by Dennis Crouch
The key benefit of the first-to-file patent regime, introduced by the Leahy-Smith America Invents Act (AIA), is the clarity that it provides. The filing date is an understandable, immutable, and reasonable priority claim marker. This is in contrast to the invention “date”, which requires evidence of the inventor’s mental state as shown by corroboratory evidence; spread across time from conception to invention completion accomplished at reduction to practice. Pre-AIA invention priority contests were decided through a process known as Interference Proceedings—mini trials before the Board (then known as the Board of Patent Appeals and Interferences or BPAI).
The transition from first-to-invent to first-to-file has involved a number of quirks, the latest is found in SNIPR Technologies Ltd. v. Rockefeller University, — F.4th — (Fed. Cir. July 14, 2023). The case focuses on situations where one party has a Pre-AIA filing date and the other was Post-AIA.
Both parties claim patent rights to certain methods of using CRISPR tools to edit bacterial genes for the purpose of creating antibiotic resistance. The idea then is that those “good” bacteria will not be impacted by the use of antibiotics to kill “bad” bacteria growing in the same pot.
After SNIPR’s patents issued, Rockefeller amended its pending claims to match those of the SNIPR patents for the purpose of prompting an interference. The PTO took the bait, declared an interference, and invalidated the SNIPR patents. On appeal though, the Federal Circuit has reversed — holding that the SNIPR patents are post-AIA patens and therefore should not have been subjected to an interference proceeding.
Rockefeller’s application claims priority to a provisional application filed on February 7, 2013 (before the March 2013 AIA date). The SNIPR patents claim priority back to a May 2016 filing. In interference lingo, Rockefeller is the “senior party” because of its earlier filing date and SNIPR was unable to provide an earlier date of conception.
On appeal, the Federal Circuit concluded this whole process was wrong and no longer permitted. In particular, the PTAB erred in subjecting SNIPR’s AIA patents to an interference proceeding. Only pre-AIA patents, not pure post-AIA patents like SNIPR’s, can be subjected to such a proceeding. The court reached this conclusion based upon its analysis of the text, purpose, and history of the AIA, concluding that first-to-file patents are exclusively governed by the new priority provisions found in the AIA and therefore cannot be subject to an interference. Under the AIA, we no longer question which party is the first inventor, but rather only ask if there is some prior art that renders the claimed invention obvious or anticipated.
The result then is that SNIPR’s patents have not been cancelled, and the PTO will also need to issue the Rockefeller patent. Some folks see this as a major metaphysical risk—that the existence of two patents covering the same invention could lead to the singularity. While having double patents is probably not the best outcome, industry will work through this possibility of blocking rights as it has many times in the past. The Federal Circuit considered this issue and noted that the Rockefeller filings could be raised in a variety of other ways—such as an AIA-trial proceeding, a process to challenge the validity of a patent—to challenge the SNIPR patents. Although there is a theoretical scenario where a pre-AIA application would not qualify as post-AIA prior art, that scenario is highly unlikely and remote. While a remote risk exists, the Court ultimately found it did not justify overriding Congress’ intent in the AIA statute to rid the system of interference proceedings and focus on filing date.
Not sure why a provisional filing date in 2013 is relevant here. The question is Rockefeller’s filing date under 35 USC 111. If that’s after the magic date in March 2013, then Rockefeller isn’t entitled to try to invoke an interference at all.
In any event, not having looked at the the documents, I’ll wager that Rockefeller’s application published before the other guys’ application was filed. And even if it didn’t, US law still allows it to be cited as “prior art” since it has an earlier filing date.
Blocking rights a “major metaphysical risk”? Seriously?
As I understand it, US patent law under the First to File AIA is different from everywhere else in the world to the extent that the “secret” prior art represented by earlier filed but later published co-pending patent applications can serve as the basis of obviousness attacks. US First to File is turbo-charges First to File, engineered to give the party who was first to file a more dominant patent position than any such first filer can achieve elsewhere in the world.
So, it seems to me, going forward, that in the USA there is a lower likelihood of rival filers holding overlapping patent claims than has always been the case everywhere else in the First to File world.
What am I not appreciating?
“to the extent that the “secret” prior art represented by earlier filed but later published co-pending patent applications can serve as the basis of obviousness attacks.”
This is NOT a function of any such ‘difference under the First to File AIA.’
C’mon MaxDrie – we both know that you know this.
The issue is whether any “blocking rights” that become available upon the demise of interferences amount to a “metaphysical risk”. They don’t under FtF everywhere else in the world. Even less so under the USA’s unique FtF law (under which what I file the day before you do, anon, allows me to use my filing as my basis for getting all your claims declared obvious).
Can you answer that question?
A) what is your question? and
B) the US notion of ‘secret prior art’ has not changed under the different filing rules of the AIA — how do you not know this, given as we have had extensive discussions on secret prior art in relation to the law of 35 USC 103?
A) My question is set out twice above. It is prompted by Dennis saying there is a “metaphysical risk” of blocking rights. How is that then?
B) How do you come to the idea that I do not know that the AIA did not change the US notion of secret prior art? I know that very well. That it has not changed increases the mystery how the metaphysical risk arises.
Ah, I see: you are actually challenging Crouch’s writing.
Meh.
I viewed that as mere hyperbole (there is NO actual risk), and even he continued statement shows a path to remove the SNIPR patent (as it IS not valid in view of the prior art — even if that art is only later published).
To wit (my emphasis added):
“Some folks see this as a major metaphysical risk—that the existence of two patents covering the same invention could lead to the singularity….
“… noted that the Rockefeller filings could be raised in a variety of other ways—such as an AIA-trial proceeding, a process to challenge the validity of a patent—to challenge the SNIPR patents. ”
Your post though seemed to want to ploy a “Rest of World” aspect where none is really there. If anything, my past lectures to you on ‘Secret Prior Art’ remove your supposition that that AIA changed anything vis a vis US law.
There is NO “going forward” aspect in view of secret prior art, as that art is as it always was.
To the extent that you are pushing back against Crouch (and the ‘mysterious’ metaphysics), I have no bone to pick.
No need for you to “lecture” me on secret prior art and its role in the obviousness enquiry, whether under the US patent statute or (different) elsewhere in the world. As you never stop reminding me, I have been practising patent law since the 1970’s.
My enquiry in this thread is indeed about those “folks” who are seeing “a major metaphysical risk”. Who are they? Perhaps merely “notional” persons skilled in the art of patent law. Perhaps this is Dennis attempting to inject some humour (sarcasm?) into his writing?
If so, the attempt was stillborn – as I noted, he even backtracked with a (proper) path of challenging.
As for the length of time of your practice, such means very little given the positions you take on this US** patent law blog.
** the byline still say’s “America’s”
I remember when i read it, it was the opposite. Secret prior art is now prior art – so everybody looses – first to file (invaliding art) and prior art (since they can’t ‘swear behind’ and obtain a patent either) – well ok google wins. Since they wrote the statute.
Not everybody loses. The first who files with an enabling disclosure wins, and they win majestically bigger in the USA than anywhere else in the world. This is because of the US-exclusive “secret prior art” law carried over into the AIA from the previous patent statute. Which of those two statutes is the one that Google wrote? Surely not the one that created the one that allows invalidation of claims for obviousness over secret prior art.
Mind you, the big winners in any First to File system are those who are able to file first, accompanied by an enabling disclosure. I suspect that most people would agree with me, that big corporations are better-placed than under-funded and under-resourced small inventors to generate a disclosure good enough to support a useful and enforceable claim quickly enough to get to the PTO first.
Patent rights under FtF go to the one who is first to provide a disclosure that enables the (non-obvious) solution of a technical problem, not to the one who files at the PTO i) a claim which recites a problem and ii) a disclosure which falls short of enabling the invention over the full width of the claim. What’s wrong with that?
One thing about the use of secret prior art to found obviousness attacks is that it reduces the complexity of “thickets” of patents owned by various competing rival filers. Is that good or bad?
“I suspect that most people would agree with me, that big corporations are better-placed than under-funded and under-resourced small inventors to generate a disclosure good enough to support a useful and enforceable claim quickly enough to get to the PTO first.”
IF that writing was entirely separate from — you know — the actual invention, you might have a point.
As it is, no, no, you do not have a point.
“One thing about the use of secret prior art to found obviousness attacks is that it reduces the complexity of “thickets” of patents owned by various competing rival filers”
More nonsense.
The two have no causal connection.
Zero.
Stop throwing
C
R
A
P
against the wall.
It is commonplace for rival corporations to file on pretty much the same invention on pretty much the same date. Eighteen months after the last of the rival filings, the rivals can assess for the first time the disclosure content of the rival filings of their competitors. Those filers who were not the first to file can begin to assess how much scope of protection cn still be secured, notwithstanding the earlier filing by the competitor.
My experience is under the EPC, where the earliest filer cannot attack the claims of their rivals for being univentive over the earlier filing. All the later filers invariably find in their specification as originally filed at the PTO something that has novelty over the disclosure content of the earlier filers. Bare novelty is enough. Grant certificate, here we come.
So everybody gets to grant with a set of enforceable and not invalid claims. That’s what I call a complex thicket.
But all of that you of course well knew already, right?
Is it the same in the USA though? Or does the earliest filer have better chances to thin out the claims presented to the USPTO by all the later filers, directed to, for example, obvious variants of the invention disclosed by the earliest filer, and thereby reduce the complexity of the patent thicket?
Try again — your notion of “complex thicket” is not clear.
Please distinguish between whatever you mean and merely a crowded art field.
Dennis wrote: “the existence of two patents covering the same invention could lead to the singularity”. My comments pick up on this idea. A patent thicket occurs when a slew of different patents, under a variety of ownership entities, contain overlapping claims. That can easily happen under FtF law outside the USA. Dennis seems to be implying that, with the demise of interferences, it might also happen under the AIA. My thought is that, under the AIA, patent thickets should, at least in theory, be less complex than elsewhere in the FtF world.
No idea how you can come to suppose that a “crowded art field” and a “patent thicket” are capable of being confused, one with the other.
“A patent thicket occurs when a slew of different patents, under a variety of ownership entities, contain overlapping claims”
OK – that’s your definition.
Crowded art fields OFTEN have the same characteristic though.
What is this “complexity” that you are attributing? Overlap is overlap, and the use of the word ‘complexity’ does not appear to be helpful.
Are you not familiar with crowded art fields?
Do you afford the same emotional reaction to both?
As the term was used in [mostly unsuccessful] U.S. anti-trust suits a number of years ago, a “patent thicket” occurs when a slew of different patents under the SAME ownership entity covers the same type of product to such an extent as to preclude any effective competition. [Not necessarily with “overlapping claims,” whatever that term means.]
This situation can become a different [future invalidity] problem when different IPL firms are being used by a corporation [especially from different parts of large corporations] without insuring that the many patent applications on the same planned new product or other inventive subject matter and its improvements or alternatives are being filing-coordinated and/or cross-referenced. A surprising number of prior art rejections or invalidity challenges have been from inadvertently uncited prior-filed applications or publications from the same company.
The hanks Paul, and yes, my understanding of “thicket” did have that “self-same” aspect.
I did ask though what MaxDrie was intending, as he (way too often) does not track US notions.
Shoot missed that “autocorrect”
“The hanks” ==> “Thanks.”
Thanks, Paul. In the context of a patent “thicket”, I was thinking of the difficulties of delivering a Freedom to Operate opinion when a plurality of different corporate entities hold patents that require consideration. That is a bit more “complex” than when all the relevant patents are held by the same owner. Is there a name for something more complex than your “thicket”?
Current: First to invent (A) defeats the second to invent (B) but first to file (no patent, or patent issues but is invalid over first to invent (A)).
Old System: First to invent (A) swears behind first to file (B) and wins patent – patent is valid to A.
Old system: Lever action riffle case. First to invent A keeps secret, Second to invent B files, DISCLOSES and patent issues. Public gets disclosure of invention AB and B has term of valid patent.
New System. Lever action riffle case: A’s prior invention (albeit secret, but subsequently index by google) invalidates B’s patent.
Ergo, the valid patent to (A) under the old interference system never issues.
And the patent in the riffle case scenario to (B) is invalid.
So google (AKA, the serial infringer cohort) wins because true inventor A loses and second to invent AND disclose riffle case scenario (B) loses.
Am I missing something?
Missing something? I don’t know where to begin, except by reaching for the exasperated Wolfgang Pauli utterance “not even wrong”.
Anon, you’ve got talent in grasping content that goes over my head. Perhaps you can put iwasthere straight?
Appears simple and in his first statement. The current has been divorced from actual invention date and is now a race to file (with only inventors – and not derivers – invited to the race).
There may be additional mistakes, and I merely stopped at that first one.
The interference provision allowed the Patent Act to comply with the constitutional requirement that the rights secured under a patent are exclusive to the inventor.
Since the IPR process is the only remaining way for these conflicts to be resolved under the AIA, legislators should tread carefully before amending the IPR statute with additional standing requirements, so as not to unconstitutionally remove the last available avenue for ensuring the exclusivity of the patent right.
?
Are you suggesting that a person who has wrongfully been deprived of (at least sharing) inventorship on a granted patent would somehow lack standing?
Nope, “the IPR process is [not] the only remaining way for these [prior interference] conflicts to be resolved under the AIA.” Besides the noted prior-existing correction of inventorship of asserted patents [under 35 U.S.C. §256], the AIA provides statutory “Derivation Proceedings” against allegedly stolen or derived applications or patents. [Which turns out not be successfully proven by anyone so far]. Also, the AIA provides an expanded prior commercial user defense. [Also never successfully used by anyone so far, presumably due to its restrictions as compared to other defenses.] And then there is the inequitable conduct defense.
This debate about interferences between pre and post AIA patent or application claims, now apparently ended, has been the subject of prior discussions, in particular, Gholz and Pereira, Straddle Interferences, 95 Patent, Trademark & Copyright Journal 593 (March 16, 2018), and the articles (including one by Prof. Chisum) and PTAB papers discussed therein.
BTW, several old pre-AIA interferences are still pending or on appeal, including important CRISPER inventions.
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