by Dennis Crouch
Over the past couple of decades, some banks have been making efforts to appear more personal & humane. All that has come to fruition with the Federal Circuit’s decision in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al. In its opinion the court explained that yes, the Federal Reserve is a person too — at least with regards to the right to file an inter partes review (IPR) or post grant review (PGR) petition.
The AIA permits “a person who is not the owner of a patent” to petition for IPR/PGR requesting cancellation of a patent. In 2019, the Supreme Court took-up a case where the US Postal Service (USPS) had filed for review of a patent owned by Return Mail, Inc. Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853 (2018). In its decision, the Supreme Court held that the USPS is not a person under the statute. The court stuck to its “longstanding interpretive presumption” that Congress’s use of the term “person” does not “include the sovereign.”
In the present case, the twelve Federal Reserve Banks jointly petitioned the USPTO to challenge Bozeman’s U.S. Patent Nos. 6,754,640 and 8,768,840. The PTAB complied and cancelled all of the claims — finding them ineligible under Section 101.
On appeal, the patentee asked that the entire case be thrown-out under Return Mail. However, the Federal Circuit refused — finding that the Federal Reserve Banks are sufficiently separate and distinct from the United States Gov’t.
The Federal Reserve Banks were established as chartered corporate instrumentalities of the United States under the Federal Reserve Act of 1913. Unlike the Postal Service, which was at issue in Return Mail, the Banks’s enabling statute does not establish them as part of an executive agency, but rather each bank is a “body corporate.” Like any other private corporation, the Banks each have a board of directors to enact bylaws and to govern the business of banking. Moreover, the Banks may sue or be sued in “any court of law or equity.” . . .
The Banks are not structured as government agencies. The Banks do not receive congressionally appropriated funds. 12 U.S.C. § 244. No Bank official is appointed by the President or any other Government official. 12 U.S.C. § 341. Moreover, the government exercises limited control over the operation of the Banks. Instead, the “direct supervision and control of each Bank is exercised by its board of directors.” 12 U.S.C. § 301. And the Banks cannot promulgate regulations with the force of law. Scott v. Fed. Reserve Bank, 406 F.3d 532, 535 (8th Cir. 2005). For these reasons, we conclude that the Banks are distinct from the government for purposes of the AIA. We recognize that there may be circumstances where the structure of the Banks does not render them distinct from the government for purposes of statutes other than the AIA. For purposes of the AIA, however, we conclude the Banks are “persons” capable of petitioning for post-issuance review under the AIA. The Board therefore had authority to decide the CBM petitions at issue here.
Note here that the court did not mention the Fed Reserve Board of Governors – whose members are appointed by the president – or the fact that the Board of Governors appoint a substantial portion of the directors of each bank. The outcome here is also interesting to consider with respect to the corporate structure of various public universities around the country.
Moving on to the merits, of the eligibility decision, the Federal Circuit affirmed that the claims were directed to the abstract ideas of “collecting and analyzing information for financial transaction fraud or error detection” (‘840 patent).
Claim 1 of the ‘840 patent:
1. A computer implemented method for detecting fraud in financial transactions during a payment clearing process, said method comprising:
receiving through one of a payer bank and a third party, a first record of an electronic financial transaction from at least one of the following group: a payer, a point-of-sale terminal, an online account and a portable electronic device;
storing in a database accessible by each party to said payment clearing process of said electronic financial transaction, said first record of said electronic financial transaction, said first record comprising more than one parameter;
receiving at said database at least a second record of said electronic financial transaction from one or more of a payee bank and any other party to said payment clearing process as said transaction moves along said payment clearing process, wherein said second record comprises at least one parameter which is the same as said more than one parameter of said first record;
each of said first and second records received at said database comprise at least two of the same said more than one parameters;
determining by a computer when there is a match between at least two of said parameters of said second record of said first financial transaction received at said database and the same parameters of said first record of said financial transaction stored in said database, and wherein any party to said payment clearing process is capable of verifying said parameters at each point along said financial transaction payment clearing process;
sending a notification to said payee bank participant with authorization to process said electronic financial transaction when said parameters match; and
sending a notification to said payee bank participant to not process said electronic financial transaction when said parameters do not match.
“Moving on to the merits, of the eligibility decision, the Federal Circuit affirmed that the claims were directed to the abstract ideas of “collecting and analyzing information for
particularly monitors heartbeat variability, including identification of irregular “ventricular beats.” ”
Lol — sure, no Gordian Knot here…
Day eight. After much shaming, anon reads the professor’s post.
Not sure where you think ‘shame’ is in play here, but you clearly do not get the point of my newest post here.
Think about the two different cases that I have woven together.
Better yet, start with: “think.”
“you clearly do not get the point of my newest post here.”
No, we do not. Now is your chance. Fill this room with you intelligence. Nine days after the professors’s post about Federal Reserve Banks being “Persons” under the AIA, what is your point?
Clearly you should read what I have provided.
I have combined two different storylines here, and only one of them is the older one.
(again, you may be required to THINK)
Now is your chance. Fill this room with you intelligence”
This is YOUR chance to develop some intelligence.
Instead of being bu tts 0re about me ripping on you for taking a week to develop a mindless retort against another poster, you should notice that my new post here provides a legal point contrasting a slightly older thread with a brand new one.
You have a far too elevated view of your own postings (late, no legal point, mere attack) and a far too low appreciation of my posting (not late as taken in the contrasting pair of cases, providing a cogent legal point in that contrast, and attacking an appropriate – and pervasive – legal problem.
And perhaps more critically, you see nothing at all wrong with your post as you seem to think that my post has the very types of flaws that your post exhibits.
You are oblivious to your own blight.
“taking a week to develop a mindless retort against another poster”
?
LOL – try and pretend….
I have already this directly – bolding the dates.
link to patentlyo.com
As usual, Snowflake, it’s all beyond you. Who is the “another poster?” You will not identify the “another poster” because you are cornered. You will change the subject and you will run away. Or pound the table and make more stuff up. 50/50.
As usual, you get things wrong Shifty, and ask silly questions that you do (or should) know the answers to.
That another poster is between you and I — I anticipate that you will try to spin this, but we both know the parties involved here.
And speaking of those parties, I see that on a new thread that you have (finally) ventured some comments to an actual issue — in your Thomas Pain moniker.
That still leaves the fact that in your other two shifting historical pseudonym monikers of S. Morse and A. Lincoln that you have now NOT provided anything meaningful and ONLY played games dating back (at least) to February 24 and likely exceeding 250 posts dedicated to me.
Thus, from me:
No cornered
No change of subject
No running away
No pound the table
No making stuff up.
Revisit post 8.1.1.1.2. Try to answer on point.
You did both. What a surprise.
I did neither.
Try again – and try to be on point.
Undaunted by a (small) surge in expungements, my pal Shifty is at it again down below.
Shifty (and the editor),
It is quite apparent that your ‘current line of work’ is SOLELY to pollute the threads with your nonsense.
Everything that you have said from the April 14, 2020 at 9:11 pm point forward in this little subthread (starting with “Excuse me, so you say…”) was said previously AND EXPUNGED.
ALL of this is nothing more than the SAME games that you have been playing repeatedly.
Shifty has not even attempted to address ANY matters at hand, and ONLY trys to go back to some imagined ‘gotcha,’ of which, I have repeatedly caught his antics with not properly taking context into consideration — and all of this set of games is because SHIFTY accused me incorrectly of being ageist, and I deconstructed his false accusation. SHIFTY even attempted to glom on a word that he did not particularly use, although the meaning of the word was very much accurate.
Further, I found it interesting that some SEVEN years ago (thanks to the link provided by MaxDrei), Malcolm was in the same mode as our pal Shifty:
link to patentlyo.com
Now, Shifty lacks even the limited scripts of Malcolm, but does attempt to make up for that limitation with mindless volume. Over the past month (as a subset of the commissioned crawl of this blog), Shifty has posted well over 150 comments aimed SOLELY at me with ZERO points of law attempting to be discussed.
That’s right – with ZERO points of law attempting to be discussed.
In that same time span, the once prolific Malcolm has had all of TWO comments.
Feel free to draw your own conclusions.
All anon, all the time! This is merely a re-hash of the stuff you made up on April 8, 2020 at Comment 5, Patently-O Bits and Bites, March 30, 2020 (though the story seems to be growing in its telling). I refer the reader to the rebuttal in response to said Comment 5.
LOL
Your “rebuttal in response” was nothing more than the very thing that had been expunged!
This type of post of yours is why a certain adage fits you so well:
One cannot dig themselves out of a h01e that one has dug themselves into.
All anon, all the time. No idea what it is you think you’re talking about, Snowflake. But the referenced Comment 5 thread is priceless entertainment. You became so flustered you called yourself an “outright” liar. Little wonder you want “expungements.”
Your spin has long been debunked, and only you, who cannot seem to let this go, has any such notion of “entertainment.”
As to your newest apparent meme of “All anon, all the time.“…
I take it that is your current line of work, as in answering the question of who,singularly does Shifty 0bsess over?
All anon, all the time.
“Your spin has long been debunked”
There is no “spin” and you have no cite for the “debunking” and you never will. You will change the subject.
Just another example of why almost all commentators here do not bother to “engage” with your nonsense and choose to ignore whatever it is you try to insert into a conversation about the law.
Lol. I gave you the hyperlink.
Providing the proper context is the opposite of changing the subject.
Your use of “cite” is more than amateurish.
The rest? zzzzzzzzzz
Providing the proper context is the opposite of changing the subject.
“Providing the proper context is the opposite of changing the subject.”
H. Goring, Berlin 1933.
Is that going to be your next shift?
All anon, all the time. We have no idea what it is you think you are trying to say. Try to get back to the substance. Virtually all commentators here (can you name 2 exceptions?) do not bother to “engage” with your nonsense and choose to ignore whatever it is you try to insert into a conversation about the law.
Slipping into the plural — that is a tell.
OT but significant: WIPO – the World Intellectual Property Organization just announced that China filed 58,990 Patent Cooperation Treaty (PCT) applications in 2019, overtaking the U.S. as the top filer of PCT patent applications [a position the U.S. had held every year since 1978].
Especially significant since PCT applications normally represent inventions considered to be important enough to justify the greatly increased costs of foreign country filings. However, an even more meaningful comparative statistic would be how many of these applications are actually foreign filed after receiving their prior art search reports?
I like your second point as it has been noted that China has had a bit of history of massive filings for which there appears to be NO real attempt to actually gain patent rights to. It had been surmised that what China was really doing was flooding the patent offices with arguably non-enabled instances of prior art that could then be turned around and used to deny the efforts of others to obtain patents.
On one of my news feeds, there was a historical animated bar chart of PCT filings, which was super interesting to watch how not just China, but Japan and other Asian countries took more and more action in PCT filings over time.
Yes, China seems to have followed the example of Japan in encouraging massive application filings for defensive purposes to protect exports of actual products from patent suits, among other motives. But for that purpose application publication [without actual patenting or even PCT filing] is sufficient.
You make a good point [sometimes confused in blog comments] that published application conceptual suggestions can be used as 103 references for what they teach even if insufficiently enabled to pass a properly applied U.S. 112 enablement test for valid U.S. patenting.
There is a nigh constant even if relatively low level reverb BACK into the examination phase for properly applied enablement for 103 references in that science fiction (emphasis on the fiction portion) is NOT a proper reference, and that it is ONLY patents (and questionably, depending on the case facts, patent publications) that carry the presumption of enablement.
It’s been while now since I have had an examiner attempt to quote some NPL from a science fiction item and attempt to use the argument that the feature need not be enabled (that mere fiction suffices).
There is a reason why ‘mere filing’ does not — and should not — suffice. Of course, at least a part of this reasoning (due credit for the act of examination and that examination being the vetting for enablement) is often under attack by those seeking to weaken patent rights.
This goes hand in hand with the thrust of POST-grant reviews (and the fallacy therein that any type of post grant reviews actually serves as a meaningful feedback mechanism to correcting any ‘bad examination’ in the first place).
China seems to have followed the example of Japan in encouraging massive application filings for defensive purposes to protect exports of actual products from patent suits, among other motives.
Why are we speaking of this strategy as if it were something unique to east Asia? U.S. & European companies do the same thing.
I can remember an occasion when I tried to discourage a client (a VERY large company headquartered in the U.S.) from filing a certain application because the close prior art made it unlikely that we would get anything out of the application. The client told me that they did not expect to get granted claims, but that—in their experience—U.S. examiners are more likely to find U.S. published apps than journal articles, and EPO examiners are more likely to find WIPO pubs than journal articles. The client figured that the cost of pursuing this application to the publication stage in the U.S. and WIPO was cheaper than a bunch of EP oppositions and IPRs (to say nothing of DJ actions) that might otherwise result down the line if they were to publish their findings in a journal and then the USPTO/EPO were to miss that publication when examining a competitor’s application.
“Why are we speaking of this strategy as if it were something unique to east Asia? U.S. & European companies do the same thing.”
There are interesting facts that necessarily flow LESS from any national state and MORE from competing on non-innovation factors (such as the mere ability to file more).
Does this mean that we should constrain filing? That we should LIMIT attempts to obtain patents?
ONLY if you suffer some severe cognitive dissonance and wish to eliminate the very vehicle of what MAY happen with patents in the first instance (which at point is the fact that a single patent MAY be enough to CURB those with the non-innovative advantages — IF the full power of patents (specifically, the ability to employ fully the exclusivity nature of the essence of patents) is dissipated.
Yes Greg, and some major U.S. companies like IBM have published extensive non-patent defensive publications of ideas not considered worthy of U.S. attorney application preparation, filing and publication costs. The Japanese and Chinese difference is active government encouragement, including low fees from filing through initial publications of applications written by engineers rather than attorneys, and far higher abandonments thereafter. In Japan, the government agency MITI has played an important patent policy role.
It is a good point, that a WO publication with a skimpy disclosure can be a potent tool to invalidate for obviousness any later-filed claim. Such so-called “defensive” use of patent filings has been standard practice for litigation-shy Japanese corporations for the last half century.
In addition to that, if I understand it right, at the USPTO the WO will work as a 103 citation further back in time than the WO publication date. Right back to the 18 month earlier priority filing date at the Patent Office in China, in fact, and irrespective whether the PCT ever enters the USPTO national phase.
So is the AIA the reason for the upsurge in filing of PCT cases by enterprises in China?
One must wonder: how skimpy?
If I start filing pure science fiction, will that do?
How skimpy? Will that do? That, I suppose, would depend on how the local courts adjudicate the obviousness issue.
In this context, the point to bear in mind is that a prior publication cannot destroy novelty if it fails to enable what it discloses. Otherwise with obviousness under the EPC, where the entire corpus of what has already been “made available” to “the public” (including works of science fiction) can be cited, when building up a TSM argument that the claim embraces something that, for the notional skilled person, would not have required an inventive step. Just because a citation is “science fiction” is not enough to have it dismissed as a reference. Is the storyline of the film “2001: A Space Odyssey”, for example, part of the common general knowledge of the notional skilled person? A plausible proposition, I would think.
Tell me how the fiction part of science fiction answers the question please.
I lost track in your answer here.
As usual, you can’t follow me and I can’t follow you.
Never mind though. What I write is intended to engage other readers, ones who do follow me.
You presume that I do not follow you.
That would be incorrect.
I follow what you are saying. I do “get” what you are saying.
But what you are saying is problematic.
You show signs that you grasp at least some of that (for example, you grasp enough to make a political quip).
Do you understand why your political quip gains traction here?
“Just because a citation is “science fiction” is not enough to have it dismissed as a reference.”
Of course. I suspect much ‘short-term’ sci-fi (materials which imagine the next 5-10 years) is enabled for the same reason most of the applications I review are enabled… not because of the disclosure, but because of the knowledge in the art.
… then you need to cite a proper reference for that knowledge in the art.
Science fiction is fiction.
We’ve been through this before Ben.
How about you explain why a work of prior art, which teaches something, and where that something can be made and used by one of ordinary skill in the art without undue experimentation, is not “prior art” because of it’s location in a book store.
You as that question in apparent seriousness – which is even more shocking give that you are an examiner.
Wow.
The answer is not just because of its location – the answer is because of WHY it would be in that location.
The term prior art is a term OF art. You appear to entirely lack appreciation of that.
Somehow lost a ‘k’ there…
‘as’ => ‘ask’
Non-responsive.
Entirely responsive.
You are confusing a response that you do not like with the word “non-responsive.”
Your response is “egads, how could you believe that!” with no explanation for your position.
Of course, it makes sense that you’d want to avoid explaining yourself if there is no justification. Keep on doing you.
I was curious if you’d engage for once and explain why art which describes something novel and useful, which would be trivial for one of ordinary skill to construct, does not constitute prior art because of the claim being fictional.
I think that if you could begin to justify your position it would leads to more interesting questions like ‘is non-fiction NPL which describes a novel thing in especially hypothetical terms sometimes ‘fiction”.
But we’ll never get there because you’re a complete waste of time. Enjoy the last word.
Art “that explains” but is known to be fiction cannot by its nature be considered art as that term is legally understood.
How the F are you an Examiner?
A high proportion of patent applications contain Examples that are “prophetic”. Works of science fiction are often “prophetic”. Are then some specifications of filed patent applications works of science fiction?
Just because an Example is “prophetic” does not disqualify it from being part of the state of the art relative to which patentability is assessed. A librarian catalogues a book as “science fiction”. A patent attorney dismisses the content of a published patent application as science fiction. Is that enough to disappear the respective document from the prior art? I think not.
Regardless of how made up your own ‘high proportion’ (how high is high for you?), you appear to be confusing and conflating a concept of “prophetic” and what “fiction” means.
As is evident from the terms themselves, a work of fiction is something that is made up.
Sure, a made up work of fiction may well include things that are not made up. That happens all the time and not just in the sub-category of science fiction.
But anything NOT made up will necessarily have a proper non-fiction source that may serve the legal basis for establishing the legal notions to which “prior art” (as that term being a legal term) must be established.
As I first pointed out to you MaxDrei (and to which you did not respond at all see post 6.1.1.3.1.2.1 right below), your assertion runs smack into a problem of circularity.
What if the WO publication is “pure science fiction”? I suppose what you are driving at is the far more likely occurrence, that what the WO “teaches” is, at least for the notional skilled person living in the world of today, palpably not plausible.
If the skilled person would immediately dismiss as implausible what the WO “teaches” as a solution to the technical problem under consideration, then the skilled person trying to solve that particular problem would give zero attention to its “teaching”, whereby the WO publication would be of zero assistance to any objective TSM argument that the claim in view includes subject matter that is obvious.
I can see how you came to raise the idea of science fiction. I wonder if President Trump has filed any patent applications on his miracle cures for COVID-19. No need to ask (I hope) how plausible the hypothetical skilled addressee would find the claims made in any such WO publication.
Your gratuitous dive into the circus of politics notwithstanding, I see that we are having a conversation in passing.
You DO appear to at least grasp some aspects of the comment I make in regards to science fiction, as you attempt to classify some as “pure” science fiction.
I find this attempt to be more murky than helpful.
Science fiction is simply a type of fiction. Like any (all) other type of fiction, there well may be elements that are real. Any work of fiction for example may well use a variety of real aspects as well as change other aspects to be not real.
If a work of fiction (science or otherwise) is desired to be used for ANY legal notion in the patent legal realm, your ‘fallback’ here appears to be “well, a skilled person would know that that particular aspect is implausible”….
Do you see the circularity of your position?
How does that Fictional skilled person know ‘a thing’ on the very thing that is being offered as ‘proof’ that the Fictional person knows?
My point is made with your attempt to skirt the point.
If there is some aspect of a work of science fiction that is desired to be used to establish what that Fictional skilled legal person knows or does not know, than something other than the work of fiction is required.
NO work of science fiction has any place in an objective determination. If there is an aspect that is desired to be used, one NEED go to an underlying source other than fiction.
Re the exchanges between Max and Anon as to “science fiction” as 103 prior art, that also depends on the claims being examined: If the claim is broadly drawn to the bare suggestion of a particular combination, and the prior-published “science fiction” contains a specific suggestion for that same specific combination, why is that not as relevant to a non-obviousness argument for that kind of claim as for any other non-enabled suggestion in a prior patent?
“that also depends on the claims being examined”
No.
No it does not.
This should not even be needed to be stated. How long have you been away from prosecution?
You tell me above, that:
“a work of fiction is something that is made up”
OK, I take you at your word. What else but a work of fiction is, then, a prophetic example in the specification of a chemical patent. And not just fiction but, specifically, science fiction.
MaxDrie,
Why are you insisting on focusing on the ‘prophetic example’ notion while not accepting the full extent of what it means for a work to be labeled ‘Fiction?’
I have pointed out for you already — twice — the circularity of your assertion. Why not explore that instead of your current focus?
As I have noted:
But anything NOT made up will necessarily have a proper non-fiction source that may serve the legal basis for establishing the legal notions to which “prior art” (as that term being a legal term) must be established.
This resolves the issue – with no circularity.
Why is this position so untenable for you?
Max,the AIA changes included new 102 “(d) Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application–
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.”
Max, this is re you question: “If I understand it right, at the USPTO the WO [publication] will work as a 103 citation further back in time than the WO publication date. Right back to the 18 month earlier priority filing date at the Patent Office in China, in fact, and irrespective whether the PCT ever enters the USPTO national phase.”
I took a quick look at the above and other AIA priority provisions and did not find any clear support for that proposition? Does anyone else have any?
Because if not, it does not support your prior thread question: “So is the AIA the reason for the upsurge in filing of PCT cases by enterprises in China?”
Paul, what can I say? When the AIA was going through the Congress, it was pointed out that the USA was, alone amongst FtF jurisdictions, allowing earlier-filed but not earlier-published patent applications to be the basis of obviousness objections.
Of course, I do understand that it is continuity (historical reasons) that explains why the USA perseveres in the AIA with such well-established 103 “secret prior art”.
But what constitutes “earlier-filed”? That’s the point here. Other readers, feel free to chip in.
In every other FtF jurisdiction, that means “filed in the same jurisdiction”. Only in the AIA does it mean “earlier-filed, and who cares where”. Presumably this is because it is on the “Wish List” of the community of supra-national, itinerant, sociopathic (psychopathic even) corporate personalities that pay for, and therefore call the shots in, the US Congress.
MaxDrei,
I chuckled at several elements of your reply.
But rather than setting into our familiar cycle (including how important it is to pay attention to the express decisions of any particular Sovereign), I will let Paul (or others engage you here).
[W]hat constitutes “earlier-filed”?… In every other FtF jurisdiction, that means “filed in the same jurisdiction”. Only in the AIA does it mean “earlier-filed, and who cares where”.
Hm, I think that you might have misunderstood the AIA. 35 U.S.C. § 102(a(2) provides that a patent/application becomes art-effective as of its filing date if and only if it matures to being “a patent issued under section 151, or in an application for patent published or deemed published under section 122(b),” (emphases added). In other words, a foreign-filed priority document only has filing-date art effectiveness if there is a U.S. filing that claims the benefit of that priority. If Huawei files in China but does not later file in the U.S. claiming the benefit of that Chinese filing, when that Chinese application later publishes it is only prior art as of its publication date, not its filing date.
Paul, below is a Link to another patent law blog, back in 2013, on S. 122(b) of the AIA and the “prior art effect” of a WO publication under the PCT. You will appreciate that the USA is one of the PCT Member States for which the WO publication is of a patent application that can be followed through, at the USPTO, to issue of a US patent.
link to patentblog.kluweriplaw.com
Have a read of that other blog and then tell me if you think its reasoning is now to be viewed as faulty. Meanwhile, I continue to suppose that S 122(b) AIA is a strong reason for the surge in CN-originating WO publications of variable “quality”.
Sorry Greg. I am replying to your posting, rather than Paul’s.
Thanks, Max. Section 102(a)(2) speaks of an application “ published or deemed published under section 122(b).” The Wolters Kluwer blog you linked seems to proceed on the premise that of course the WIPO pub counts for §122(b) purposes, but that is not clear to me. Section 122(b) provides that:
N.B., nothing there references WIPO publications. Indeed, the publications made under §122 are to be “ published… in accordance with procedures determined by the Director.” Given that the USPTO does not determine the procedures by which WIPO pubs go out, that would imply that WIPO pubs are not publications under §122(b). Does anyone know of case law on this point one way or the other.
Greg, note the author of the Kluwer item, a partner at Foley:
link to foley.com
I was relying on her credentials.
Outside the USA, the WO takes the place of a local 18 month A publication. The national phase offices don’t A publish all over again.
That said, I think the WO needs to be published in English for it to have a prior art effect at the USPTO. In every other country, you have to carry the PCT into the national phase in order to achieve a prior art effect with the PCT filing(or priority) date. I had always understood that not to be needed, under the AIA. But I’m not qualified to advise on patentability in the USA.
Geg,
From your quote:
“from the earliest filing date for which a benefit is sought under this title.”
The operative ‘this title’ is for filings with the USPTO.
I think Courtney’s article has an implicit assumption that she was NOT talking about a fact pattern that MaxDrei is thinking about (mere PCT publications with no attempt to obtain benefits under the [US] title.
OK guys. Try this then. Our very own Dennis Crouch, back in 2013, drawing 108 comments:
link to patentlyo.com
That said, I think the WO needs to be published in English for it to have a prior art effect at the USPTO.
That part was definitely eliminated in the AIA. If you are challenging a pre-AIA patent based on filing-date prior art, the asserted art (if it came into the U.S. via a PCT) must have published in the WIPO in English. That published-in-English requirement was part of the old §102(e), and disappeared when the AIA did away with §102(e).
Thanks Greg. That would explain why the Japanese used to file their PCT applications in English, but now they don’t.
MaxDrei,
Your position is replete with errors.
Here is another: “That said, I think the WO needs to be published in English.”
Just not so.
Thanks, Max. I agree that Prof. Crouch’s blog post seems definitive. I concede that WIPO pubs do have art effect in the U.S. as of their priority filing dates (for whatever is actually described in the priority filing), even if the PCT application never actually enters the U.S. national phase. I have learned something today.