in regards to how the AIA has erased what appears to be your Metallizing concerns (and has done so for BOTH novelty and non-obviousness)?

                  The second is how you still seem so singly focused on not just non-obviousness, but just one portion of the elements of that legal test (a legal test mind you for a legal person and not judged by any real person), while you profess no care at all in regards to eliminating any ill effects from that secret ‘violation’ against novelty.

                  I know of no reason why one would be “ok” while the other would not be ok.

                  Maybe this is nothing more than a reflection of the different choices by different sovereigns (but I like the consistency of my Sovereign’s choices).

        2. 16.2.1.2

          As to the analogous arts doctrine, that too is an interesting wrinkle; albeit born out of different drivers then the State of the Art.

          1. 16.2.1.2.1

            I’m not sure if the AIA overruled Metallizing – a lot of people don’t think it did, especially given Helsinn. As for my focus on motivation, it highlights that 102 and 103 are rather different inquiries, and so it might make sense to define prior art differently for one versus the other. Which we already do under the analogous arts doctrine, sovereign or no sovereign.

            1. 16.2.1.2.1.1

              Dmitry,

              Certainly, there are differences between the legal tests for novelty and for non-obviousness.

              But you mistake those differences and lose focus on those legal aspects that are NOT different.

              Further, there is certainly no shortage of those not wanting to accept what happened in the AIA in regards to the plainly stated overhaul of how our Sovereign treats the legal aspects of BOTH novelty and non-obviousness.

              However, those espousing otherwise cannot ignore the points that I have long provided (well, they certainly can choose to not address those points, but such a choice appears to merely concede that those presented points are to be taken as true).

              Lastly, you mistake my comments on your focus on ‘motivation’ (or more accurately, ‘motivation to combine’).

              As I have noted, it is critical to ‘get the phrase correct.’

              One reason may be seen here in your own misapprehension of my questioning of your focus.

              When viewed correctly, the full term of “motivation to combine” clearly denotes that the term ONLY has meaning for the (sub-element within) non-obviousness, as the legal test of novelty has no such sub-element of “combination.”

              The fact that one legal test has an element that the other legal test does not is NOT why I am questioning YOUR thrust to treat the entirety of the legal tests differently — especially concerning a nature of Secrecy that impacts BOTH tests.

              You keep on focusing on a difference of a sub-element, but the questioning is because your desired state affects far more than merely that sub-element, and affects the TOTALITY of the two legal tests, including aspects that are NOT different.

    3. 16.3

      Dmitry, if you have any difficulty with “secret” prior art” under the patent law of Europe, just say. But for the time being though, I am supposing that your difficulty lies exclusively with the situation under US law. On that, I am not competent to explain to you so will remain silent.

      1. 16.3.1

        I’m focusing on secret prior art US law. But I’m curious about the inventive step carve out in the statute Dennis cited.

        1. 16.3.1.1

          I guess, Dmitry, you mean Art 54(3) EPC. Such a “carve out” is found everywhere in the FtF world except the USA.

          I thought I had explained all that already. Is my comment at 14.1 not good enough?

          1. 16.3.1.1.1

            Clearly MaxDrei, Dmitry is NOT talking about Art 54(3) EPC.

            The very post you reply to indicates this with: “ focusing on secret prior art US law

            Your spectacles are NOT on point here.

      2. 16.3.2

        Modified as appropriate:

        “[MaxDrei], if you have any difficulty with “secret” prior art” under the patent law of [US], just say.

        Please follow your own advice. For whatever reason, you seem to expressly avoid the very thing you advise others to do when you and I converse.

  2. 15

    Still waiting for MaxDrei to stop pretending, to put away his Strawmen, and to address many of the actual points (and wrinkles) on this thread…

    So eager is he to step up on his soapbox, and yet, the points on hand here simply are not constrained to what he wants to pontificate.

    Come fine sir — engage on these other points.

    If you dare.
    If you can.

    1. 15.1

      Asked and answered, anon. 6.2.1.1.1.1

      You are the only one here able to see “wrinkles”.

      And as to any of your self-enthroned “points”, sorry to have to tell you, but (as even you concede elsewhere) all you are doing at this late stage is flogging your own very personal (and l0ng-d43d) hobby-horse.

      1. 15.1.1

        Again you say that I am the only one — and again you ignore the quote that I provided directly from Prof. Crouch.

        You do love proving me correct, don’t you?

        What YOU take away from this is simply egregiously wrong. It’s down right hilarious in fact.

      2. 15.1.2

        By the by, MaxDrei, your 6.2.1.1.1.1 is NOT an answer as I immediately countered that you were engaging in a strawman and misrepresenting my views as somehow being an indicati0n that ANY of my posts were solely talking about Art 54(3) EPC. Such is clearly not the case, and it is only YOUR pretending that supports your strawman.

        Further, there is NO “even as you coned elsewhere” of me flogging anything. Your attempted use of that phrase just does not fit the circumstances here.

        1. 15.1.2.1

          …”coned” => “conceded”

  3. 14

    Given some of the comments here, an observation about the underlying logic of Art 54(3) of the EPC might not go amiss.

    In a First to File jurisdiction, there has to be a mechanism to filter out, during examination, all those who filed but were not the FIRST to file, even those who filed just one day later. That’s Art 54(3) EPC.

    Universally though, for all Applicants, there has to be an obviousness filter. What is the knowledge base of the PHOSITA who is the litmus paper for judging obviousness? Why, everything that such a notional being could have known. To use secret prior art as a basis for an obviousness rejection is cruel and unnecessary punishment of inventors everywhere. That’s the thinking behind Art 54(2) EPC.

    link to epo.org

    anon asserts that Art 54(2) and (3) generate “wrinkles”. Perhaps for him. Not for anybody else though.

    The idea of FtF is to tell the PTO before you tell anybody else. The system frees up inventors to tell the world, risk free, the day after filing at the PTO. Useful, if you need to attract investors or customers immediately.

    1. 14.1

      Sorry. Wrong adjectives. Rather than “cruel and unnecessary” I should have chosen “unusual and unfair”.

      The point About Art 54(3) EPC is that filers other than the first can still get plenty of patent scope. All they have to do is claim subject matter that is i) novel over all earlier filers, and ii) non-obvious relative to everything already made available to the public before they filed at the PTO.

      So think of Art 54(3) as the EPC’s prohibition on “double patenting” of identical subject matter, whether by the selfsame inventor or some other one who filed independently, one day later.

      1. 14.1.1

        Well MaxDrei, you have availed yourself of posting at the top of the thread as a sign of climbing up on your soapbox, but there are several counterpoints awaiting your reply.

        And whines about “submarine patents” and such non sequiturs do not count (at least you did admit that there is a serious difference in the actual Quid Pro Quo deals between the Sovereigns — it would be nice if you also acknowledged why this had made the traditional US patent system the world’s premier innovation protection system).

        But returning to notions of legal fictions and the legal issues of novelty and non-obviousness, perhaps you think that the legal fiction of PHOSITA is not used for the legal question of novelty (in your hurry to jump to using real persons and timing of these real persons of their respective actual filings).

        Hey, I “get” that a Sovereign may choose to be inconsistent, but the least you could do is own that inconsistency (and do so without such emotional whines such as “unusual” and “unfair.” Such betray the notion of that legal fiction for the rather straight forward (even as it IS inconsistent) choice of when to use the legal fiction and when to constrain such use.

        As to your snark on “wrinkles,” maybe you should (again) pay better attention. You may choose to ignore the wrinkles, but that choice does not make them go away. Your choice to ignore only leaves you ‘ignore ant.’

        I look forward to your substantive responses.

      2. 14.1.2

        Is it really “unfair” to consistently use a notion of a legal fiction of PHOSITA to adjudge the legal conditions of both novelty and non-obviousness?

        You appear to want to bend and see no unfairness whatsoever for the legal notion of novelty (and appear to hinge the entirety of that legal notion on the non-legal person instance of only comparing two actual real person filers) and simply declare by edict your feeling of unfairness in evaluating the legal condition of state of the art in any application of consistency of that legal state.

        How tight can you clench your eyes?

        How long will you attempt to project your inability to see (due to those clenched eyes) to someone else?

        Note that I have fully provided that there is a difference AND that this difference is fully within the rights of the various Sovereigns to so choose. Tis unglaublich that you continue the charade that you do.

    2. 14.2

      … as to “no wrinkles,” (quoting Prof. Crouch):

      the European approach is broader than the US in some ways because it creates prior art even when the prior filing is the same inventor / owner; at the same time, the European approach is narrower than the US because 54(3) prior art does not apply to the inventive step (obviousness) analysis.

      Too funny.

    3. 14.3

      Thanks. That makes a lot of sense.

  4. 13

    Blackacre Ltd. creates a widget using a secret process. Halfacre Industries, from the widget (bought legitimately), figures out what the secret process is (they have some smart engineers). They add a step that improved the widget even more. After doing a thorough search, Halfacre cannot find any intellectual property covering the process. They decide to make a competing widget using their improved process. This improved process requires them to preform all the steps of Blackacre’s process. Halfacre does not publish anything about their process.

    A) 6 months after Halfacre’s widget is on the market, Blackacre files for a patent, which ultimately grants. What is the equitable result for both companies?

    B) Before going to market, Halfacre files two patents. One for the original process and one for the improved process. Both patents are granted. What is the equitable result for both companies?

    1. 13.1

      In your B) example, does Halfacre fraudulently file a declaration that they are the inventor, knowing full well that they have merely reverse engineered a competitor’s invention?

    2. 13.2

      A) Under your facts, the improved process from Halfacre should pass 102. Whether it is obvious is a different question, but it’s possible the improved process could pass 103 as well.

      Blackacre is screwed, in my view. Gold star to the smart engineers who unraveled Blackacres market strategy.

      B) Halfacre’s patent for the original process should be invalidated because it isn’t novel, in my view, because the process was already available on the market.

      1. 13.2.1

        J,

        There could be some interesting difference of opinion that just because something was able to be reverse engineered, that that something was “publicly disclosed in an enabling manner” such that the legal notion of prior art is invoked.

      2. 13.2.2

        I disagree with your B conclusion. Blackacre’s product is not enabling art for Blackacre’s method of producing that product. Halfacre had to invent the process anew (the fact that they hit on essentially the same process as Blackacre is mere coincidence, and a fact of no legal significance). Halfacre is, therefore, the legitimate inventor and fully entitled to the patent in a world in which they beat Blackacre to the filing window.

        1. 13.2.2.1

          I think that Greg may only be partially correct here.

          The product may be non-enabling, but GIVEN that there is a product and a dedicated effort to reverse-engineer, it is NOT cut and dried that there is NO legal significance and one MAY argue that there may well be NO “inventing the process anew.”

    3. 13.3

      I think that current U.S. law reaches an intuitively fair (for both companies) result in both cases.

      A) Blackacre’s patent grants (presumably Blackacre’s product had not been on the market for a full year at the time of Blackacre’s filing), and can be used to stop Halfacre’s commercial activity. If Halfacre had wanted to block Blackacre’s patent, Halfacre had the power to beat Blackacre to the filing window. If Halfacre tarried in that race to file, it must live with the consequences. First-to-file is a harsh mistress.

      B) Halfacre gets both a patent on the original process and the improved process, and these patents can be used to block Blackacre. Once again, Blackacre had the power to stop this outcome, but they tarried in in the race to the filing window, and now they must live with the consequences.

      1. 13.3.1

        Poor Greg has forgotten about the true submarine gift of the AIA with the Prior User Right.

        1. 13.3.1.1

          … if there ever was a more clear sign of ‘legislative capture’ (with the true submarine of the sui generis Prior User Right that surfaces as a Right for a non-sharing entity ONLY AFTER someone else decides to share, pays for and earns a patent property, and then goes to enforce that property right), I could not identify one.

          This is FAR MORE a “gift” to the established and entrenched entities and an invitation to secrecy and guild-like behavior than the (proper) differentiation of different protections under the different Constitutional drivers of Trade Secret and Patent (with the as properly viewed full Quid Pro Quo maintained) that instead draws so much attention and attempts to perpetrate misconceptions.

    4. 13.4

      Where are you, OSitA…?

  5. 12

    Yeah, to Dennis’s point at the end, I’m still not clear how secret prior art works in the obvoiusness context. Can internal research expertise make one’s own future inventions obvious to try?

    1. 12.1

      Dmitry,

      What is your understanding of how the secret prior art works in the legal notion of novelty? Why do you think that the notion — as applied in the case of novelty (and applied through the legal fiction of PHOSITA), is so mysterious if the same legal fiction of PHOSITA turns and applies the related (and admittedly different) legal concept of non-obviousness? Is this difficulty for you one of “because it’s not done that way”…?

      1. 12.1.1

        The difficulty for me lies in rationalizing a system in which your own secret art supplies motivation (in the legally relevant obviousness sense) for your own future research. This strikes me as very different from “indefinitely extending patent term” within the meaning of Metallizing for an identical invention.

        1. 12.1.1.1

          State of the art is state of the art.

          From a legal sense, let’s start there.

          1. 12.1.1.1.1

            How’s nonpublic information a part of the state of the art?

            1. 12.1.1.1.1.1

              How is it a part of the state of the art for novelty?

              You do not state that you have a problem with that aspect, so I probably should not presume that you are OK with that aspect of ROW thinking.

              1. 12.1.1.1.1.1.1

                I don’t see the Metallizing rule as making secret prior art a part of the state of the art (since it applies to the inventor only), but rather as holding that if inventors elect to keep something as a trade secret, they forfeit patent rights to that invention.

                1. Sorry Dmitry, the conversation stuttered as I hit a “Count Filter” limit on posts.

                  What I meant to clarify was that the PRE-AIA 102/103 regime treated the condition you identify through the Prior Art mechanism.

                  The extensive (and so announced) revamp of 102/103 did away with that (as witness a plurality of indicators such as removal of direct words, change in the titles of the sections, announced streamlining and, yes, the soliloquy.

                  Lastly, I am still not sure whether your focus is solely on such secret conditions only for non-obviousness, or if you consistently include novelty in your legal concerns.

              2. 12.1.1.1.1.1.2

                I’m troubled for it not based on feelings, but because it’s odd to me to have motivation to modify that potentially comes from one’s own nonpublic work. In research, much of the motivation for new work comes from one’s own prior work. Do we have a better understanding now, with fewer holes? Because the part about the horses is less than clear to me.

            2. 12.1.1.1.1.2

              First comment caught in Count Filter, but let me add that State of the Art is NOT determined by any real person effect (for the general rule – there are wrinkles of exceptions as I note herein).

              You seem to be resting on a real world effect with a reliance on “non-public,” while MY discussion here is on a particular type of secret art: that which has been shared with a government body for the purpose of obtaining patent protection.

              Note as well that I fully permit that any of this subset may be removed from consideration at the (timely) request of the submitter.

              I do recognize that this caveat DOES introduce a “real person” effect, but such is a bit of an exception to the rule, and is more tied to the Quid Pro Quo (and thus I also recognize that the different Quid Pro Quo deals of different Sovereigns may well provide different views on even when the timing of the patent bargain may be ‘reasonable’ FOR particular real person exceptions).

              So outside of the exception of one rightfully withdrawing an item from the Office, the LEGAL effect of art submitted to the Office IS to set the State of the Art — in the US Sovereign, this LEGAL effect is consistent across both Novelty and Non-obviousness. The timing of this effect is the date of submission. Clearly, since a choice of publication is an arbitrary choice (including a possibility for demand of advanced publication), the legal notion accords with filing date rather than publication date. This accord has a long-standing Precedent in the US sovereign.

              Now, my views on most anything secret and NOT shared with a patent office does appear to match how you are taking a more general view (although — again — I take a consistent approach of this secrecy applied to Prior Art for both novelty and non-obviousness). As I indicated, you may too be taking a consistent approach, even as your first comment only singled out the legal obvious inquiry rather than both legal obviousness and novelty. I welcome your clarification on that point.

              1. 12.1.1.1.1.2.1

                Yep, I wasn’t referring to unpublished patent applications, but rather to “commercially exploited” secret activities within the meaning of Metallizing.

              2. 12.1.1.1.1.2.2

                I’m more troubled by it in the context of non-obviosness.

                1. I do not understand why one would (or should) be more troubling in one legal context than in the other legal context.

                  Not a fan of such selective ‘troubles,’ as such tend to be more feeling based and less law based.

                2. … I recognize that the thread is growing old, and that commentators may have moved on, but there are some significant holes yet to be patched on this topic.

                  Ah well, I have led the horses to the well (yet again).

        2. 12.1.1.2

          On another angle, the whole “motivation” discussion bears some heightened scrutiny.

          The actual (and full) term is: “motivation to combine.”

          It is not endemic that this is misconstrued as “motivation” of an individual item/element/aspect of an item of prior art in and of itself.

          Pick up MANY Office Actions and note that NO rationale is provided for the last two words of the (full) phrase of “motivation to combine.”

          Much like the problem of the colloquial use (rather than the legal use) of “obvious,” there is a problem of colloquial use of an abbreviated notion of “motivation.”

          This problem is only amplified with hindsight, and adds to the overall Gist that ‘the only valid patent is one that has not appeared before us.’

          1. 12.1.1.2.1

            … pssst, MaxDrei, this is perhaps yet another wrinkle that your snark missed. Perhaps though, you align with the distinction that I present in that motivation is actually meant to be the slightly different concept of “motivation to combine” rather than any inherent motivation that may arise solely out of the benefits of only one of the items being considered in the attempted combination…

    2. 12.2

      Can internal research expertise make one’s own future inventions obvious to try?

      No. That sort of “prior art” is explicitly excluded from obviousness consideration under §102(b)(2)(C) (or pre-AIA §103(c)).

      1. 12.2.1

        I don’t think this is correct. The subsection you cite is a carveout from the “secret patent application” prior art. It begins with “A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—.”It does not concern Metallizing art.

        1. 12.2.1.1

          Metalizing concerns commercialization. You asked about “internal research expertise.” If you meant that phrase to encompass commercialization, then I misunderstood you. I agree that (for better or worse), the Court does not read (b)(2)(C) to save anyone from the implications of Metalizing Engineering.

          1. 12.2.1.1.1

            Yep, I meant commercially exploited internal research expertise within the meaning of Metallizing.

  6. 11

    I see one difference still between the proposed amendment and the EPO. At the EPO, the « secret » prior art is limited to EP applications, to which examiners could have access before they are published. That means that an EP examiner could postpone an allowance because he knows that some prior art will surface. That feature contribute to the confidence that the patent Office has a possibility to issue valid patent.
    It is nice however that the worldwide secret sales are ruled out of the prior art. At least, the USPTO is no longer required to employ international spies to discover the totality of the prior art and have a decent chance to issue valid patents.

    1. 11.1

      Indeed! The EPO does delay issuing a Notice of Allowance until 18 months have elapsed from the earliest declared priority date, just so it can check the novelty of the claims against the disclosure content of the A (or WO) publication of any EPO filing with an earlier declared priority date.

      Incidentally, there is no need for any EPO Examiner to go looking at any unpublished EPO filing. There would be no point anyway: suppose the earlier filer pulls their application, to prevent A publication. And it would not be right either: till the A publication, the content of a patent application ought not to be available to anybody other than the Applicant. What happens at the Patent Office in China, mind you, is another thing entirely. Of that, I have no idea.

      And as for “postpone”, that can only happen if the EPO wants to issue a Notice of Allowance earlier than 18 months after the priority date, which in most every case is a bare 6 months after the PCT filing date. How fast do you want the EPO to go, for goodness’ sake?

      1. 11.1.1

        As to the legal status of State of the Art (and to the legal person of PHOSITA), does the arbitrarily chosen 18 months change anything?

        Of course, in a given context of an applicant pulling their material from the process prior to publication, the answer is yes. I suppose in your dominion this operates in a similar manner as it does in ours: preservation of the applicant’s ability to proceed with Trade Secret status as opposed to any actual partaking in a Quid Pro Quo (even as the Quid Pro Quo may well be different depending on the Sovereign’s offered ‘deal’).

        HOWEVER — outside of that instance of an applicant pulling their material, there are plenty of wrinkles for that legal person and the state of the art, now isn’t there? For example, whether that legal person may consider any such art indicating a state of the art (in the legal sense) for novelty alone or for novelty and for non-obviousness.

        1. 11.1.1.1

          … MaxDrie, care to comment on this “non” wrinkle…?

  7. 10

    The real issue here is how do the Europeans define “public.” Public, in US law, used to mean the disclosure of the invention to a single person not subject to a secrecy order. So, for example, providing a copy to any library, regardless of whether it was indexed and findable, would be a public disclosure. Is the European view like that – the standard meaning of the word public – or a term of art, like the current US Fed Cir view?

    1. 10.1

      It’s all there, Random, in the jurisprudence of the Boards of Appeal of the EPO, that has developed over the last 40 years and is all available on the EPO website. In a nutshell, the patentable novelty of a claim is prejudiced when an enabling disclosure of something within the scope of that claim has been “made available” to at least one member of “the public”. Think of those to whom an enabling disclosure has been made available. Are they all bound by some sort of confidentiality, express, implied or implicit? If so, not one of them is a member of “the public”. But if there is one person who is free, in law and equity, to pass on the enabling disclosure to members of the public, then novelty is prejudiced.

      Sending a copy to a Library is an interesting situation. Plenty of cases on that, in the EPO case law, each turning on their own specific facts.

      Disclosure to business partners is another interesting area. What if the invention is embodied in a catheter and you ask a hospital surgeon to test your prototype. Could that surgeon be a member of “the public”, is your “disclosure” to that surgeon “enabling” and is that surgeon free to show the device to a member of “the public”? Such cases turn on their particular facts but the overall principle is clear: has the cat been let out of the bag?

      1. 10.1.1

        Not to disagree with anything shared by MaxDrei with his post at 10.1, but will note that in the US Sovereign, the notion of “cat out of the bag” mirrors the Trade Secret regime, and in our sovereign, this notion is decided on a state by state basis.

  8. 9

    Dennis – It appears you have conflated 101 and 102:

    “Intellectual Property Owners Association (IPO) Board has proposed a “clarifying” amendment to Section 101(a)(1) of the Patent Act:”

    1. 9.1

      … took that as a mere typo (given that there is no hint of eligibility discussion present).

      1. 9.1.1

        Of course its a typo. I was making a little joke.

  9. 8

    Congress confused the issue by inserting “; PRIOR ART” into the title of Section 102 in the AIA. The term is not even used in Section 102. If Congress wanted to define the term they should have put it in Section 100. It only matters for obviousness. If it was unknown to a person of ordinary skill then it should not count as prior art.

    Sloppy legislation has been great for infringers, lawyers, lobbyists, but terrible for innovation.

    1. 8.1

      Sorry Josh, but prior art very much matters for novelty as well as for non-obviousness.

      You are not even close to the proper legal view here.

      1. 8.1.1

        Go ahead…

        1. 8.1.1.1

          What is it, Josh, that novelty is compared against?

  10. 7

    What a coincidence. Secret prior art used as an obviousness objection is the subject of the newest posting on Gene Quinn’s blog. The inventor who was blown away by the secret art is (understandably) most upset. Of course he was. I sympathise.

    Here a Link

    link to ipwatchdog.com

    1. 7.1

      Have some sympathy for the devil (see Rolling Stones);

      Even provide him the same protections under the law (see Sir Thomas More);

      But let’s separate sympathy and legal discussion.

      The notion of Secret Prior Art exists for a very clear legal notion — to a very clear legal person.

  11. 6

    This seems poorly written. When you remove all the text that doesn’t affect the meaning of the statute, it basically says, “Nothing is publicly disclosed unless it is disclosed to the public in a public disclosure.” Never mind that it specifically calls out patents, even though a patent is necessarily a public disclosure.

    Why not just say, “A person shall be entitled to a patent unless— (1) the claimed invention was publicly disclosed before the effective filing date of the claimed invention,” and then put in a definition for “publicly disclosed” under section 100, which you can break out as fine as you like, e.g.:

    (k) The term “publicly disclosed” means disclosed by way of:

    (1) a patent, as of the patent’s date of issue;

    (2) a published document, as of the date the document is made available to the public;

    (3) a sale or offer for sale, as of the date the sale or offer for sale is made to the public; or

    Or whatever meets the criteria you want to set out. Trying to cram it into 102(a)(1) as an exception to an exception just makes the wording overcomplicated.

    1. 6.1

      It seems pretty clear to me. The goal appears to be to remove secret “public disclosure” as disclosure. In other words, it would no longer be considered disclosure to display a machine that is able to perform the invention if the invention is not actually displayed or performed.

      That is, its not disclosure “except to the extent the act results in a public disclosure of the claimed invention.” Bringing the machine with software that performs the method to the trade show is not disclosure, if that portion of the software is not demonstrated/activated etc.

    2. 6.2

      Seems to me that the proposal is to make US law like EPO law. If that is the goal, why not just use the same language as the EPO, instead of trying to make a clone out of wholly new language?

      1. 6.2.1

        Do you really think such is the case? Note the differences (up and down) the comments here – including, if you will, the broader and at the same time narrower aspects.

        1. 6.2.1.1

          At the outset of this thread, I lamented that I had no idea how to construe “publicly disclosed”. What SV Girl is perhaps suggesting is that to achieve the desired aim one could simply have shifted the definition of the prior art to the Art 54(2) EPC notion of “made available to the public”. The AIA is steering clear of the Art 54(3) EPC provisions relating to earlier filings, unpublished still at the date of the claim under inspection, namely i) novelty but not obviousness and ii) own earlier filings just as prejudicial to your novelty as those of other filers.

          I can only suppose that the AIA came to the conclusion that there would be even more judicial confusion in the courts of the USA if one were to build USC 102(a) around the “made available” language of Art 54(2) EPC.

          1. 6.2.1.1.1

            namely i) novelty but not obviousness

            Gee, that sure seems like a wrinkle…

            Are you ready to unclench your eyes yet, MaxDrei?

            Aside from the emotional feelings that you have provided, how is one Sovereign’s choice of applying the legal fiction of PHOSITA consistently across novelty and non-obviousness anything but a Sovereign’s choice?

            I know that you seem to want to only touch on novelty with a direct real person to real person effect of actual filers, but do you yet grasp that a very real difference exists in the full scope of the legal questions of novelty and non-obviousness and the legal fiction of PHOSITA?

            Or do you want to continue to pretend that this is just some “anon” thing…?

            1. 6.2.1.1.1.1

              Pretend? Just “some anon thing? Who else here but anon is troubled by Art 54(3) EPC?

              1. 6.2.1.1.1.1.1

                My what a pretty strawman you have, MaxDrei.

                Maybe you want to actually discuss the content of my posts instead… (which include the quote from Prof. Crouch)

                … or yes, you can keep on pretending.

              2. 6.2.1.1.1.1.2

                Who else here but anon is troubled by Art 54(3) EPC?

                No one. No one—here or elsewhere—is troubled by EPC 54(3).

                You are trying to carry on a discussion with an interlocutor whose clownish bad faith is surpassed only by the unintelligibility of his absurdly idiosyncratic patois. Why do either J or you bother? Gluttony for punishment, I call that.

                1. The intellectual coward should not comment on anything that he has maintained that he cannot see.

                  That’s more than just ‘bad form,’ dear “I Use My Real Name” Greg.

                2. Don’t you worry, Greg. I agree about anon though. I reply only when I think that my reply might add something for other readers. When a reply from me will add nothing for other readers, I remain silent. That might suggest to anon that he has won the argument, but so what.

                  Thanks for reading, and for your confirmation on Art 54(3) EPC.

                3. Lol – what a cop out MaxDrei — and one that very much provides a different impression than one that you are aiming for.

                  In that way, you ARE a bit like Greg — in error about me AND in error in how you choose to deal with the points that I provide (error in the sense that what you may think is an impression IS what the clear takeaway is).

                  But please, continue on this path of yours that only proves the points that I provide in when you engage AND when you choose not to engage.

  12. 5

    The text of the EPC (written by an international team of patent law experts) was done in 1973. There are good reasons for the EPC scheme of definition of the state of the art, including Art 54(3) EPC, viz. to promote the progress of the useful arts and to balance the potency of the right given to the first filer with the rights given to others who filed one day later.

    That is perhaps why the EPC scheme is now adopted widely, elsewhere in the world.

    1. 5.1

      While I certainly respect the fact that the Sovereigns of Europe can (and have) chosen differently than the Sovereign of the US, note here how quickly MaxDrie shares a point of inconsistency in regards to “prior art.”

      For him, he does not seem to be aware of this inconsistency (even as this has been pointed out).

      See how quickly MaxDrie injects a notion of a ‘real person’ in the Sovereign’s choice of how (or perhaps more particularly, to different legal effects) the notion of State of the Art is made as to prior art for the different legal notions of novelty and non-obviousness?

      To the US, the same legal person (and consistent legal reasoning) is involved. For the EPO, there appears to be a fair amount of hand waving that “the same notion” is also used, but this is not so (again, it is entirely fair that a Sovereign may choose to be inconsistent).

      The truth of the matter is that it is NOT the same legal person being used for the different notions of novelty and non-obviousness (even though State of the Art is purportedly judged by the same legal person).

      Instead, pay critical attention to how the notion of a real person finds its way into MaxDrei’s discussion of what drives “fairness.” Instead of actual state of the art (to the legal person), MaxDrei draws to the real persons of actual filers.

      While this distinction may at first blush appear to be subtle, the reality of the difference is there — and in fact subsumes the point of “secret prior art.”

      1. 5.1.1

        anon, of the EPC, you write:

        “…there appears to be a fair amount of hand waving that “the same notion” is also used,….”

        I’m baffled. Others probably are too. I don’t know anybody else who has any trouble with Art 54(3) EPC. Can you give us an example of such “hand waving” and also tell us what “notion” is appearing to you?

        1. 5.1.1.1

          Asked and answered. Several times now.

    2. 5.2

      That is perhaps why the EPC scheme is now adopted widely, elsewhere in the world.

      Perhaps a much more direct reason is the actual difference in Quid Pro Quo deals that Sovereigns have provided.

      After all, what other Sovereign (than the US) has offered a deal of full legal right for the exchange of publication (as opposed to a deal of publication for the chance of obtaining legal rights) — and please, leave the non-sequitur of “submarine” out of your response.

      This TOO sure feels like a wrinkle, does it not? You have already admitted of a real difference, now won’t you be so kind as to take your admission to its logical conclusion and admit that I have been correct all along?

  13. 4

    I don’t know what “publicly disclosed” means. Maybe that’s because I’m in Europe, where the test is “made available” to at least one member of the public. Can anybody here oblige me? Who does know?

  14. 3

    This would also appear to overrule the Metallizing Engineering doctrine to allow patenting of a secret manufacturing process even after an unlimited time period sales of commercial products. The PTO and others have argued that this non-statutory, non prior art, forfeiture [equitable] doctrine was overruled by the existing AIA statute’s language. [By the same folks that erroneously insisted that “secret sales” was overruled by the AIA.]

    1. 3.1

      Your feelings (and intended implications thereof) are noted.

  15. 2

    Serious question to people who support this…

    Do you think that an inventor could avail itself the benefits of trade secret law, and then obtain a patent for it later?

    1. 2.1

      J,

      The short answer is “yes.”

      Of course, this type of path speaks to the original Quid Pro Quo and nature that prosecution was conducted out of the public spotlight, and amended to a limited degree with the push of the Office to obtain their Quo while not giving the Quid (and but for, there does remain the option of selecting a non-publication request path).

      It is to be noted that even short of the non-publication request path, that a meaningful first action was meant to be guaranteed to applicants prior to any publication so that the option of express abandonment preserved a path of Trade Secrecy was to be kept as a ‘real path.’

      1. 2.1.1

        You spoke to a previous Quid Pro Quo, which I take is the argument that applicants could revert to trade secret after a patent application is withdrawn? (Sorry, I’ve always struggled with your writing as it seems opaque to me, which may be entirely my fault.)

        My question is the inverse: could a company enjoy the benefits of trade secret for several years, but then when realizing that the trade secret is about to be disclosed, then try to file for patent protection?

        1. 2.1.1.1

          Seriously, J, I had to laugh out loud when I read your comment that anon’s contributions are “opaque”. For sure, rest assured, it’s NOT just you. It is NOT your “fault”. The poster calling himself “anon” rejoices in his opacity. He will accept as a compliment what you say about his “writing”.

          In case you are interested, yes, it is a feature of patent law outside the USA that you can keep a trade secret until it is about to leak out, and only then file a patent application. Feel free. But I wouldn’t recommend it. It’s horrible risky. What if somebody else beats you to the Patent Office? What then, in a First to File jurisdiction, when not you but some other ornery critter has the Grant Certificate and asserts it against you?

          As to the Quid pro Quo, what anon alludes to is the idea that your filing at the PTO remains a secret between you and the PTO until your patent issues ie no disclosure of your invention until after you have been issued with your exclusive rights. from the dawn of time until 1978, that was how it was at the Patent Office in England. But then the UK modernised, totally re-wrote its patent law, to bring its objective of promoting the progress of the useful arts into better conformity with the faster-moving world of today.

          1. 2.1.1.1.1

            so close, and yet so far away, MaxDrei.

          2. 2.1.1.1.2

            Thank you for letting me know about outside the US. I didn’t know that. Why do they not follow Metallizing Engineering? Sure, its risky for the business owner, but as a policy, do we want an inventor to have single market pricing longer than ascribed in the patent statute?

            For me, I like the election the companies have to make between the patent system and the trade secret system at the start.

            1. 2.1.1.1.2.1

              but as a policy, do we want an inventor to have single market pricing longer than ascribed in the patent statute?

              You alight upon a common (and pervasive) misconception.

              Note that at least for our Sovereign, the Constitutional basis for power of patent and power of Trade Secret come from separate and distinct sections of the Constitution (patent clause versus commerce clause).

              1. 2.1.1.1.2.1.1

                I don’t see how the Constitution is relevant to a policy discussion on what the law should be. Powers of Congress converge all the time to form a policy. The fact that they converge doesn’t necessarily dictate what the policy is.

                1. The Constitution is directly relevant.

                  If you feel otherwise, then please recognize that you are not engaging in a legal discussion at all.

                  In the immediate case at hand, consider the plain fact that a Trade Secret simply has NO prescribed time limit at all, while patents MUST be constrained for limited times.

                  Clearly, the very nature of one is different than the nature of the other.

                  Additionally, consider that there is NO Quid Pro Quo for Trade Secrets.

                  None.

                  The very foundation of the bargain then clearly shows not just a difference in degree, but a difference in kind between ANY power generated from the patent clause and ANY power generated from the commerce clause.

                  You CANNOT ‘mix’ as you suggest here. Not with any recognition (and preservation) of the legal principles involved. The name of “policy” certainly does not provide for just ANY Ends, regardless of Means.

                2. I don’t see how the Constitution is relevant to a policy discussion on what the law should be.

                  It is not. Obviously, if we as a body politic were to agree that we want a different policy outcome, we could always amend the Constitution as necessary to reach that outcome. Therefore, a discussion of what the Constitution presently requires is always irrelevant to a discussion of what the law should be.

                  You might want to consider the point raised in 6.2.1.1.1.1.2 above.

                3. Greg is (natually) completely wrong in his boast of:

                  It is not. Obviously, if we as a body politic were to agree that we want a different policy outcome, we could always amend the Constitution as necessary

                  Well, let’s go wrong in conclusion, as he is correct that if we wanted to, we could change the Constitution.

                  The conclusion of course is wrong so long as we have NOT changed the Constitution.

                  Bottom line is as I put it: the Constitution is directly relevant.

                  Greg, as an attorney, really should know better.

            2. 2.1.1.1.2.2

              …further, and in direct answer to your question, the writers of the AIA provided the very answer of “Yes, single market pricing may well fall under the different controls of the different Constitutional drivers.”

            3. 2.1.1.1.2.3

              J you might “like” to impose on inventors a choice “at the start” but think, is that the best way to nurture investment in innovation, to “promote the progress”?

              The essence of the “patent bargain” is exclusive rights for one patent term in reward for giving the public, near the start of the term, an enabling disclosure of the inventive concept, enabling over the full scope of the claim. hat’s what promotes the progress.

              As has been pointed out, delaying filing at the PTO is very risky. In reality, inventors have to choose very early, between trade secret and patent publication, even in FtF jurisdictions.

              1. 2.1.1.1.2.3.1

                It should be noted that regardless of the time “of protection” under the different realm of Trade Secret, that the time and exchange of the Quid Pro Quo for the different realm of Patent remains exactly the same, whether or not Trade Secret was engaged.

                Both sides still achieve the exact same bargain and benefit.

                Only when one confuses and conflates (and gets the facts wrong), does one find support for feeling that the patent bargain somehow has changed.

          3. 2.1.1.1.3

            to bring its objective of promoting the progress of the useful arts into better conformity with the faster-moving world of today.

            MaxDrei,

            Do you even recognize the very fundamental difference in Quid Pro Quo that you reflect on with your “faster-moving world” comment?

            Here’s a hint: I have mentioned this recently, and has to do with what the different items being exchanged in the bargain are.

            In the US Sovereign, that traditional Quid Pro Quo was understood to BE the exchange of publication for the FULL turning of an inchoate right into a legal property right. It was NOT the exchange of publication for the chance of such a right and merely being examined.

            I cannot stress enough that this is not a small difference.

            1. 2.1.1.1.3.1

              Too right, that it is not a “small difference”. No such thing, outside the USA, as submarine patents. Who thinks submarine patents are a good thing, something that promotes the progress of the useful arts?

              Lemelson? Hyatt, perhaps? Nobody I know does.

              1. 2.1.1.1.3.1.1

                ?

                Your reference to submarine patent has no bearing here.

              2. 2.1.1.1.3.1.2

                Please Pardon Potential rePeat, as I had thought the Count Filter had been fully reset…

                Here MaxDrei, a proper response from you awaits, as the snark of “submarine” is simply off point.

                Let’s be clear then about the very real difference in the bargains offered by the different Sovereigns.

                After all, THIS is one of those wrinkles that you want to clench your eyes tight and not see (and this is not just an “anon” thing).

        2. 2.1.1.2

          Fair enough question (and comment — Patent law is often opaque to non-attorneys; and even attorneys who are not bona fide patent attorneys [there is a difference having to do with obtaining a USPTO registration number in addition to passing a state bar]).

          There is an ongoing debate that the framers of the AIA (the most recent major overhaul in patent legislative law), had intended to do exactly as you describe; namely, to allow one to patent what was previously not known to the public. Of course, much like a Trade Secret, if what you put into the public ‘gives up the ghost,’ then you have neither a Trade Secret, nor a patentable invention.

          The item I reference (the Great Soliloquy) is part of the ongoing debate. That item was an insertion into the legislative record by the writers of the AIA to show their intent to do as we are discussing. Some have discounted this as a shenanigan that “does not count” because of timing of the insertion. Of course, as I have pointed out, this argument against does not have legs because the insertion was made in the Senate, prior to the bill going to the house (and being approved), and then back to the Senate, for approval (with the Soliloquy) by the entire Senate.

          This really does not have a tie to the Quid Pro Quo per se.

          1. 2.1.1.2.1

            To be clear I am not saying I find the law opaque (at least, not more opaque than any other area of law). Though, I have understood the debate more through your comments here on this site, and I appreciate that. Perhaps I would understand more if you adjusted your style but that is entirely your choice and I’m not intending to slam you for that.

            I don’t think the law is going to give weight to the Great Soliloquy. Heck, “Great Soliloquy” sounds theatrical and peripheral. That is a debate, though, on what the law is. My question was a curiosity on your opinion of what the law SHOULD be, if you could waive a wand and make the law in your image. I’ve come to the conclusion that you would throw out the election between trade secret and patent Law, i.e. statutorily overturn Metallizing Engineering?

            I strongly disagree with that as a matter of policy, and thus the adjusted language in the original post, but feel free to change my view.

            1. 2.1.1.2.1.1

              The notion of the soliloquy (Great or otherwise) IS directed to explaining the “should be” to WHY the law was being changed TO BE the law.

              Certainly, any law can be taken aimed at and its meaning debated.

              As to the “choice” between Trade Secret and Patent, I merely reflect that the choice MUST be understood more carefully in light of the different provisions of the Constitution that generate the respective foundations of the two different protections.

              I fully realize that this distinction has been missed in the past (AND even missed by some rather impressive legal minds).

              But a “miss” remains a miss, even if Giants have made that miss.

              1. 2.1.1.2.1.1.1

                I appreciate your zealous argument opinion of what the law is, but again my question is whether you think it is prudent as a matter of policy to statutorily overthrow Metallizing Engineering.

                1. I think it prudent to understand the foundation of law as to ANY attempt at policy and that attempt (in our Sovereign’s choice of Limited Government) necessarily tracing back to the foundation of the Constitution for the very power of that policy to be implemented.

                  We are NOT a nation of the “rule of men,” but rather, we are a nation of the “rule of law.”

                  I realize that you not being an attorney, may not understand this position, but nonetheless, the position IS the proper one for understanding and discussing legal issues.

                2. anon, I am an attorney. But I’m not JUST an attorney. I’m also a voter. And the question is, should I write my Congressman/woman and ask for them to support this?

                  Am I summarizing your opinion correctly… I should support this change of language because in your view it corrects the law to what it originally was passed by the AIA? And that the intended effect of the AIA on the pertinent grounds is connected to the distinct Congressional delegation of power to grant patents, correcting the impermissible “mixing” of the separate Congressional power of protecting trade secrets?

                3. The ‘summary’ of my opinion is not a summary of my opinion at all, but merely the proper reflection of the existing differences IN the law (and its different power drivers).

                  This is NOT a “my opinion” thing as it is a “these are the facts” thing.

                4. Ok, I didn’t summarize your opinion. Help me understand, if you don’t mind.

                  Let me try the other way. Let’s say I am a member of Congress, and I am proposing to amend Ch 35 to affirm Metallizing Engineering. What is your argument that this is a bad idea?

                5. Ask yourself J, does the decision that you wish to affirm find solid ground in the proper tracing of Constitutional powers to the different sections of the Constitution (without error)?

                  As I have stated: this is a legal factual matter and not a legal opinion matter.

                  Anyone may have any variety of opinion for any reason. The same simply is not true for facts.

                  The facts are as they are.

                6. J,

                  I was going to add another comment, but I had hit the artificial Count Filter limit — I realize that my tone here comes across as snarky, but it is important to differentiate opinion from fact on the critical differences of where in the Constitution the different aspects that may be policy levers come from.

                  As I have noted, when properly and carefully evaluated, it is clear that the limited times aspect of the different protection under the patent clause is FULLY equal regardless of ANY different protection under a different Constitutional clause.

                  The deal, the bargain, the exchange of the Quid Pro Quo is exactly the same.

                  I ask that you identify a driver of your feelings, identify a driver of “but that’s how it has been done” and separate those drivers from a more dispassionate (and rational) evaluation of both the different policy drivers and the FACTS that the different protections are different in kind, even as they have similar effects. Take your emotion out of the picture.

    2. 2.2

      Yes, see 3 above, and at least one major supporter expressly intends that.

      1. 2.2.1

        Is that “express” as noted in The Soliloquy?

    3. 2.3

      Why not? Any inventor who chooses not to diligently apply for a patent assumes the risk that another inventor will get there first.

      1. 2.3.1

        That’s exactly the point, isn’t it? FtF puts the squeeze on inventors to file early, with a disclosure that enables over the full scope of the claim that defines the area of the exclusive right requested. Delay runs the risk that some other party gets to issue with rights that will then exclude you and yours.

        And publication of that enabling disclosure, 18 months later, is the best way to “promote the progress” as speedily as possible.

        1. 2.3.1.1

          And publication of that enabling disclosure, 18 months later, is the best way…

          Except not – for various reasons already provided. Chief among them is that the US Quid Pro Quo was never the European Quid Pro Quo. Here, rather than “publish for chance of patent,” our Quid Pro Quo was built on the STRONGER pro-patent exchange of publish for the turning of the inchoate right into a full legal right.

        2. 2.3.1.2

          … and I have to wonder if MaxDrie is even aware of just why the apparently random selection of “18 months” comes from.

          Ever ponder that thought, MaxDrei?

          If ‘publication’ is such a boon to clarity, why not have immediate publication?

          1. 2.3.1.2.1

            Glad you asked, anon. The 18 month period is a balance, as with most things. Inventors can pull back from publication, up to about 15 months after their priority date, and rely instead on trade secret protection. 15 months is more than enough for i) PTO search and report followed by ii) opinion from a competent patent attorney, on the prospects for the invention, given the content of the PTO opinion on patentability.

            Would you still have it otherwise? If so, why?

            1. 2.3.1.2.1.1

              Would I have it otherwise?

              Good question. Very much depends on one’s understanding of what the Sovereign has set for the Quid Pro Quo.

              I am more than sure that I have already set that out for your consideration.

              1. 2.3.1.2.1.1.1

                Well done, anon. Our readers will note your reply and, if they are interested enough, will go looking for that which you are “more than sure” you have already given them.

                Now, how about an answer to my 5.1.1. If you are interested, that is.

                1. Your answer to 5.1.1 is already there (among various other places – see most all of our past discussions at point) at 5.1.

                  Maybe read all the way through instead of leaping before finishing….

        3. 2.3.1.3

          Is there any evidence that FtF has encouraged inventors to file an application when they otherwise wouldn’t file for a patent under first to invent?

          1. 2.3.1.3.1

            Is there any evidence even possible for your supposition?

            (not being coy or sardonic – real question)

          2. 2.3.1.3.2

            First to file encourages filing not one day later than that on which one has enough on which to file. A-publication follows, 18 months later. That publication of that enabling disclosure is what promotes the progress. Let it be as early as possible.

            Conversely, First to Invent, not to mention a grace period, delays filing and delays publication of patent applications and so technical progress is correspondingly less rapid.

            There must be stats available, world-wide, for number of patent applications per head of publication. First to File countries are out in front, I believe.

            1. 2.3.1.3.2.1

              Let it be as early as possible.

              … and you are oblivious to my prior suggestion of instantaneous publication.

            2. 2.3.1.3.2.2

              … and quite clearly, the notion of WHY a person would engage in the Quid Pro Quo MUST be factored into the equation.

              So clearly, the better and stronger system was the one that actually gave meaningful Quid for the Quo.

              Golly Gee, that aligns with the real world result of which country HAD BEEN the leader in world innovation….

      2. 2.3.2

        How long should an inventor have single supplier market pricing for an invention for patent law? I would say it should be the number put in the statute, not a moment more. If an inventor can use trade secret protection followed by patent protection, that is extending the single supplier market pricing.

        So. that’s why.

        1. 2.3.2.1

          You exhibit legal error here J.

          And that’s a fact.

        2. 2.3.2.2

          You and some judges in the USA get worked up about what you think is an abuse, namely getting more than 20 years of monopoly pricing, by delaying the filing of the patent application. Don’t. It is so implausible it is not worth worrying about. Concentrate instead on how best to promote the progress of technical innovation for, without that, we are all doomed.

  16. 1

    MaxDrei and I have had quite a few discussions vis a vis the consistent “realm” of the legal fiction of the Person Having Ordinary Skill In The Art, the ‘state of the art,’ and the role of secret prior art for informing the state of the art consistently across novelty and non-obviousness.

    1. 1.1

      Well, anon, I’m not sure that our prior postings here qualify as a “discussion”. You have your opinion and I have mine. Let us throw out an invitation to others, to post their thoughts here.

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